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[G 1/22 and 2/22] The right to claim priority and its transfer are matters of autonomous EPC law. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. Distinction between (a) title to the European patent application (subject ot national property laws) and (b) the right ot claim priority, which is created under the autonomous law of the EPC and the Paris Convention, the transfer of which should also be assessed under the autonomous law of the EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).
[G 2/21]. Plausibility technical effect. Plausibility does not amount to a distinctive legal concept or a specific patent law requirement under the EPC. Evidence of technical effect may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date. The relied upon technical effect for inventive step needs to be encompassed by the technical teaching of the claimed invention at the filing date and to embody the same invention.
Interim relief for patent infringement. It is not allowed to dismiss interim relief for patent infringement where the validity of the patent in question has not been confirmed by a decision given in opposition or invalidity proceedings. Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.
[G 4/19] Double patenting. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC. The application can be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.
SPC: Market Authorisation (MA) for a therapeutic application of a product cannot be regarded as the first authorization where another authorisation was granted previously for a different therapeutic application of the same product. Article 3(d) of Regulation No 469/2009 must be interpreted as meaning that an MA cannot be considered to be the first MA, for the purpose of that provision, where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of an MA for a different therapeutic application.
Patentability of essentially biological process for the production of plans or animals. Negative effect on allowability if claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. Taking into account developments afterdecisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.
A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design. In the Enlarged Board’s opinion, the COMVIK approach is suitable for the assessment of computer-implemented simulations. Like any other computer-implemented inventions, numerical simulations may be patentable if an inventive step can be based on features contributing to the technical character of the claimed simulation method. When the COMVIK approach is applied to simulations, the underlying models form boundaries, which may be technical or non-technical. In terms of the simulation itself, these boundaries are not technical. However, they may contribute to technicality if, for example, they are a reason for adapting the computer or its functioning, or if they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). In order to avoid patent protection being granted to non-patentable subject-matter, such further use has to be at least implicitly specified in the claim. The same applies to any adaptations of the computer or its functioning. The same considerations apply to simulations claimed as part of a design process. A design process is normally a cognitive exercise. However, it certainly cannot be ruled out that in future case there may be steps within a design process involving simulations which contribute to the technical character of the invention. Moreover, “design” is not a clearly defined term, and there may well be software functions that can be associated with or even result in a “design”.
Concept of “appropriate compensation” for injury caused by a revoked provisional measures of article 9976) of the Enforcement Directive must be given an independent and uniform interpretation: When the terms of a provision of EU law makes no express reference to the law of the Member States its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union. Meaning of the concept of “appropriate”: justified in the light of the specific circumstances. While the exercise of their authority to grant such compensation is strictly subject to the preconditions under which either the provisional measures must have been repealed or ceased to be applicable because of any action or omission on the part of the applicant, or it must subsequently be found that there is no infringement or threat of infringement of an intellectual property right, the fact that those conditions are satisfied in a specific case does not mean that the competent national courts will automatically and in any event be obliged to order the applicant to provide compensation. Article 9(7) of the Enforcement Directive must be interpreted as not precluding national legislation which provides that a party – even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid - shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case.
SPC. Marketing authorisation relied on in support of an application for a SPC concerning a new formulation of an old active ingredient, cannot be regarded as being the first marketing authorisation for the product concerned as a medicinal product in the case where that active ingredient has already been the subject of a marketing authorisation as an active ingredient.
SPC. In a marketing authorisation procedure, a communication of the package leaflet or summary of the product characteristics of a generic medicinal product, which does not include indications or dosage forms which were still covered by patent law at the time that medicinal product was placed on the market ("carve out"), constitutes a request to limit the scope of the marketing authorisation of the generic medicinal product in question
SPC. A product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of Article 3(a) of the SPC Regulation for Medicinal Products where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, if, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent: (1) the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent, and (2) each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.
SPC. Date of the first MA, as stated in an application for the SPC, on the basis of which the duration of the certificate is calculated, is incorrect when the incorrect date led to a method for calculating the durating of the certificate which does not comply with the requirements of Article 13(1) of SPC Regulation for Medicinal Products, as interpreted by a subsequent judgment of the Court. When the date of the first MA is incorrect, the holder of an SPC may, under Article 18 of SPC Regulation for Medicinal Products, bring an appeal for ectification of the duration stated in the SPC, provided that the SPC has not expired.
Patent law. Scope of protection. The reformulated (guideline) questions for finding infringement are as follows: i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent? ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was “yes” and that the answer to the third question was “no”. Appropriate use of prosecution history: Reference to the file would only be appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. Indirect infringement: I would uphold the Court of Appeal’s determination that Actavis are liable to Lilly for indirect infringement in the United Kingdom with respect to their products if Actavis know, or it is obvious in the circumstances, that ultimate users will dilute in saline - or at least Actavis would be liable for indirect infringement if they were not liable for direct infringement. The Court of Appeal said that this conclusion would apply equally to France, Italy, and Spain, and there is no challenge to that from Actavis.
SPC. Article 3 (b) of the SPC Regulation must be interpreted in such a way that an end of procedure notice drawn up before the expiry of the basic patent can not be equated with an MA and, on the basis of an end of procedure message, no SPC can be obtained. The fact that no marketing authorization was issued on the date of the application for an SPC is not a defect that can be repaired in accordance with Article 10, paragraph 3, of the SPC Regulation.
The mere circumstance of a carve-out is not sufficient to rule out direct infringement of a second medical indication. Distinction drawn by the Appellate Court in the scope of protection of ‘classic second medical indication’ and ‘sub-group indication’ is incorrect. Direct infringement of Swiss-type claims if: average person skilled in the art will consider that the substance is (also) intended for or suited to the treatment covered by the second medical indication patent, the manufacturer or seller foresees or ought to foresee that the generic drug he manufactures or offers will intentionally be used for that treatment and that he does not take the steps to prevent his product from being dispensed for the patented second medical indication. Indirect infringement of Swiss-type claims possible on the same basis as for a claim in accordance with Article 54(5) EPC: if the manufacturer supplies or offers the drug to persons not entitled to work the invention and where he knows or it is obvious given the circumstances, that the drug is suitable and intended for the patented second medical indication. Explanation concept of ‘means relating to an essential element of the invention’ as specified in section 73(1) DPA 1995: pertains not only an element in the patent claims, let alone in that part of the claims containing a description of how the invention differs from the prior art, the means must be able to serve the concept of the invention, that which the invention is based upon, and must contribute to the realization of the teachings in the patent, and in each individual case the judge must ask himself whether this is the case, which may involve asking whether the contentious means plays such a part in the application of the doctrine in the patent that the ratio behind the existence of the notion of indirect patent infringement is satisfied.
[G 1/15] Entitlement to partial priority (article 88 EPC). Entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.
The Court does not have jurisdiction to rule on the validity of Article 21(2) of SPC Regulation for Medicinal Products. Article 21(2) of SPC Regulation for Medicinal Products applies to a supplementary protection certificate granted by a Member State prior to its accession to the European Union. If a market authorisation is granted in the EEA before it is granted in a Member State and before its accession to the EU, only the first marketing authorisation must be taken into account for the purposes of determining the duration of validity of the supplementary protection certificate.
SPC. The ‘date of the first authorisation to place the product on the market in the European Union’ of Article 13(1) SPC Regulation is determined by EU law. The ‘date of the first authorisation to place the product on the market in the European Union’ is the date on which notification of the decisions granting marketing authorisation was given to the addressee of the decision.
SEPs and FRAND. FRAND-patent holder does not abuse a dominant position to pursue infringement proceedings if he alerted the alleged infringer of the infringement, presented a specific, written offer for a licence on FRAND terms and the infringers continues to use the patent in question. Not prohibited for holder patent on FRAND terms in a dominant position to bring an action against the alleged infringer and seek the rendering of accounts or an award of damages in respect of those acts of use.
The Regulation Unitary Patent Translation Arrangements has a legitimate aim: the translations arrangements make the access to the unitary patent and patent system as a whole easier, it is cheaper and ensures legal certainty. Since it is not required to translate a patent in an official language of a State, the current framework is suitable for this purpose. Regulation is proportional: cost-effective and preserves the necessary balance between the interests of patent applicants and other market participants. No violation of judgment Meroni/High Authority: The Council did not delegate powers to Member States or the EPO. Article 118 TFEU correct foundation for article 4 Regulation Unitary Patent Translation Arrangements. No violation of the principle of legal certainty.
Unitary Patent Law: Administrative procedure preceding unitary patent protection is compatible with EU law: only establishes unitary effect on patents granted under the EPC. Regulation can be based on article 118(1) TFEU which is apt to prevent divergences in terms of patent protection
Allowable product claim directed to plants or plant material such as plant parts or fruits.
Fact that only an essentially biological process or a product-by-process claim is available for the claimed subject matter (other than plant varieties) does not make the claims unallowable. Product-by-process claim protects the product, not the process and is only allowable if (a) it is impossible to define the claimed product other than in terms of a process of manufacture and (b) the claimed product itself meets the patentability requirements. Rules for interpretation of EPC: it is established in the jurisprudence that the principles of interpretation provided for in Articles 31 and 32 Vienna Convention are to be applied when interpreting the EPC. Decisions and opinions given by national courts in interpreting the law may also be taken into consideration. No general notion of an obligatory restrictive construction of exceptions to patentability.
When considering if an amended patent meets the requirements of article 101(3) EPC, the patent claims may be examined for compliance with of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
SPC. Basic patent: if a basic patent includes a claim to a product comprising an active ingredient which constitutes the sole subject-matter of the invention, that provision precludes the holder from obtaining a second supplementary protection certificate for that combination.
IPPT20150212, CJEU, Merck v SIGMA
SPC. Notice of oppossition: the holder of a patent or SPC is not required to give notification of his intention to oppose a proposed importation before invoking his rights under the first paragraph of the mechanism from the 2003 Act of Accession to the European Union.
IPPT20150115, CJEU, Forsgren v Patentamt
SPC in principle possible where the active ingredient is covalently bound to other active ingredients which are part of a medicinal product.No SPC possible for an active ingredient whose effect does not fall within the therapeutic indications covered by the wording of the marketing authorisation.Carrier protein conjugated with a polysaccharide antigen by means of a covalent binding may be categorised as an ‘active ingredient’ only if it is established that it produces a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the marketing authorisation.
IPPT20141218, CJEU, International Stem Cell Corporation v Patent Office
Biotech directive. An unfertilized human ovum that does not have the inherent capacity of developing into a human being, does not constitute a ‘human embryo’ according to Article 6(2)(c) of the Biotechnical Inventions Directive.
[G 1/12] It is possible to correct an error in the identification of the appellant under Rule 101(2) EPC by request for substitution of the true appellant, provided the requirements of Rule 101(1) EPC have been met. Free evaluation of evidence. Proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence. Procedure for correcting error in appellant’s name is available under general procedure for correcting errors under Rule 139 EPC.
SPC. Safener must be interpreted as ‘product’ and ‘active substances’ in SPC-Regulation if the substance has a toxic, phytotoxic or plant protection action of its own.
Patent-ineligible abstract ideas: implicit exception for ‘“[l]aws of nature, natural phenomena, and abstract ideas.’ ” In applying the §101 exception, this Court must distinguish patents that claim the “‘buildin[g] block[s]’” of human ingenuity, which are ineligible for patent protection, from those that integrate the building blocks into something more. Using this framework, the Court must first determine whether the claims at issue are directed to a patent-ineligible concept. If so, the Court then asks whether the claim’s elements, considered both individually and “as an ordered combination,” “transform the nature of the claim” into a patent-eligible application. The claims at issue are directed to a patent-ineligible concept: the abstract idea of intermediated settlement.
IPPT20140515, HCUK, Actavis v Eli Lilly
Priority date is relevant date to asses common general knowledge for the purpose of infringement. Claim construction: claim must be construed in the same manner for the purpose of considering both infringement and validity. To put it bluntly, one cannot use equivalents to extend the scope of the claim just for infringement and not for validity. Still less can one use equivalents to extend protection outside the claims for the purposes of infringement, but confine attention to the claims when considering validity. Three main classes of equivalence: (i) unfortunate drafting, (ii) technology having moved on and (iii) regrettable decision taken during prosecution. In the third class of case, there is no reason why the law should be sympathetic to the patentee. Prosecution history: courts should be cautious before relying upon prosecution history as an aid to construction, but when the prosecution history shows clearly why the claims are expressed in the manner in which they are to be found in the granted patent and not in some broader manner there is no good reason why the court should shut its eyes to the story told by the prosecution file.
IPPT20140213, CJEU, Merck Canada
SPC. Tribunal Arbitral necessário must be considered to be a court or tribunal for the purposes of article 267 TFEU. SPC: validity of SPC is no longer than 15 years from the first MA in the European Union.
SPC. A patent which protects several different products can obtain several SPC’s
SPC: no new SPC possible in case the holder of a patent each time he places a medicinal product on the market containing a (1) principle active ingredient, protected by the basic patent and (2) another active ingredient which is not protected by the patent.
SPC: SPC possible on condition that active ingredient is covered by a functional formula that is identified in the claims of the patent.
IPPT20131114, CJEU, GSK v Patent Office
SPC - active ingredient. Adjuvant does not fall within the definition of ‘active ingredient’ within the meaning of the provision, and adjuvant which has no therapeutic effect on its own does not fall within the definition of ‘combination of active ingredients’
SPC: Article 3(1)(b) of Regulation No 1610/96 must be interpreted as precluding the issue of a supplementary protection certificate for a plant protection product in respect of which an emergency MA has been issued under Article 8(4) of Directive 91/414.
IPPT20130718, CJEU, Daiichi Sankyo and Sanofi Aventis v DEMO
TRIPs, patent law anf jurisdiction of CJEU. Article 27 of the TRIPs Agreement falls within the field of the common commercial policy. Article 27 of the TRIPs Agreement concerns patentability, not the protection conferred. Pharmaceutical process patent does not, by reason of rules set out in Articles 27 and 70 TRIPs, have to be regarded from the entry into force of the agreement as covering the invention of pharmaceutical products.
IPPT20130613, USSC, AMP v Myriad
cDNA is patent eligible, separated DNA is not. Separating a gene from its surrounding genetic material is not an act of invention; no creation or alteration of genetic information encoded in genes. Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a non-naturally occurring molecule. cDNA is patent eligible as a molecule that is not naturally occurring: the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. Not implicated by this decision: Method claims, new applications of knowledge about genes and the patentability of DNA in which the order of the naturally occurring nucleotides has been altered.
IPPT20130416, CJEU, Spain v Council
Unitary patent protection. Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection legally founded.
Abuse of a dominant position. Development product market and substitution of importance. Price comparison of H2-blockers and PPI’s of identical treatment period irrelevant in case of absence of competitive constraint due to therapeutic superiority PPI’s. First abuse: knowingly trying to mislead patent offices and judicial authorities while obtaining Supplementary Protection Certificates (“SPC’s”). Specific responsibility undertaking in dominant position. Anti-competitive effect caused by unlawful SPC’s. Second abuse: deregistration of Marketing Authorisation (“MA”) of original medicinal product to hinder registrations of generic medicinal products and parallel imports. Deregistration MA after period of exclusivity results pharmacological, toxicological and clinical trials to hinder generic products and parallel imports does not come within scope of competition on the merits to benefit consumers. Possibility of deregistering MA is not property right: restriction does not constitute expropriation or obligation to grant a licence.
SPC. Mere existence of earlier authorisation veterinary medicinal product does not preclude SPC for different application within basic patent. Article 13 SPC Regulation: marketing authorisation (MA) of product which is within basic patent. Irrelevant whether same active ingredient is present in two medicinal products, second MA required full application, or product was within different patent which belonged to other proprietor.
Jurisdiction. Possibility of irreconcilable judgments (article 6 EEX Convention) if companies are each separately accused of infringement of same national part of European patent with same product. Exclusive jurisdiction regarding validity does not preclude special jurisdiction regarding interim measures
IPPT20120320, USSC, Mayo v Prometheus
Unpatentable process claims: We find that the process claims at issue here do not satisfy these conditions. In particular, the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field. At the same time, upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.The process that each claim recites tells doctors interested in the subject about the correlations that the researchers discovered. In doing so, it recites an “administering” step, a “determining” step, and a “wherein” step. These additional steps are not themselves natural laws but neither are they sufficient to transform the nature of the claim.
SPC. SPC can be granted if less than five years have elapsed between the first market authorization and the date of the basic patent application. Purpose of SPC of negative or zero duration: related to paediatric extension
SPC must relate to active ingredients identified in the claims of the basic patent. SPC possible for active ingredient specified in the wording of the claims of the basic patent, where the medicinal product also contains other active ingredients. SPC can be granted in case of a process patent only for product derived from the process
SPC possible for an active ingredient, where the medicinal product for which the MA is submitted contains also other active ingredients.
No SPC possible for active ingredients which are not specified in the wording of the claims of the basic patent. SPC possible for a combination of two active ingredients, where the medicinal product contains also other active ingredients
Sufficient disclosure to satisfy requirements of article 57 EPC regarding “a practical application” and “some profitable use”. Supremacy of principles laid down by the Board’s jurisprudence. No different assessment of evidence if one concludes that the disclosure satisfies article 57 in line with Board’s jurisprudence. Sufficient disclosure to satisfy article 57 goes hand in hand with sufficiently enabling disclosure. General principles Board’s approach in relation to article 57 in relation to biological materials.
Biotech directive. Human embryo within the meaning of Article 6 (2) (c) biotechnology directive. Article 6 (2) (c) biotechnology patent directive excludes from patentability use of human embryos for scientific research. Article 6 (2) (c) Biotechnology Directive: no patentability if technical teaching requires (i) prior destruction of human embryos, or (ii) their use as base material.
[G 2/10] Added subject matter and amendment of claim (article 123(2) EPC). Remainder of the claim after introduction of a disclaimer has to be, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.
SPC. Supplementary Protection Certificate (‘SPC’) only available for medicinal products with a market authorisation under Directive 65/65 having undergone safety and efficacy tests
Supplementary Protection Certificate (‘SPC’) only available for medicinal products with a market authorisation under Directive 65/65 having undergone safety and efficacy tests
Title to patent: The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.
Scope of protection. In case of inconsistencies between the claims and the description, those elements of the description, which are not set forth in the claim, are generally not included in the scope of protection. The description may only be taken into account insofar as it can be read as an illustration of the subject of the claim. If the specification discloses several ways a certain technical effect can be achieved, but only one of these options has been included in the claim, then generally the use of one of the other possibilities constitutes no infringement of the patent by equivalent means.
Unified patent litigation system incompatible with European Law. Exclusive jurisdiction in field of Community patents would alter the essential character of powers which are indispensable to preservation of the very nature of EU law. Member States confer jurisdiction on actions between individuals to a court created by international agreement
Excluded essentially biological process: process containing sexual crossing. Excluded also if process of sexually crossing contains technical step enabling or assisting sexual crossing. Non-excluded; process containing step which by it-self introduces or modifies a trait in the genome of the plant produced. Nature of additional technical step irrelevant.
IPPT20101111, CJEU, Lovells v Bayer
SPC possible in case of a provisional market authorization for plant protection product: In the light of all those considerations, the answer to the question referred is that Article 3(1)(b) of Regulation No 1610/96 must be interpreted as not precluding a supplementary protection certificate from being issued for a plant protection product in respect of which a valid MA has been granted pursuant to Article 8(1) of Directive 91/414.
IPPT20100902, CJEU, Kirin Amgen v Lietuvos Respublikos
Transitional law Supplementary Protection certificate: No SPC available for products for which a Community authorisation to place that product on the market as a medicinal product was obtained more than six months before the accession of the Republic of Lithuania acceded to the European Union, but for which product did not obtain a marketing authorisation in Lithuania
IPPT20100713, BGH, Klammernahtgerät
Enabling disclosure: An invention is available to the public in an enabling manner when the information in the patent application discloses so much technical information to the person skilled in the art that he is able to successfully execute the invention. It is not necessary that as a minimum an embodiment that can be used as such is directly and unambiguously disclosed
IPPT20100706, CJEU, Monsanto v Cefetra
Patent protection DNA-sequence limited to circumstances in which it performs the patented function: not conferring patent right protection in circumstances such as those of the case in the main proceedings, in which the patented product is contained in the soy meal, where it does not perform the function for which it was patented, but did perform that function previously in the soy plant, of which the meal is a processed product, or would possibly again be able to perform that function after it had been extracted from the soy meal and inserted into the cell of a living organism. Exhaustive harmonisation Article 9 Biotech-directive. National law precluded from granting broader protection. Relationship TRIPS and article 9 Biotech-Directive
The machine-or-transformation test is not the sole test for patent eligibility under §101. Business methods not categorically excluded from “process”. Abstract ideas are not patentable processes. Three exceptions to broad principles of patentability: “laws of nature, physical phenomena, and abstract ideas.” No further definition of patentable process required..
[G 0003/08] Referral non-admissable: no conflict in case law of Boards of Appeal. The present position of the case law is thus that a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. If a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than "Program X on a computer-readable storage medium," or "A method of operating a computer according to program X," will always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC.
IPPT20100422, BGH, Dynamische Dokumentengenerierung
Technical character data processing system. A method consisting of the direct interaction between elements of a data processing system has technical character irrespective of whether it is defined by technical features. Such a method is not excluded from patentability if it solves a concrete technical problem with technical means. A solution with technical means requires that system components are modified or addressed in a new manner. It is sufficient that the execution of a computer program, used for solving the technical problem, is determined by technical features outside the com-puter or, if the solution consists in making a computer program, that the program takes into account the technical restrictions of the computer.
[T 1063/06] Reach-through claim, also directed to future inventions: Patent protection limited to actual disclosed contribution to the art. Insufficient disclosure: In the absence of any selection rule in the application in suit, the skilled person, without the possibility of having recourse to his common general knowledge, must resort to trial-and-error experimentation on arbitrarily selected chemical compounds to establish whether they possess the capability according to the claim; this represents for the skilled person an invitation to perform a research programme and thus an undue burden.
[G 0002/08] Second medical indication need not be treatment of another disease. Dosage regimes: The claimed definition of the dosage regime must not only be verbally different from what was described in the state of the art but also reflect a different technical teaching. Swiss type claims no longer necessary. Freedom of medical practitioners to prescribe generics may be restricted: If deemed necessary, the freedom of medical practitioners may be protected by other means on the national level.
[G 0001/07] Excluded from patentability: method for treatment by surgery: A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC. A claim comprising a step encompassing an embodiment of excluded method has to be amended. The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment. No treatment by surgery merely because data obtained by method allow a decision on course of action for surgical intervention.
Members of TNF-ligand superfamily not “capable of industrial application”: No plausible (at least in the sense of reasonably credible) use for any member of the superfamily. Authority of decisions of the Technical Boards of Appeal: We follow any principle of law clearly laid down by them, only reserving the right to differ if we are sure that the commodore is steering the fleet on to the rocks.
IPPT20091022, Court of Appeal, London, Virgin Atlantic v Premium Aircraft Interiors
Scope of protection article 69 EPC: Principles of purposive claim construction. Skilled reader is to know patent practice: and to know (i) the purpose of including reference numerals in patent claims, (ii) the purpose of dividing claims into pre-characterising and characterising portions and (iii) the practice of filing divisional applications, and to bring that knowledge to bear when he considers the scope of the claim. Added matter by deletion or addition: Strict comparison: Subject matter will be added unless it is clearly and unambiguously disclosed in the Parent.
IPPT20091016, EBA-EPO, Computer Implemented Inventions
[G 0003/08] No suspicion of partiality: According to established case law of the Boards of Appeal, of the Enlarged Board and also of national courts of member states, the mere fact that a board member has expressed a view on the legal issue to be decided on a previous occasion, be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, cannot lead to the conclusion of doubts as to impartiality. Nor does a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion
Assignment of title: Stanford did not gain title to Holodniy’s inventions, while the VCA effected a present assignment of Holodniy’s future inventions to Cetus. Roche’s counterclaim for ownership is time-barred by statutes of limitation
SPC. Grant of an SPC is possible to the holder of a basic patent for a product for which one or more SPCs have already been granted to one or more holders of one or more other basic patents.
IPPT20090615, EBA-EPO, Kos Life Science
[G 0002/08] No suspicion of partiality: the present Board cannot identify in the corpus of said decision any reason justifying a suspicion of partiality or establishing a preconceived mind. […]. It is sufficient to state that said decision does not contain any bold contention, nor has it been substantiated in "such outspoken, extreme or unbalanced terms" that it would preclude the capacity of the member concerned from dealing with the pending referral with an open mind and without preconceived thoughts.
[G 2/06] Products derived from destruction of human embryos excluded from patentability: No patenting of products prepared exclusively by method involving destruction of human embryos, even if method is not claimed.Not of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos. Application Rule 28(c) EPC to all pending applications. Request for preliminary ruling by ECJ inadmissable.
IPPT20080709, UKHL, Conor v Angiotech
Sufficiency and obviousness: Threshold test that specification discloses enough to make the invention plausible; […] that the patent will work. Obviousness and obvious to try: Patent law does not require demonstration that taxol actually works to prevent restenosis. Correct question was whether it was obvious to use a taxol-coated stent to prevent restenosis.
IPPT20080410, Court of Appeal, London, Lundbeck v Generics
Novelty: disclosure of the racemate did not disclose the isolated enantiomer; no enabling anticipation. In order to anticipate a patent, the prior art must disclose the claimed invention and (together with common general knowledge) enable the ordinary skilled person to perform it.Obviousness: Not obvious to try. Sufficiency: In an ordinary product claim, the product is the invention. It is sufficiently enabled if the specification and common general knowledge enables the skilled person to make it. One method is enough. When a product claim satisfies the requirements of section 1 of the 1977 Act, the technical contribution to the art is the product and not the process by which it was made, even if that process was the only inventive step.
The machine-or-transformation test: A claimed process is surely patenteligible under § 101 if:(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. The “useful, concrete and tangible result” inquiry is inadequate and reaffirm that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under §101
Jurisdiction regarding TRIPs law. Article 33 TRIPs – Patents – Minimum term of protection – Legislation of a Member State providing for a lesser term – Article 234 EC– Jurisdiction of the Court – Direct effect.
[G 1/06] Sequences of divisionals: In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed
[G 1/05] Amendment divisional application extending beyond original application: So far as Article 76(1) EPC is concerned, a divisional application which at its actual date of filing contains subject matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications.
IPPT20070622, Court of Appeal, London, Pozzoli v BDMO
Assessing obviousness: (1) (a) Identify the notional “person skilled in the art” (b) Identify the relevant common general knowledge of that person; (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; (3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed; (4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
SPC. In a case where a basic patent protects a second medical use of an active ingredient, that use does not form an integral part of the definition of the product.
IPPT20061207, EBA-EPO, Exclusion and objection
[G 1/05] Avoidance of appearance of partiality: if a member of a Board of Appeal in a notice of withdrawal gives a ground which may by its nature. Participation in earlier matter as such no ground for exclusion
IPPT20061115, TBA-EPO, DUNS
[T 154/04] Methods of business research are excluded "as such" from patentability under Article 52(2)(c) and (3) EPC: Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem. Principles of patentability: Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an in-vention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
International jurisdiction – co-defendants in same case. Rejection ‘spider in the web’ doctrine with regard to European patents: not the same situation of law. No risk of irrecocillable judgments: insufficient connection between patent infringement action against number of companies in different contracting states: not the same situation of law and fact. In case of a ‘spider in the web’ (companies, which belong to the same group, have acted in an identical or similar manner in accordance with a common policy elaborated by one of them) the factual situation would be the same. .
Although one and the same substance may be the subject of several patents and several marketing authorisations in one and the same Member State, the SPC will be granted for that substance only on the basis of a single patent and a single authorisation, namely the first granted in the Member State concerned.
IPPT20060223, TBA-EPO, Microsoft
[T 0424/03] Patentability: no computer program ‘as such’: A computer system including a memory (clipboard) is a technical means, and consequently the claimed method has technical character in accordance with established case law. Moreover, the Board would like to emphasise that a method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on, a computer.
[G 0001/04] Diagnostic method practised o the human or animal body: diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise, including preceding steps and specific interactions with body. Not dependent upon participation by medical or veterinary practitioner or medical or technical support staff. Preceding steps must be practiced on the human or animal body. No specific type and intensity of interaction with the human or animal body required
Violation of Article 5(2) Bio-technology Directive: Italian patent law does not allow to patent elements of the human body that have been isolated. Violation of Article 6(2) Bio-technology Directive: Member States have no discretion with regard to the unpatentability of the processes and uses which it sets out. Violation of Article 8-11 Bio-technology Directive: protection for biological material directly obtained through patented process and any material derive through propagation or multiplication. Article 12 Breach Biotechnology Directive: compulsory license in case of interdependence between pa-tent on biological material invention and plant variety right.
Transfer of opposition: The status as an opponent cannot be freely transferred.A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company.
IPPT20050511, TBA-EPO, Max Planck
[T 870/04] Susceptible of industrial application: Some profitable use required. Practical application geared to financial gain. Speculative indication of possible objectives not sufficient. Scientific achievement without practical use is not susceptible of industrial application.
IPPT20050128, EBA-EPO, Highland Industries
[G 0003/03] Reimbursement appeal fee: Board of Appeal instead of department of first instance competent to decide on reimbursement of appeal fee
IPPT20041027, TBA-EPO, Salk Institute
[T 0609/02] Enablement; insufficient disclosure: If the description of a patent specification pro-vides no more than a vague indication of a possible medical use for a chemical compound yet to be identified, later more detailed evidence cannot be used to remedy the fundamental insufficiency of disclosure of such subject-matter.
IPPT20041021, UKHL, Kirin Amgen v Hoechst
Purposive construction and article 69 EPC: Person skilled in the art reads [the claim or] the specification on the assumption that its purpose is to both to describe and to demarcate an invention. Doctrine of equivalents and article 69 EPC: Article 69 firmly shuts the door on any doctrine which extends protection outside the claims. Equivalence: guidelines for purposive construction. Invention should normally be taken as having been claimed at the same level of generality as that at which it is defined in the claims. New technology: The question is whether the person skilled in the art would understand the description in a way which was sufficiently general to include the new technology. Insufficiency claim 19: no enabling disclosure: If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency.
[T 0540/02] Amendment European patent application: Needs to be directly and unambiguously derivable from application. According to the consistent case law of the Boards of Appeal it is not permissible to extract isolated features from a set of features which have originally been disclosed in combination
IPPT20040426, EBA-EPO, AstraZeneca
[G 0002/02] Priorities from India: The TRIPs Agreement does not entitle the applicant for a European patent application to claim priority from a first filing in a State which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPs Agreement
IPPT20040421, TBA-EPO, Hitachi
[T 258/03] In general, a method involving technical means is an invention. Subject matter consisting of technical and non-technical features can be an invention. In the Board's view, activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications. Business scheme lacking technical character: Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed.
[G 0002/02] Allowability of disclaimer not disclosed in application as filed
IPPT20040408, EBA-EPO, PPG
[G 0001/03] Allowability of disclaimer not disclosed in application as filed.
IPPT20040115, TBA-EPO, Ecolab
[T 962/98] Inadmissable generalization of an example: in order to be acceptable an intermediate generalization must be the result of unambiguous information that a skilled person would draw from the review of the example and the content of the application as filed. The Board does not exclude that there may exist situations where some characteristics taken from a working example may be combined with other features disclosed in a more general context without necessarily creating an objectionable intermediate generalization.
IPPT20031211, ECJ, Hässle v Ratiopharm
Supplementary Protection Certificate: so far as concerns medicinal products for human use, the concept of ‘first authorisation to place ... on the market ... in the Community’, in Article 19 (1) of Regulation No 1768/92, refers solely to the first authorisation required under provisions on medicinal products, in accordance with Directive 65/65, granted in any of the Member States, and does not therefore refer to authorisations required under legislation on pricing of or reimbursement for medicinal products. Invalidity of certificate delivered contrary to requirementsof SPC-Regulation: that a certificate which, contrary to the require-ments of Article 19 of Regulation No 1768/92, has been delivered where the first marketing authorisation in the Community was obtained prior to the relevant date fixed by that provision is invalid pursuant to Article 15 thereof.
IPPT20020926, TBA-EPO, COMVIK
[T 0641/00] Invention can only be made up of those features which contribute to technical character: where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step.Formulation technical problem: non-technical feauture of claim may legitimately appear in the formulation of the problem.
Equivalence: For an embodiment that is outside the literal meaning of a patent claim to fall within the scope of protection, it is not sufficient (1) that it solves the problem underlying the invention by means that, although modified, objectively have the same technical effect, and (2) the person skilled in the art is able to determine on the basis of his professional knowledge only, that the modified element has the same effect, but it is also required (3) that the considerations, which the skilled person has to apply to determine that the modified element has the same effect, are drawn from the technical teaching of the patent.
IPPT20020312, BGH, Schneidmesser II
Equivalence: If the patent, when viewed objectively, does not cover the technical content of the invention, protection is limited to what corresponds with the literal meaning of the claims.
IPPT20020312,BGH, Custodiol II
Scope of protection: Interpretation of claim with figures and dimensions: The extent to which figures or dimensions in a claim are binding is not to be determined by their relationship to the state of the art. However, this does not prevent details about the state of the art in the description from being used to interpret such specifications.
Scope of protection. Prosecution history: In principle the prosecution history is not relevant for determining the scope of protection of a patent. The examination of equivalence and its recognizability for the person skilled in the art must be based on the (specific) effect of the feature in its specific limitation by figures in the context of the patent claim.
IPPT20020218, EBA-EPO, HOWARD FLOREY
[T 0641/00] Admissibility of joint opposition or joint appeal
Biotech-directive aims to prevent divergences of practice and case-law. Community competent to harmonise intellectual property law. Commercial exploitation of an invention is not con-trary to ordre public or morality because of a pro-hibition. Genetically modiefied plant variety not patentable, but inventions that concern a grouping wider than a single plant variety are patentable. Biotechnology Directive deprives Member States of option under TRIPS, but is compatible with TRIPs. Biotechnological invention versus discovery
IPPT20010531, EBA-EPO, Same Invention
[G 2/98] Priority - same invention. The requirement for claiming priority of ”the same invention”, [...] is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole
Products: ‘as they occur’ including any impurity. Number of market authorizations: irrelevant for establishing whether products are the same. Difference only in proportion of active chemical compound insufficient to qualify as different product
[T 0315/97] Amended claim – In principle no worse situation opponent/appellant. In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the ap-peal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an in-admissible amendment held allowable by the Opposition Division in its interlocutory decision.
IPPT20001127, EBA-EPO, Designation fees
[G 0004/98] Effect of late payment designation fee: Without prejudice to Article 67(4) EPC, the designation of a Contracting State party to the EPC in a European patent application does not retroactively lose its legal effect and is not deemed never to have taken place if the relevant designation fee has not been paid within the applicable time limit.
IPPT20000908,TBA-EPO, Pension Benefit Systems
[T 1173/97] Having technical character is an implicit requirement for inventions. Method for doing business as such: If the method is technical or, in other words, has a technical character, it still may be a method for doing business, but not a method for doing business as such. Apparatus claim: a computer system suitably programmed for use in a particular field, even if that is the field of business and economy, has the character of a concrete apparatus in the sense of a physical entity, man-made for a utilitarian purpose and is thus an invention within the meaning of Article 52(1) EPC.
IPPT20000712, EBA-EPO, University Patents
[G 3/98] Six month priority period – art 55(1) EPC: For the calculation of the six-month period the relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken account of in calculating this period.
IPPT19991220, EBA-EPO, Novartis
[G 1/98] Claims comprising but not individually claiming plant varieties: A claim wherein specific plant varieties are not individually claimed is not excluded from pat-entability under Article 53(b) EPC, even though it may embrace plant varieties. Exclusion of plant varieties is irrespective of way of production.
IPPT19990518, BGH, Räumschild
Scope of protection: whether the switch from hard-material granules to the use of corresponding rods in itself requires more than the powers of cognition of the skilled person at the priority date.
IPPT19990414, CAFC, AT&T CORP v EXCEL
Patentable invention: applying the Boolean principle to determine value PIC indicator; a useful, concrete, tangible result. more than a disembodied mathematical concept
Scope of certificate: where a product in the form referred to in the marketing authorisation is protected by a basic patent in force, the certificate is capable of covering that product, as a medicinal product, in any of the forms enjoying the protection of the basic patent.
IPPT19990121, EBA-EPO, 19980121, Indupack
[G 3/97] Admissability opposition by straw man: An opposition is not inadmissible purely because the person named as opponent according to Rule 55(a) EPC is acting on behalf of a third party. Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process.
IPPT19990302, BGH, Spannschraube
Function-aimed interpretation: The interpretation of a European patent should not be limited to the wording, but must be based on the overall technical context as communicated to the person skilled in the art by the content of the patent. Not the linguistic or logical-scientific determination of the terms used in the patent is critical, but the understanding of the unprejudiced expert. Patent lexicon: Patents provide with regard to the terms used therein their own lexicon. If these terms differ from the general (technical) language then ultimately only the content of the terms resulting from the patent is authoritative. Scope of protection: The protection conferred by a European patent cannot extended to embodiments using substitutes means that entirely or to a considerable extent make no use of the success achieved by the patent, or use them only to an practically no longer relevant extent.
[G 4/97] Raising grounds for inadmissibility during appeal: The admissibility of an opposition on grounds relating to the identity of an opponent may be chal-lenged during the course of the appeal, even if no such challenge had been raised before the opposition division. Straw man.
IPPT19981112, EBA-EPO, Good Faith - Unilever
Principle of good faith: no obligation to notify appellant that appeal fee is missing
Patentable practical application of algorithm: produces “a usefull, concrete and tangible result”: Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"—a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades. Unpatentable mathematical algorithms: Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not "useful." No business method exception: We take this opportunity to lay this ill-conceived exception to rest.
[T 1173/97] Computer programs as such: lacking technical character. Further technical effect required: It is necessary to look elsewhere for technical character: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subjectmatter of a patent. Potential further technical effect: A computer program product may possess a technical character because it has the potential to cause a predetermined further technical effect. No direct applicability of TRIPs
Conditions for the grant of supplementary protection certificate: Valid authorization to place the product on the market as a medicinal product required.
IPPT19970303, USSC, Warner Jenkinson v Hilton Davis
Doctrine of equivalence. Determination of equivalence should be applied as an objective inquiry on an element by element basis. Doctrine of equivalence does not supersede “prosecution history estoppel”; not any surrender establishes a bright line beyond which no equivalents may be claimed. Not limited to disclosed equivalents.Undecided whether application of the doctrine is for the judge or the jury. Essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?; different linguistic frameworks available.
Where a product is protected by a number of basic patents in force, each of those patents may be designated for the purpose of the procedure for the grant of a certificate.
IPPT19961031, UKHL, Biogen v Medeva
Question of definition of “invention” almost invariably academic. Commercial reasons irrelevant for determining inventive step. Inventive concept: idea of trying to express unsequenced eukaryotic DNA in a prokaryotic host. Enabling disclosure: the specification must enable the invention to be performed to the full extent of the monopoly claimed (a product or a class of products). Invention claimed too broad: technical contribution consisted in showing that known recombinant techniques could be used to make the antigens in a prokaryotic host cell, which does not justify contribution justify a claim to a monopoly of any recombinant method of making the antigens. The claimed invention is too broad […] due, not to the inability of the teaching to produce all the promised results, but to the fact that the same results could be produced by different means. Question of sufficiency: relevant date for compliance is the date of application
[G 6/95] Rule 71a(1) EPC does not apply to the boards of appeal: If Rule 71a(1) EPC were to be interpreted as applying to all departments of the EPO, including the boards of appeal, its effect would be directly contradictory to and in conflict with the effect of Article 11(2) RPBA which was adopted pursuant to Article 23(4) EPC as the emanation of the independence of the boards of appeal.
[G 1/95] Fresh ground for opposition cannot be introduced without agreement of the patentee: In a case where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subjectmatter based upon Articles 52(1), (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.
IPPT19960416, EBA-EPO, Correction of decision to grant – US Gypsum
[G 8/95] An appeal from a decision of an Examining Division refusing a request under Rule 89 EPC for correction of the decision to grant is to be decided by a Technical Board of Appeal.
IPPT19960416, EBA-EPO, Correction of decision to grant – US Gypsum
An appeal from a decision of an Examining Division refusing a request under Rule 89 EPC for correction of the decision to grant is to be decided by a Technical Board of Appeal.
IPPT19960219, EBA-EPO, Representation - BOGASKY
[G 4/95] Oral submissions on legal or technical issues by non-qualified representative
IPPT19951127, EBA-EPO, Inadmissible referral
[G 3/95] Inadmissible referral by President of EPO: The referral of the question of law to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1)(b) EPC. No cinflict between findings in decisions of Boards of Appeal.
No violation of article 6 – access to civil courts of decision of Appeals Division of Patent Office
[T 939/92]. No lack of support of claim in case of incredible description: A claim concerning a group of chemical compounds is not objectionable simply because the description does not contain sufficient information in order to make it credible that an alleged technical effect is obtained by all the compounds claimed. Inventiveness requires the achieving of a technical effect: the answer to the question what a skilled person would have done in the light of the state of the art depends in large measure on the technical result he had set out to achieve. he must be assumed to act not out of idle curiosity but with some specific technical purpose in mind.
[G 2/93] Sufficient disclosure: In the case of an invention referred to in Rule 28(1) EPC, the primary function of a culture deposit is to complete an otherwise insufficient written disclosure. The culture deposit constitutes then an essential part of the disclosure. The information concerning the file number of a culture deposit according to Rule 28(1)(c) EPC may not be submitted after expiry of the time limit set out in Rule 28(2)(a) EPC.
IPPT19940816, EBA-EPO, Priority interval
[G 3/93] Right of priority – same invention: A document published during the priority interval constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed. This also applies if a claim to priority is invalid due to the fact that the priority document, and the subsequent European application, do not concern the same invention because the European application claims sub-ject-matter not disclosed in the priority document.
Invention as a whole is directed to a machine; not a disembodied mathematical concept: the claimed invention as a whole is directed to a combination of interrelated elements which combine to form a machine for converting discrete waveform data samples into anti-aliased pixel illumination in-tensity data to be displayed on a display means
[G 9/92] Patent proprietor sole appellant interlocutory deci-sion - no challenge of maintenance patent by non-appealing opponent or Board of Appeal. Opponent sole appellant interlocutory decision – proprietor primarily restricted to patent as main-tained by Opposition Division
IPPT19940714, EBA-EPO, Non-appealing party - MOTOROLA
[G 0004/93] If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.If opponent as sole appellant interlocutory decision: patentee restricted to defending the patent in the form of the interlocutory decision
[G 3/92] New application for invention - earlier application filed by a non-entitled person: if a person other than the applicant is entitled to the grant of a European patent, and that person files a new European patent application in respect of the same invention under Article 61(1)(b) EPC, it is not a pre-condition for the application to be accepted that the earlier original usurping application is still pending before the EPO at the time the new application is filed.
IPPT19940513, EBA-EPO, Late amendments – Whitby II
[G 7/93] Discretion to allow amendment until decision to grant:
IPPT19940511, EBA-EPO, Intervention – ALLIED COLLOIDS
[G 1/94] Intervention by assumed infringer admissible in appeal stage of Opposition.
IPPT19940317, BGH, Zerlegvorrichtung für Baumstämme
Scope of protection of a patent does not encompass equivalent modifications, which are based on an inventive step.
IPPT19940202, EBA-EPO, Limiting feature – Advanced Semiconductor Products
[G 1/93] Added undisclosed limiting feature requires amendment. Added undisclosed feature without technical contriubution and limiting scope of protection is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.
IPPT19940118, EBA-EPO, Re-establishment - Nellcor
[G 5/93] Application of time limits of Article 122(5) EPC. Re-establishment Euro-PCT applicants
IPPT19930927, EBA-EPO, Re-establishment - DURION
[G 6/92] No re-establishment of patent application upon failure to pay examination fee: Article 122 EPC is not applicable to the time limit provided in Article 94(2) EPC for paying the examination fee, and that an applicant who has been unable to observe this time limit may not have his rights re-established.
IPPT19930520, TBoA-EPO, Kawasaki Steel
[T595/90] Envisaged product is non-obvious if inventive method is required to make it
[G 9/91] Contentious nature opposition proceedings. Double function Statement in Notice of Opposition. Scope of opposition: in its examination of an opposition or an appeal an Opposition Division or a Board of Appeal is bound by the statement of the opponent under Rule 55(c) EPC of the extent to which the patent is op-posed and of the grounds for opposition. dependent subject-matters have to be considered as being implicitly covered by the statement under Rule 55(c) EPC. Opposition Division may raise grounds for opoosi-tion on its own motion where, prima facie, there are clear reasons to be-lieve that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent
[G 10/91] In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.
IPPT19930318, TBoA, Fuel Oils - Exxon
[T409/91] Sufficient disclosure: application must contain sufficient information to carry out the invention in the whole area that is claimed; it is the definition of the invention in the claims that needs support
[G 1/92] The composition of product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person without undue burden.No implicit disclosure of extrinsic characteristics which are only revealed when the product is exposed to interaction with specifically chosen outside conditions.No distinction between means of information.
[G 3/89] Correction of application. [...] The parts relating to the disclosure (the description, claims and drawings) may be corrected only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Evidence of common general knowlegde. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.
IPPT19921119, EBA-EPO, CELTRIX
[G 11/91] Correction or amendment: Correction of error in or amendment of description, a claim or a drawing comprised in a European patent application is subject to the prohibition of extension laid down in Article 123(2) EPC. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form allowed by the Convention
IPPT19921027, ECJ, Generics
Compulsory License: Free movement of goods precludes regime for compulsory licenses refusing the licensee the au-thorization to import the patented product from non-member countries where the proprietor of the patent manufactures the product within the national territory, and in order to grant such authorization where the proprietor of the patent works his patent by importing the product from other Member States of the Community
[G 5/91] Appealable decision Opposition Division: the composition of the Opposition Division may be challenged on such a ground on appeal against the final decision of the division or against any interlocutory decision under Article 106(3) EPC allowing separate appeal. Impartiality employees EPO in Opposition Division. The basic requirement of impartiality therefore applies also to employees of the departments of the first instance of the EPO taking part in decision-making activities affecting the rights of any party.
IPPT19901116, EBA-EPO, Medtronic - Administrative Agreement
[G 5/88 G 7/88 G 8/88] Administrative Agreement President EPO and German Patent Office: President EPO not authorized to enter into Agreement.Principle of good faith and protection of legitimate expectations of users of the EPO
IPPT19901003, TBA-EPO, Onco-mouse
[T 0019/90] Consider whether the subject-matter of the present application constitutes an "animal variety" - if the subject-matter is not covered [...], then Article 53(b) EPC constitutes no bar to patentability. Not an essentially biological process: The onco-gene is inserted by technical means into a vector (e.g. a plasmid), which is then micro-injected at an early embryonic stage. Patents are grantable for animals produced by a microbiological process: general principle of pat-entability under Article 52(1) EPC is restored for inventions involving microbiological processes and the products of such processes.
IPPT19900502, EBA-EPO, Non-unity a posteriori
[G 2/89] Additional search fee: The EPO in its function as an ISA may, pursuant to Article 17(3)(a) PCT, request a further search fee where the international application is considered to lack unity of invention "a posteriori".
IPPT19900502, EBA-EPO, Polysuccinate esters
[G 1/89] PCT Guidelines binding upon EPO when acting as International Searching Authority (ISA).Unity of invention “a priori” and “a posteriori”: an international application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of unity of invention, not only "a priori" but also "a posteriori", i.e. after taking prior art into consideration. However, such consideration has only the procedural effect of initiating the special procedure laid down in Article 17 and Rule 40 PCT and is, therefore, not a "substantive examination" in the normal sense of that term.
IPPT19891211, EBA-EPO, Bayer
[G 06/88] Second non-medical indication: novelty of second use with same technical means of of execution. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be in-terpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public
IPPT19891211, EBA-EPO, Mobil Oil – Friction reducing additive III
[G 2/88] Second non-medical indication; new use of a known compound: A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54 (1) EPC provided that such technical feature has not previously been made available to the public. A change of category of granted claims in opposition proceedings is not open to objection under Article 123 (3) EPC, if it does not result in extension of the protection conferred by the claims as a whole
[G 4/88] Transferability of pending opposition proceedings. An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.
IPPT19890424, CAFC, re Gosteli
Priority – Invention as claimed
IPPT19880812, Court of Appeal, Londen, Improver v Remington
The "purposive construction" approach established in the Catnic case is the same approach followed by the Protocol on the Interpretation of Art. 69 EPC. If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or a contextual meaning of a descriptive word or phrase in the claim ("a variant") was nevertheless within its language as properly interpreted, the court should ask itself the following three questions: (1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no- (2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes- (3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement.
IPPT19860429, BGH, Formstein
Equivalence: Under Sec. 14 of the Patent Law 1981 the extent of the protection conferred by a patent generally embraces equivalents to the invention as claimed. The defence that the embodiment alleged to be an equivalent would not be patentable over the prior art is admissible.
[G 1/84] Opposition by proprietor of the patent: A notice of opposition against a European patent is not inadmissible merely because it has been filed by the proprietor of that patent.
Free movement of goods and exhaustion: patent proprietor has the right to prevent the marketing of a product which has been manufactured in another member state by the holder of a compulsory licence
IPPT19841205, EBA-EPO, EISAI – Second medical indication
[G 01/83; 05/83 en 06/83] Second medical indication – novelty – Swiss type claim: the inventor of a "first medical indication" can obtain purposelimited product protection for a known substance or composition, without having to restrict himself to the substance or composition when in a form technically adapted to a specified therapeutic purpose. No therapeutic use claims permitted. Therapeutic substances or compositions – medical indication: A European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application. Vienna Convention applies to interpretation of European Patent Convention.
IPPT19810714, ECJ, Merck v Stephar
Free movement of goods : proprietor of a patent for a medicinal preparation who sells the preparation in a member state where no patent protection exists, cannot prevent the marketing in the import into a member state, where patent protection exists
IPPT19810303, USSC, Diamond v Diehr
Patentable process claim: when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is per-forming a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.
IPPT19801127, UKHL, Catnic Components v Hill & Smith
Patent specification should be given a purposive construction. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
IPPT19800616, USSC, Diamond v Chakrabarty
Wide scope of term “manufacture”: In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." Micro-organism qualifies as patentable subject matter.
IPPT19780622, USSC, Parker v Flook
method in which the only novel feature is a mathematical formula not patentable
IPPT19741031, ECJ, Centrafarm v Sterling Drug
Exercising patent rights to prohibit sale of a product marketed in another member state with the panteee's consent is incompatible with the free movement of goods.
IPPT19721120, USSC, Gottschalk v Benson
Method consisting of merely a series of mathemati-cal calculations or mental steps not patentable: It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
IPPT19680229, ECJ, Parke Davis
Exercising Dutch patent possible against import products from Italy, where (at the time) no patent registration was possible - Prohibition on cartels does not apply to mere existence or exercise of right, except in case of an agreementor concerted practice - Difference in price does not necessarily constitute abuse of a dominant position.
IPPT19500529, USSC, Graver Tank v Linde Air
Doctrine of equivalence: To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. Equivalence is not the prisoner of a formula and an absolute to be considered in a vacuum. Triple identity test: function-way-result: a patentee may invoke this doctrine to proceed against the producer of a device "if it performs substantially the same function in substantially the same way to obtain the same result. Insubstantial difference; changes which avoid infringement are colorable only
IPPT19480216, USSC, Funk v Kalo
Unpatentable qualities that are the work of nature. The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable.
Gillette defence of applying the prior art: secure if he knows that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material, shape, or size. The defence that 'the alleged in-fringement was not novel at the date of the plaintiff's letters patent,' is a good defence in law, and it would sometimes obviate the great length and expense of patent cases if the defendant could and would put forth his case in this form, and thus spare himself the trouble of demonstrating on which horn of the well-known dilemma the plaintiff had impaled himself, invalidity or noninfringement