by Jan Pot and Ruprecht Hermans
MSD’s European Patent for treating baldness, EP 0 724 444 (‘EP 444’), has been the subject of a number of (in)validity decisions throughout Europe, with differing outcomes. The Dutch chapter in this saga is a decision of the District Court The Hague, which holds that – contrary to the German, French and Italian courts –the patent is valid and infringed.
Claim 1 of EP 444 is a Swiss-type claim for the use of finasteride for the preparation of a medicament for oral administration useful for the treatment of androgenic alopecia in a person and wherein the dosage amount is about 0.05 to 1.0 mg. Androgenic alopecia is a type of baldness occurring in men a [...]
The juxtapositon of patent limitations in national nullity proceedings and before national patent offices on the one hand and according to article 105a EPC on the other hand is a hotly debated issue not only in Switzerland.
In a recently published decision of 2 June 2014 (4A_541/2013), the Swiss Federal Supreme Court had to decide – inter alia – whether the limitation of the European Patent 1 508 436 according to article 105a EPC which only took place after the revocation of the Swiss portion of the patent by the Federal Patent Court must still be taken into account.
In brief, claimant requested the nullity of EP 1 508 436 before the Swiss Federal Patent Court.
The patent relates [...]
The FCJ held that legal provisions in force at the priority date must be taken into consideration when assessing novelty and inventive step of an invention. These legal provisions may incite the skilled person to work in a certain direction so that this makes the invention obvious.
The Oslo District Court held that Jets AS’ patent for a liquid seal pump of the helical screw type for use in vacuum drainage systems lacked novelty over one of Jets’ own patents. Despite the court’s finding on invalidity, the court did not consider Jets warning letter to a customer of its competitor, Evac Oy, in conflict with good business practice among traders pursuant to §25 of the Norwegian Marketing Control Act.
The wording of prayers for relief in patent infringement proceedings remains a hotly debated issue in Switzerland. In a landmark decision dated 2004 (BGE 131 III 70) the Swiss Federal Supreme Court ruled that the patent infringing goods or procedures had to be exactly described in the prayers of relief of a cease-and-desist order. Since then, it has not been sufficient to simply repeat the wording of the claim of the allegedly infringed patent. In particular, this holds true if the interpretation of the claim features is highly controversial between the parties. The authorities that are in charge of the enforcement of an injunction cannot be expected to reassess the meaning of the patent cla [...]
The later finding of the biological relationships underlying the activity of a drug does not constitute a new teaching for technical action if the indication, the dosage and the way of using the drug coincide with an the prior disclosed use of a drug for the treatment of a disease (confirmed by FCJ 9 June 2011 – X ZR 68/08, GRUR 2011, 999 – “Memantine”). The selection of a value within a known range does not render an invention patentable, unless for special circumstances (e.g. the dosage instruction achieves a particular technical effect vis à vis the prior art).