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Fordham Conference 2015 – Priority Issues

Justin Watts (Freshfields) asked whether the strict test for priority fails to appreciate the early stage at which the inventor will be enunciating the invention (often in multiple jurisdictions). He refers particularly to the decision of G2/98 which is that one has to understand the application as a whole through the eyes of the skilled person and therefore takes into account implicit factors as well as explicit. However, a number of hard line approaches have been taken, not least in T213/05 where a gene sequence was later corrected, but still had over 97% homology and yet was denied priority. Mr Watts referred to the ‘Goldilocks’ approach being neither too narrow nor too broad, but ‘just r [...]

Germany: Kommunikationskanal, Federal Court of Justice 11 February 2014

The FCJ held that the priority of an earlier application may be rightfully claimed if the technical information described for a specific embodiment or otherwise in in the application is seen by the skilled person as an example for the more general invention disclosed in the later application and if this more general teaching was disclosed in the prior application as part of the invention.

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

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T 1843/09: the EPO clarifies the scope of the prohibition of reformatio in peius

The recent decision T 1843/09 clarifies that the exception to the prohibition of reformatio in peius set out in G 1/99 in order to overcome an objection under Article 123(2) EPC is not the only exception. According to the Technical Board of Appeal, exceptions to this principle are a matter of equity in order to protect a non-appealing Proprietor against procedural discrimination in circumstances where the prohibition of reformatio in peius would impair the legitimate defence of its patent.

Claim to Priority Allowed Despite Generalization of Invention

In its recent decision “Communication Channel” (“Kommunikationskanal”) of 11 February 2014, docket, X ZR 107/12, the FCJ decided that the priority of an earlier application may be claimed if the technical instructions described there by means of an example or in other ways appear for the skilled person as an embodiment of the more general teaching described in the later application, and this teaching, in the generality exposed by the later application, can already be taken from the earlier application as belonging to the filed invention.

In this new decision the FCJ has ruled on the question of when it is admissible to generalize a teaching and still remain within the confines of the [...]

Hospira clears the way for generic Herceptin

The development of Herceptin (trastuzumab) in the late 1980s and 1990s is one of the most remarkable advances in the treatment of breast cancer. The story of the drug and its pioneer, the “velvet jackhammer”, Dennis Slamon, is neatly summarised in Siddhartha Mukherjee’s award winning novel: “The Emperor of All Maladies – a Biography of Cancer” – a fascinating if not necessarily uplifting read.

In short, unlike traditional chemotherapy, trastuzumab is a monoclonal antibody which specifically targets a receptor known as HER-2 which is involved in the development of breast cancer. No-one disputes that the development of Herceptin was a landmark advance in the field of oncology – [...]

Hospira v. Novartis, Court of Appeal of England and Wales, 19 December 2013 ”

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.

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

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