Inventive step of a stereoselective glycosylation process
Gemcitabine is part of the family of nucleosides which are compounds constituted of two chemical parts: a sugar bound to a nucleobase through a glycosidic bond. As any nucleoside can have two isomers (the alpha-anomer and the beta-anomer) depending on the orientation in space of the glycosidic bond, it must be clarified that Gemcitabine is a nucleoside of the beta-anomer type where the nucleobase is situated above the sugar part. This beta-anomer constitutes Gemcitabine and presents a therapeutic effect whereas the alpha-anomer, where the nucleobase is situated below the sugar part, has no therapeutic effect.
Gemcitabine is used as an antiviral and antineoplastic medicine and marketed in F [...]
Is it obvious how to apply “obvious to try”?
Although a number of issues were raised as to the validity of two patents in the recent Omnipharm v Merial[2001] EWHC 3393 (Pat) case, the most interesting feature of the case was the judge’s approach to the question of inventive step. The case focussed in particular on the role of the doctrine of “obvious to try”, which over the years has become a feature of the English patent landscape. The leading authority on “obvious to try” had for many years been the Court of Appeal judgment in Johns-Manville Corporations’ Patent[1967], in which Diplock LJ characterised a successful “obvious to try” attack as follows: “it is enough that the person versed in the art would assess the l [...]
FCJ rules that the skilled person will look for approaches already provided by a standard when wanting to improve that standard
The German Federal Court of Justice recently issued a decision entitled ‘E-Mail via SMS’, November 22, 2011, X ZR 58/10, in which it was found that when seeking to improve a data structure prescribed in an international standard, a skilled person would consider mechanisms already described in the standard when solving the identified technical problem. It was furthermore found that if the standard provides a manageable number of possible solutions, each having specific advantages and disadvantages, this provides an incentive to take each of the solutions into account.
In the case in question it was ruled that it was obvious to apply a known concept for sending instructions to a SIM card of a [...]
Navigating data/Microsoft, European Patent Office (EPO Board of Appeal), 17 March 2011
- By Ferry van Looijengoed,
for Kluwer IP Cases
The Board of Appeal had to decide whether the showing of results of a database analysis as a tree diagram could contribute to the technical character of the invention. The Board of Appeal pointed out that in this case one should take a wider view of the term “presentation of information” than just the actual information that is displayed (the cognitive content) by also including structural aspects of how the information is displayed. Therefore, structural aspects, such as the presentation in the form of a tree diagram, may be regarded as part of the presentation of information and cannot contribute to the technical character of the invention.
Click here for the full text of this case. A [...]
Sildenafil, Oslo District Court (Oslo tingrett), 3 August 2011
The Court held that Pfizer’s Norwegian patent for use of sildenafil (a PDE 5 inhibitor) for treatment of erectile dysfunction was inventive. Although the court did not consider it inventive to test PDE V inhibitors for the treatment of erectile dysfunction as such, it held that the skilled person in so testing was confronted with an extensive testing task. Hence, the court found that the skilled person would not arrive at the claimed solution with a reasonable expectation of success within the available time window, i.e. the time period from publication of the relevant prior art to the priority date of the patent without inventive activity.
Click here for the full text of this case. A [...]
Pullman-Ermator v. Dustcontrol, Court of Patent Appeals Stockholm (Svea Hovrätt Stockholm), 27 April 2010
- By Giovanni Gozzo,
for Kluwer IP Cases
By Giovanni Gozzo and David Nilsson
The Svea Court of Appeal partially invalidated the patent of respondent Dustcontrol, insofar as claim 1 of the patent was concerned. The Court held that it could not be deduced from claim 1 that the filter cartridge at issue in claim 1 must be a unit that neither can nor needs to be taken apart, as previously held by the District Court. The skilled person would consider both this and the option with a unit that can be taken apart possible and covered by the claim. In the end, the Court upheld an amended patent in accordance with Dustcontrol’s auxiliary request.
Click here for the full text of this case. A summary of this case will be posted on http://www [...]
