In its recent decision “Communication Channel” (“Kommunikationskanal”) of 11 February 2014, docket, X ZR 107/12, the FCJ decided that the priority of an earlier application may be claimed if the technical instructions described there by means of an example or in other ways appear for the skilled person as an embodiment of the more general teaching described in the later application, and this teaching, in the generality exposed by the later application, can already be taken from the earlier application as belonging to the filed invention.
In this new decision the FCJ has ruled on the question of when it is admissible to generalize a teaching and still remain within the confines of the [...]
by Dr. Simon Klopschinski
In one of its latest orders the Karlsruhe Higher Regional Court has used the opportunity to take a glimpse into the crystal ball, in order to see what decision the Court of Justice of the European Union (CJEU) is going to render in response to the pending referral for preliminary ruling regarding the FRAND and compulsory license defense in case of standard essential patents (SEPs).
In recent years the information and telecommunication (ITC) sector has seen a wave of patent lawsuits in various jurisdictions, including Germany. Since most of the patents asserted in these proceedings form part of a standard, a core questions is whether enforcing SEPs complies with anti [...]
a) The applicant is not obliged to limit the protective scope to explicitly described embodiments, but may make certain generalisations to cover the entire invention.
b) Whether a claim containing generalisations is enabled depends on whether the protective scope extends beyond the most generalized teaching solving the underlying problem.
c) Functionally describing a group of compounds is not precluded by the fact that such wording encompasses not only compounds already known in the art or disclosed in the specification, but also compounds that may be provided in the future; even if their provision requires inventive activity.
Many practitioners in Germany thought the doctrine of equivalence to be rather at its end following two Supreme Court (BGH)-decisions in 2011 (“Okklusionsvorrichtung” and “Dyglycidverbindung”). Now, the renowned Higher Regional Court Duesseldorf has – in my eyes, correctly – made clear that the old dog is still alive.
According to standard practice of the BGH, equivalence has three prerequisites: (i) an identical effect attributed to the alternative means; (ii) perceptibility of the alternative solution for the skilled person; and (iii) equivalence in value.
The BGH uses the following formula to describe the third prerequisite (equivalence in value) in detail: The ref [...]
The use and circulation of a product which has been put on the market by the patentee or a third party acting with the consent of the patentee (e.g. a licensee) cannot be prohibited by the patentee anymore. This concept of exhaustion is not only applicable to the territory of Germany, but to the entire territory of the EU and EEA, i.e. the common European market. This Europe wide exhaustion of patent rights is the basis for parallel imports, in particular for parallel imports of pharmaceuticals and plant protection products.
Being a defense, the burden of prove showing that the product has been put onto the market by the patentee or a licensee lies with the defendant. However, applying this [...]
The EPO Board of Appeal 3.2.06 decided on 20 February 2014 to refer the following question to the Enlarged Board of Appeal:
“Is an appeal inadmissible or not deemed to have been filed, if both the notice of appeal had been filed and the fee for appeal had been paid after the expiry of the appeal term pursuant to Art. 108, 1st sentence EPC?”