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
Article 6(2) of the directive precludes national rules from requiring an indication of the quality and quantity of the substances whose presence is indicated on the packaging, in advertisements, or in the names of cosmetic products covered by the directive.
A contractual obligation under which the grantee of a licence for a patented invention is required to pay royalty for an indeterminate period, and thus after the expiry of the patent, does not in itself constitute a restriction of competition within the meaning of Article 85(1) of the EEC Treaty, if the agreement was entered into after the patent application was submitted and before the grant of the patent.
[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
IPPT19890124, ECJ, EMI Electrola v Patricia
Difference in protection period under national law: Articles 30 and 36 of the EEC Treaty do not preclude the application of a Member State' s legislation which allows a producer of sound recordings in that Member State to rely on the exclusive rights to reproduce and distribute certain musical works of which he is the owner in order to prohibit the sale, in the territory of that Member State, of sound recordings of the same musical works when those recordings are imported from another Member State in which they were lawfully marketed without the consent of the aforesaid owner or his licensee and in which the producer of those recordings had enjoyed protection which has in the mean time expired
IPPT19881005, ECJ, Maxicar v Renault
Exercise design law not precluded by free move-ment of goods. Abuse of a dominant position: the mere fact of obtaining protective rights in re-spect of ornamental designs for car bodywork com-ponents does not constitute an abuse of a dominant position within the meaning of Article 86 of the Treaty.
IPPT19881005, ECJ, Volvo v Veng
Refusal to license not in itself abuse of a dominant position. an obligation imposed upon the proprietor of a protected design to grant to third parties, even in return for a reasonable royalty, a licence for the supply of products incorporating the design would lead to the proprietor thereof being deprived of the substance of his exclusive right
IPPT19880927, ECJ, Kalfelis v Schroeder
International jurisdiction : Jurisdiction of Article 6(1) Brussels Convention is exception to the principle that jurisdiction is vested in the courts of the State of the defendant's domicile. Therefore a connection between the claims made against each of the defendants required. Connection between claims is present if there is a risk of incompatible judgments which are incompatible with each other. Atonomous concept of "matters relating to tort, delict or quasi-delict" of article 5(3) Brussels Convention
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.
Offend, shock or disturb: Freedom of expression is applicable to “information” or “ideas” that offend, shock or disturb the State or any section of the population. Those who create, perform, distribute or exhibit works of art contribute to the exchange of ideas and opinions which is essential for a democratic society. Hence the obligation on the State not to encroach unduly on their freedom of expression.
IPPT19880517, ECJ, Warner Brothers
Copyright and free movement of goods: No exhaustion: National right to make the hiring-out of video-cassettes subject to permission, not exhasuted when the video-cassettes have - with the consent of copyright holder - been put into circulation in another Member State whose legislation enables the author to control the initial sale, without giving him the right to prohibit hiring-out
IPPT19880204, ECJ, Hoffman
Irreconcilable judgments: Irreconcilable within the meaning of article 27(3) of the Brussels Convention are judgmentsthat have legal consequences which are mutually exclusive
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.
The compatibility of franchise agreements for the distribution of goods with competition law (article 85(1) EEC Treaty) depends on the provisions contained in such agreements: provisions which are essential in order to avoid the risk that know-how and assistance might benefit competitors do not constitute restrictions on competition, the same goes for provisions necessary for maintaining the identity and reputation of the business name or symbol, provisions which share markets or prevent price competition do restrict competition.
[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.
Definition of medicial product: product presented as having or being endowed with with properties 'for treating or preventing disease in human beings or animals. Classification of vitamins as medicinal product must be carried out case by case
Court has to declare on its own motion that is has no jurisdiction in case of exclusive jurisdiction under article 16 of the Brussels Convention. The term "proceedings concerned with the regis-tration or validity of patents" contained in article 16 (4) must be regarded as an independent concept intended to have uniform application in all the contracting states. It does not include proceedings relating to rights of ownership of a patent
IPPT19830317, ECJ, Berliner Kindl Weisse Bier
The extension to imported beer of national rules prohibiting the marketing of beer which does not comply with the conditions on acidity is an injustifie obstacle to the free movement of goods between member states
IPPT19820914, ECJ, Keurkoop v Nancy Kean
The proprietor of a national design right may oppose the importation of products from another member state which are identical in appearance to the design which has been filed, provided that (i) the products in question have not been put into circulation in the other member state by, or with the consent of, (ii) the proprietor of the right or a person legally or economically dependent on him, that as between the natural or legal persons in question there is no kind of agreement or concerted practice in restraint of competition and finally (iii) that the respective rights of the proprietors of the right to the design in the various member states were created independently of one another.
IPPT19820608, ECJ, Maize Seed
Plant variety rights: open, exclusive license is not incompatible with prohibition on cartels, but absolute territorial protection of licensee is.
IPPT19820302, ECJ, IDG v Beele
Free movement of goods and passing off: Injunction against product which for no compelling reason is almost identical and thereby needlessly causes confusion not prevented by rules on the free movement of goods as long as provision protects consumers and stimulates fair trade
Trade mark lawfully affixed to a product in a member state - repackaging by a third party and importation into another member state.
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.
IPPT19810122, ECJ, Dansk Supermarked v Imerco
Judicial authorities may not prohibit, on the basis of a copyright or of a trade mark, the marketing of a product if that product has been lawfully marketed on the territory of another member state by the proprietor of such rights or with his consent. Mere import cannot be classiefied as unfair commercial practice, either by law or by agreement
Exhaustion: Neither the copyright owner or his licensee, nor a copyright management society acting in the owner's or licensee's name, may rely on the exclusive exploitation right conferred by copyright to prevent or restrict the importation of sound recordings which have been lawfully marketed in another member state by the owner himself or with his consent.
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.
A selective distribution system based on criteria for admission, which go beyond a mere objective selection of a qualitative nature, is probably incompatible with article 85 (1). A decision to grant exemption gives rise to rights in the sense that parties to an agreement which has been the subject of such a decision may rely on that decision against third parties who claim that the agreement is void on the basis of article 85 (2).
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.
Article 24 Brussels Convention: National courts are best able to assess the cir-cumstances which may lead to the grant or refusal of the measures sought or to the laying down of procedures and conditions which the plaintiff must observe in order to guarantee the provisional and protective character of the measures ordered.
The provisions of the Treaty relating to the freedom to provide services do not preclude an assignee of the performing right in a film in a Member State from relying upon his right to prohibit the exhibition of that film in that State, without his authority, by means of cable diffusion in the film so exhibited is picked up and transmitted after being broadcast in another Member State by a third party with the consent of the original owner of the right