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…

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…

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…

Different views from the EPO and Germany on the same case 1. Introduction Functional features in patent claims may provide protection not only for specific embodiments disclosed in the patent specification, but also for undisclosed (future) embodiments. A classic example is a claim of the format “An inhibitor of protein P for the treatment of…

In Medeva (C-322/10 of 24 November 2011) the Court of Justice of the European Union (CJEU) had ruled that a Supplementary Protection Certificate relating to a combination of active ingredients can only be granted in view of Art. 3(a) of the Regulation (EC) No. 469/2009, if the active ingredients are “specified” in the wording of…

A recent decision of the Higher Regional Court (Oberlandesgericht) Düsseldorf now confirms that a holding company cannot easily dive away under the patent infringing activities of its subsidiaries. Background Many companies are designed in the form of a group, having a holding company at the top and a number of subsidiaries which are directly or…

The Federal Court of Justice held that under the specific circumstances of the case it was likely that a service manual regarding flow meter technology had been available to third parties. The Court considered as decisive the agreement between the party supplying the manual and the recipient. According to the Court it is relevant whether…

Syngenta Limited (hereinafter referred to as “Syngenta”), a company governed by the laws of England and Wales, is the holder of European patent No. 0 382 375 entitled “Fungicides”. On 28 September 2009, it submitted to the Institut national de la propriété industrielle (INPI; French Industrial Property Office) a request for limitation of a claim of the French designation of…

The German Federal Patent Court (FPC) has recently published its first decision (3 Ni 28/11 of 2 May 2012 “Ranibizumab”, GRUR 2013, 58) dealing with the interpretation of related CJEU Judgments “Medeva” (C-322/10) of 24 November 2011 and “University of Queensland” (C-630/10) of 25 November 2011. In the view of the FPC, the infringement test, which had been utilized by the German Federal Court of Justice in examining the condition of Art. 3(a) of the Regulation, can thus no longer be relied upon. Further, the FPC ruled that the requirement that an SPC can only be granted for active ingredients which are specified or identified in the wording of the claims of the basic patent, applies likewise to products of single active ingredients and combinations of active ingredients.

by Bernward Zollner In a case called “Produktionsrückstandsentsorgung” the German Bundesgerichtshof has discussed a case in which the claim of the litigious patent had been amended and narrowed with respect to the scope of protection after the judgment of the appeal court had been handed down. The appeal court therefore, could not have discussed the…