First Decision of Swiss Federal Supreme Court concerning pre-trial taking of evidence in patent matters (BGE 4A_532/2011)
The Swiss Federal Supreme Court rendered its first decision regarding the new pre-trial taking of evidence proceeding in Switzerland’s new Code of Civil Procedure Law (ZPO) and in the Swiss Patent Act (PatG). More than a few patent practitioners feared that the Federal Supreme Court would confirm the challenged decision of the Court of Commerce of the Canton of Aargau. This would have been the end of pre-trial taking of evidence in patent matters. The Federal Supreme Court rendered a judgement of Solomon.
Article 158 of the new Code of Civil Procedure (in force since 1 January 2011) and article 77 of the Swiss Patent Act both provide pre-trial discovery measures.
While Article 158 ZPO allows [...]
Armchair patent fails to get off the ground
The English High Court has upheld the decision of the UK Intellectual Property Office to refuse the grant of a patent for the treatment of inflammatory bowel disease (IBD) with zinc (El-Tawil v The Comptroller General of Patents [2012] EWHC 185 (Ch)). Although the case does not break new ground, it provides a useful review of the approach of the English courts to some patentability questions (and a critique of the difficulties that patent applicants litigating in person may create for themselves).
Claim 1 of the patent application in suit described a mechanism of action by which addition of zinc to a treatment regimen might treat IBD (the use of zinc for treating IBD having previously bee [...]
Oxycodone – An Unfinished Battle and an Undisclosed Question
Litigation and EPO Oppositions/Appeals surrounding a controlled-release dosage form of the drug oxycodone, a morphine-like opioid analgesic developed in 1918, has kept Europe’s Pharma IP Lawyers busy for a couple of years. One of the key EP patents in this battle has been EP 722 730, and almost everything about this patent is out of the ordinary. The patent is owned by no less than 13 separate companies from the Purdue Pharma/Napp/Mundipharma group. It is the first divisional application of EP 576 643 and itself forms the parent application of no less than 13 further divisionals and grand-divisionals, according to epoline. It is distinguished from its parent application by a disclaimer which [...]
Anonymous confirmation by research institute is not a suitable means of proof in PI proceedings
In my blog of 10 June 2011 I had reported about the decision by the Landgericht Duesseldorf “Pramipexol” (4a O 277/10) where the Court of first Instance had granted a PI based on an anonymous confirmation by a research institute. This decision has been reversed by the Court of Appeals (I-2 U 22/11).
The Court of first Instance had issued a preliminary injunction against a generic company before the generic was listed in one of the usual publications (Rote Liste, Lauer Taxe etc.). The Court had accepted as sufficient proof of an infringing activity the confirmation from an independent market research organization according to which the generic drug had been offered to a physician by a pharmac [...]
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 [...]
