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The decision „Schleifprodukt“ of the German Federal Court of Justice – a step towards harmonisation with the EPO practice?

The judgement “Schleifprodukt” rendered by the German Federal Court of Justice on 25 November 2014 could be seen as a step towards harmonisation with the EPO because the court carried out the test for the admissibility of claim amendments by assessing whether the feature combination of the amended claim in its entirety represents a technical teaching which is identifiable from the original application as being suitable for achieving the effects of the invention.

New news about the doctrine of equivalence in German case law

About half a year ago I reported on new developments in German case law concerning the doctrine of equivalence (see Just at the beginning of this month my colleague Bernward posted about further developments (see Now again, there is a recent decision of the German Bundesgerichtshof (Federal Court of Justice) dealing with the doctrine of equivalence to report on.

The decision “Kochgefäß” (“cooking pan”, X ZR 81/13) dealt most prominently with the first question to be asked under the German doctrine of equivalence if there is no literal in [...]

Germany: Zwangsvollstreckung bei kartellrechtlichem Zwangslizenzeinwand, Higher Regional Court of Karlsruhe, 6 U 162/13, 19 February 2014

The CoA Karlsruhe held that the fact that a referral is pending before the CJEU regarding the issues of the criteria for raising the FRAND defense (C-170/13 Huawei) does not justify the suspension of the enforcement of an infringement judgment issued against a defendant. The court also expressed their expectation that – even after a future decision of the CJEU modifying the criteria set up by the Federal Court of Justice (BGH) in the Orange Book case – the minimum requirements of an acceptable offer and to render accounts for past infringement will still apply.

A full summary of this case has been published on Kluwer IP Law.

Doctrine of equivalence: most recent decision

The German Bundesgerichtshof has issued a decision (X ZR 41/13) called “Quetiapin” which discusses a fundamental question of the Patent Law, i.e. the definition of the “technical problem” underlying an invention. The claim of the European Patent under discussion concerned a sustained release formulation. The Patent Court had nullified the (German part of the) patent and the Bundesgerichtshof has rejected the appeal which the patent owner had filed against the first instance Patent Court’s decision. The Bundesgerichtshof took the opportunity of this case to address the definition of the technical problem. The court admonishes that not necessarily one has to look to the “object” [...]

FCJ: Goods Placed in “Internal” Transit Proceedings Do Not Infringe a Patent Right

by Anja Petersen-Padberg

The Federal Court of Justice decided in the “Electric Kettle” case (25.06.2014, docket X ZR 72/13) that the placing of goods in transit proceedings does not infringe a patent right in Germany as the country of transit. The court stressed that it is of no relevance whether the goods were placed in so-called “T1″ external transit proceedings or in “T2″ transit proceedings where goods are declared to be released for free circulation on the market of the European Union and are forwarded without sealing. Patent infringement may only be assumed if the goods are subject to a sales transaction in the transit country or if the goods are imported for this purpose. This must be [...]

Enantiomer “Repaglinide” found to lack Inventive Step in Germany

by Stephan Disser

The German Federal Court of Justice (FCJ) has just issued its written decision in the case “Repaglinid” (X ZR 128/09). As far as can be seen, the decision is not yet available on the FCJ’s website The FCJ rejected the patent proprietor’s appeal against the decision of the Federal Patent Court revoking the German part of EP 0 589 874 for lack of inventive step. The decision contains some interesting aspects regarding the assessment of inventive step by the FCJ in the pharma field and in general.

Claimed in the patent-in-suit is the use of an enantiomer (Repaglinide) as active substance in the preparation of a long-term antidiabetic agent charact [...]

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