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Federal Court of Justice: Claims Normally Cover at Least one Embodiment

by Niels Hölder and Thomas Koch

In “Zugriffsrechte” (Rights of Access) (docket X ZR 35/11), the Federal Court of Justice decided that a claim can in principle not be construed such that it covers none of the embodiments described in the specification.

To simplify the facts, the claim in question specified two process steps. The Federal Patent Court had interpreted the claim so as to require that the steps are performed in the specific order mentioned in the claim, thereby rendering the subject matter novel over the prior art where this specific order had not been disclosed (docket 5 Ni 67/09). However, in all of the embodiments described in the specification, those steps were applied in [...]

A Little German Christmas Present and some Year’s End Reflections

Thanks to Miquel Montaña’s brilliant Christmas post, we have learnt a lot about the lucina sine (aut cum) concubitu and the legal impact her involvement may have had for the application of Directive 98/44/EC to the event leading to the holidays that we have just been celebrating. While I must admit that even after having read Miquel’s lucid post, I am still not a hundred percent clear on whether Jesus in statu embryonis would have fallen under article 6(2) of Directive 98/44/EC, I can at least confidently say that I am satisfied with the fact that certain questions are probably unanswerable and that the CJEU has generously left this one for the national courts to decide.

Which brings us [...]

“Que le pouvoir arrête le pouvoir” – From Montesquieu to Battistelli

Charles de Secondat, Baron de Montesquieu knew it all as early as 1748: “Experience teaches that every human being who has the power tends to abuse it. Therefore, it is necessary that the power sets limits to the power. There are three things in every state authority: the legislature, the executive and the judiciary. There is no freedom, if they are not separated from each other.”

Okay, why should a French President in 2014 bother about what one of his learned countrymen wrote in a book in the baroque times? Perhaps because it still matters. On 3 December 2014 the President of the EPO had one member of the Boards of Appeal escorted out of the Office by his “Investigation Unit” and imposed a “ [...]

Proprietor’s Plea of Ply Patent Prevails (or: The Problem with the Problem, Part II)

by Anne Katrin Schön

On 12 June of this year, the German Federal Court of Justice (FCJ) in Karlsruhe concluded nullity appeal proceedings (X ZR 96/11) against the German part of European patent EP 1 071 556 B1 by dismissing the nullity action and upholding the patent as granted. Overruling the first-instance judgment 1 Ni 19/09 of the Federal Patent Court (FPC), with which the patent had been declared null and void in its entirety, the FCJ confirmed principles of established case law both regarding novelty and inventive step. Prior to the German nullity proceedings, the European Patent Office (EPO) had rejected an opposition against the patent. A comparison between the EPO, FPC and FCJ deci [...]

UKIPO gains new powers to revoke patents which fail a novelty or obviousness test – but only if ‘clearly invalid’

by Dr Mark A G Jones

The UK’s Intellectual Property Act 2014, enacted to implement recommendations of the 2011 Hargreaves Review of Intellectual Property, has extended the powers available to the United Kingdom Intellectual Property Office (UKIPO) to revoke British patents of its own motion. This applies both to patents granted directly by the UKIPO or patents obtained through the EPO route. The new statutory provisions are contained in Section 73 of the Patents Act 1977, as amended.

The new power, available from 1 October, 2014, allows the UKIPO to revoke a patent for lack of novelty or lack of inventive step where a third party has sought an Opinion from the UKIPO Opinions Service as to [...]

New “PCT Direct” Service of the EPO – an opportunity for PCT applicants at the EPO to comment on objections raised by the EPO in an earlier search

Under the new PCT Direct initiative announced in the Official Journal, it will, from 1 November 2014, be possible to respond to objections raised by the EPO against the priority application on filing the international application. This significantly streamlines the process of applying for an international application, and essentially gives the applicant an extra opportunity in the International Phase to overcome objections already raised by the EPO against the priority application, by submitting arguments or modifications with the international application.

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