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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 [...]

Will the “Inescapable Trap” of Article 123 (2) and (3) EPC Catch German Parts of European Patents?

by Dr. Simon Klopschinski

Under EPO case law there is the “inescapable trap” of Article 123 (2) and (3) EPC. The German Federal Court of Justice decided in the “Winkelmesseinrichtung” case that the “inescapable trap” does not apply to German national patents. In recent time different nullity boards of the German Federal Patent Court have issued conflicting decisions on the question of whether the Federal Court of Justice’s reasoning in “Winkelmesseinrichtung” also applies to German parts of European patents.

Under EPO case law a European patent has to be revoked when its claims contain a feature which is not disclosed in the original application (Article 123 (2) EPC) and th [...]

Germany: Kurznachrichten, Federal Court of Justice, X ZR 61/13, 16 September 2014

The Federal Court of Justice (FCJ) held that where a defendant in a patent infringement action has been found to be liable for infringement in a decision that is preliminarily enforceable but subject to appeal, it is generally necessary to suspend enforcement of this decision under Secs. 719 (2) and 707 Code of Civil Procedure against security if the patent in suit has been held invalid by the Federal Patent Court (first instance) in a nullity action. This also applies in further appeal proceedings before the FCJ (second instance).

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

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 [...]

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