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.
The board held that a document of speculative nature could not objectively be considered as a realistic starting point or the most promising springboard towards the claimed invention: the document was no more than a speculative review of what might be potentially feasible in the future and no concrete realization of the claimed type of product was described therein.
The Court of Appeal upheld the judgment of the High Court (Arnold J) that claims concerning treatment of osteoporosis with zoledronic acid were not entitled to an earlier priority date and were therefore invalid over an intervening publication. The Court held that the disclosure in the priority document was either too general or too specific, and therefore did not support a claim to the use of zoledronic acid administered intravenously about once a year to treat osteoporosis with a dose of 2-10mg.
General disadvantages of fixed-dose combinations cannot reduce the reasonable expectation of success derivable from the prior art with respect to the formulation of a pharmaceutical composition containing two specific active pharmaceutical ingredients. A synergistic effect is not suitable to establish inventive step of a fixed-dose combination of two active pharmaceutical ingredients, where the synergistic effect was already observed for the simultaneous but separate administration of the same active ingredients.
1. Also in case a dependent claim is patentable on its own, fulfillment of all features of both the main claim and the dependent claim is required for infringement.
2. The scope of a patent is defined by its claims; the prosecution file may only be considered for interpretation if there are contradictions between the claims, the description and/or the drawings.
The Court of Appeal Düsseldorf held that the offering of certain products by the defendants was not covered by the scope of the patent due to the specific “Swiss type” wording, which does not grant an absolute product protection, and due to the fact that the advertising of the defendants did not address the patented use specifically enough.