In this case the Court held that a previous patent application and other scientific publications which did not disclose the invention in a manner sufficiently complete for it to be carried out by a person skilled in the art, could not influence the novelty of the invention for which that patent application was later filed….

This judgement is one of many issued in the worldwide litigation pending between Novartis and Johnson & Johnson concerning Novartis’ patent for ophthalmically compatible extended wear contact lenses. The decision contains a recapitulation of all possible grounds for invalidity of a patent. The Court rejected the detailed claims of invalidity for lack of sufficiency, dealt…

The Court of Appeal upheld the High Court’s finding that Novartis’ patent for ophthalmically compatible extended wear contact lenses was invalid for insufficiency. The Court of Appeal held that the patent does not teach which materials described in the specification are suitable for extended wear lenses, nor does the patent enable the skilled person to…

A 1 July 2009 decision of the Tribunal de Grande Instance of Paris illustrates how the French courts proceed when they are seised of a nullity claim of the French designation of a European patent against which opposition may be filed or opposition proceedings are pending.

Sufficiency of disclosure is one of the requirements for the grant of a European patent (Art. 83 EPC). The disclosure in a patent specification shall enable the skilled person to apply the invention, i.e. to make the claimed product or apply the claimed process. A claimed product or process is often defined in general terms…

Two recent decisions of the Italian Supreme Court (no. 21835 of 14 October 2009 and no. 23414 of 4 November 2009) have tackled the issue of sufficiency in a peculiar manner, departing from previous case law. In both decisions, it is stated that “the protection granted by a patent presupposes, besides the requirements of novelty…

In this case the Board ruled that features providing a displayed icon of a three-dimensional appearance have technical character and thus should be considered when assessing inventive step. According to the Board these features specify how the information is displayed and not what is displayed so that these features do not fall under the category…

In this case, the Board of Appeal had to decide whether a claim containing a feature for which the description contained erroneous figures only met the requirements of Article 83 EPC (sufficiency of disclosure) and Rule 27(1)(e) EPC 1973 (corresponding to Rule 42(1)(e) EPC 2000). The Board of Appeal decided that a patent application should…

In case of parallel proceedings before a national court and the Boards of Appeal, parties should inform both tribunals of this position as early as possible. In order to avoid duplication of proceedings, the parties should ask the appropriate tribunal for acceleration. Whether acceleration is requested by one party, or both or all parties in…