The German Supreme Court this year passed two major decisions on the requirements for invoking a right to prior use. In its Desmopressin decision (June 12, 2012, X ZR 131/09), the Supreme Court ruled that knowledge regarding technical effects is not required for a prior user to be in possession of an invention as long as the manufactured product fulfills all of the features of the patent. In Nabenschaltung III (May 22, 2012, X ZR 129/09), the Supreme Court clarified the accessory nature of rights to prior use in constellations where the business to which the right to prior use is attached is sold, but the buyer and the seller continue to cooperate in the manufacturing process.
I. Desmopressi [...]
The Supreme Court held that Article 68 (3) IP Code relating to prior use, sets forth both a “quantitative” and a “qualitative” limit, in the sense that it “serves to identify the business behavior which determines the limit of the monopoly granted to the patent holder in respect of the prior user”. Since the prior use of the claimed substance and purification process thereof entails a single business behavior, whereas it was impossible to attribute autonomous economic value to the purification process claimed by the second patent, said prior use could only protect the infringer in respect of the first patent.
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By decision of 5 April 2012, no. 5497, the Italian Supreme Court resolved an interesting case concerning the application of Article 68 (3) Italian IP Code, according to which “Whoever, in the course of 12 months preceding the filing date of the patent application or its priority date, has made use of the invention in its business, may continue making use of the same within the limits of the pior use”. The case concerned the infringement by Fidia Farmaceutici S.p.A. of two patents held by Chemi S.p.a.: one, filed on 28 April 1999 and claiming a process for the preparation of phosphatidylserine (Ps); the other, filed on 5 December 2001 and claiming a process for the purification of the sam [...]
Imagine: Wouldn’t it be fantastic to have one single patent which you could apply for at the WPO, the World Patent Office? A World Patent, which would be valid worldwide and which could be enforced in each single country of the world with worldwide effect? Decisions of the national local chambers of the World Patent Court (WPC) could be appealed at the WPSGC, the World Patent Global Supreme Court. Wouldn’t this be a major breakthrough in improving IP protection and decreasing patent costs for the industry?
Well as always, the problem comes with the details: Shall the system allow distinguishing between first, second and third World Patents? Will there be an exemption for extraterrestrial [...]
In these infringement proceedings initiated by Agfa against Xingraphics the Court held Agfa’s patent valid and dismissed Xingraphics cross border declaration of non-infringement due to lack of jurisdiction. Agfa’s infringement claim was dismissed as it was not sufficiently substantiated. Agfa was not allowed to supplement its evidence, since it had failed in a previous stage to submit its evidence timely. The sending of warning letters by the patentee is allowed, unless the patentee knows or should know in advance that it cannot substantiate infringement.