A SHED OF LIGHT IN THE DARK: First Spanish decision admitting post-grant claim limitations under article 138.3 of CPE 2000
The Commercial Court of Granada has just handed down a Decision dated 6 July 2011 which, as far as the author is aware, has admitted for the first time a post-grant claim limitation under article 138.3 of the European Patent Convention (EPC 2000) in Spain. The Decision has been made in the context of an infringement action filed by Sanofi-Aventis against Hospira Productos Farmacéuticos y Hospitalatarios S.A. (“Hospira”). In their statement of defence, Hospira filed a revocation action against two of the patents on which the infringement action was based (EP 667,771 and EP 827,745).
The first question addressed by the Judge is whether article 138.3 of EPC 2000 is self-executing or, on the co [...]
Supreme court hands down landmark judgment on doctrine of equivalents and trips
On 4 July 2011, the Civil Chamber of the Supreme Court published a judgment dated 10 May 2011 approved en banc (i.e. by the full Court) shedding light on two important points: (i) the scope of the doctrine of equivalents; and (ii) the effect of articles 27.1 and 70 of TRIPS on the effects of the Spanish Reservation to the European Patent Convention (“EPC”).
In 2005, three Spanish companies filed a legal action requesting: (i) a declaration that a process to obtain olanzapine characterized by making a reaction between a precursor and piperazine and then making a methylation step (i.e. A+B+C) would not infringe claim 1 of patent EP 454,436, which protected a process characterized by making a r [...]
Cephalon v Orchid – no infringement on purposive construction
In the recent case of Cephalon v Orchid [2011] EWHC 1591, the UK Court held that three patents relating to the drug modafinil, used to treat sleep disorders such as narcolepsy, were not infringed and were invalid for obviousness. Previously in this case the court had refused to grant an interim injunction despite the failure of the generic entrants to “clear the way”, ordering instead an expedited trial (as reported on this blog back in November last year).
Of main interest in this case was the English Court’s ruling on construction. The principal issue which divided the parties was whether the claims of the patents were referring to particle size in manufactured tablets (Cephalon’s [...]
Enabling Disclosure – A New Rule of Reason for Patentability?
This is to report on a new tendency in the jurisdiction of the Federal Patent Court to use the prerequisite of enabling disclosure (Art. 83 EPC) as an unpredictable rule of reason for patentability.
Based on a Federal Supreme Court decision of 2001 (“Taxol”), it had been established case law in Germany that a patentee may claim a broad scope of protection even if the patent specification only disclosed one way to accomplish the object of the invention. Namely, in the “Taxol” case, the claimed substance could not be obtained by known esterification methods, and the patent specification mentioned only one specific esterification method which would produce the claimed substance. Still, [...]
Lack of Clarity of Granted Claims in EPO Opposition Proceedings
During EPO opposition proceedings, patentees have historically been able to avoid discussing clarity by combining granted claims rather than using the description as basis for amendments. The landmark cases T 227/88 and especially T 367/96 have been relied on to support this position.
However, some technical boards of appeal are now starting to engage in a discussion of clarity of amended claims arrived at by combining granted claims.
In T 1459/05, an amended claim arrived at by combining two granted claims was rejected by the board for lack of clarity in an opposition-appeal. The reasoning was that the ratio of T 367/96 is based on an assumption that may not be true, namely that EPO Exam [...]
Sovereign Acts of a Supranational Entity (EPO), Federal Constitutional Court (Bundesverfassungsgericht), 29 April 2010
- By Anja Petersen, Hoffmann Eitle ,
for Kluwer IP Cases
The decision of the Board of Appeal of the European Patent Office which revokes a European patent due to lack of inventive step, is a supra-national legal instrument which can be the object of a complaint to the German Constitutional Court. Such complaints are only admissible if the protection of fundamental rights is no longer generally and obviously guaranteed by the legal system and the internal practice of the international organization in dispute. Since these conditions are not met, the complaint is dismissed.
Click here for the full text of this case. A summary of this case will be posted on http://www.KluwerIPCases.com.
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