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Public Prior Use of a Pharmaceutical Preparation (T 2458/09)

Although more than 20 years have passed since the Enlarged Board of Appeal issued its decision G 1/92, there is still little case law which provides guidance on how to establish the structure and properties of a particular medicament in a manner so as to be able to rely on the same as a piece of prior art in opposition proceedings.

In G 1/92, the Enlarged Board rejected the notion of T 93/89 that the ingredients of a commercially available product are not made available to the public unless there is reason for experts to investigate its composition by chemical analysis, and it held that the chemical composition of a product is state of the art when the product as such is available to the pub [...]

Not accepting an undertaking entails an intention to market the allegedly infringing product

On 12 September 2014, the Barcelona Court of Appeal (Section 15) handed down a decision confirming a preliminary injunction preventing a Spanish company from marketing capsules claimed to be compatible with what is known as the Nespresso® system, which raises a handful of interesting legal points.

The first point of interest discussed was whether or not the appeal proceedings against the first instance decision which had ordered a preliminary injunction should be discontinued after the Court of First Instance (Barcelona Commercial Court number 5) handed down a judgment on the merits, upholding the infringement complaint.  After the judgment in the main proceedings came out, the complainant [...]

Is the Federal Patent Court obliged to appoint a technical expert?

by Bernward Zollner

In a recent decision of the Federal Supreme Court dated 26 August 2014 (docket-No. X ZB 19/12) a further appeal of an applicant pursuing his patent application was rejected. Already the German Patent and Trademark Office had rejected the patent application. The Appeal of the applicant against this decision had been rejected by the Federal Patent Court. Against this decision the applicant submitted a further appeal to the Federal Supreme Court arguing that the Federal Patent Court should have appointed a technical expert. The Federal Supreme Court has rejected this further appeal.

In the reasoning it is pointed out that the Technical Senate of the Federal Patent Court does [...]

The invalidity defense in Danish PI proceedings – the times are changing

The Danish Maritime & Commercial Court recently granted an interlocutory injunction in a patent dispute relating to 2nd medical use claims (Novartis v. Orifarm Generics case A-0006-14)).

The Novartis patent claim language included a specification for a TTS (transdermal therapeutic system) for administering Rivastigmine in the treatment of Alzheimers:

“Rivastigmine for use in a method of preventing, treating or delaying progression of dementia or Alzheimer’s disease,
wherein the rivastigmine is administered in a TTS and the starting dose is that of a bilayer TTS of 5 cm2 with a
loaded dose of 9 mg rivastigmine, wherein one layer: …” (highlighted by me).

When Orifarm Generics launched a TT [...]

AIPPI approves Resolution aimed at helping rescue claims on second medical uses from the Valley of Death

As readers well know, over the years many patent offices around the world have opened the door to the patentability of so-called “second medical uses” to foster research on possible solutions to unmet medical needs based on the use of already known compounds. Although the most developed patent offices such as the European Patent Office (“EPO”) and the United States Patent Office (“USPO”) have a relatively long history of accepting these types of claims, their effective protection may be distorted by existing regulatory regimes. For example, in countries where electronic-prescribing (“e-prescribing”) software cause an active principle to be prescribed for all possible uses regardless of the f [...]

Legitimate interest in obtaining a Judgment on infringement from a national Court persists even after patent has been revoked by EPO

As the readers well know, the European Patent Convention (“EPC”) system allows the validity of European patents to be challenged through two different routes: (i) oppositions filed before the European Patent Office (“EPO”); and (ii) revocation actions filed before national Courts. This system, which has its advantages, has disadvantages as well. For example, it may result in a waste of the time, money and other resources invested into litigating before a national Court if, when the proceedings before the national Court are at an advanced stage, the train that is running in parallel before the EPO leads the patent to the revocation station.

In countries where Judges have discretion to decide [...]

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