1999-1995

1999

 

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


IPPT19991216, ECJ, Rhone-Poulenc Rorer and May & Baker

Parallel imports: If medicinal product X has the same active ingredients and therapeutic effect as medicinal product Y, but does not use the same excipients and is manufactured by a different manufacturing process, where the competent authority in Member State B is in a position to verify that medicinal product X complies with the requirements relating to quality, efficacy and safety in normal conditions of use and is in a position to ensure normal pharmacovigilance, a parallel import licence can be seeked and obtained without complying with all the requirements of the Directive.

 

IPPT19991123, ECJ, Portugal v Council

Direct effect: no direct effect WTO agreements, except where the Community intended to implement a particular obligation.

 

IPPT19991028, ECJ, ARD v PRO Sieben

Gross principle to calculate 45 minute period for advertising interruptions. Member States authorised to prescribe the net principle for advertisements for broadcasting organization within their jurisdiction

 

IPPT19991014, ECJ, Adidas
Custom seizure: Disclosure of identity of declarants or consignees to trademark owner.

 

IPPT19991012, ECJ, Upjohn v Paranova

Replacement of a trade mark: objectively necessary to replace the original trade mark by that of the importing Member State.

 

IPPT19990916, ECJ, Farmitalia

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.

 

IPPT19990914, ECJ, Chevy

Known trademark: known by a significant part of the public con-cerned, in a substantial part of that territory.

 

IPPT19990701, ECJ, Sebago

Directive does not leave it open to the Member States to provide in their domestic law for exhaus-tion of the rights conferred by the trade mark in respect of products put on the market in non-member countries.

 

IPPT19990629, ECJ, Butterfly Music v Cemed

Copyright term directive – transitional law: Article 10(3) of Council Directive 93/98/EEC harmonising the term of protection of copyright and certain related rights does not preclude a provision of national law which lays down a limited period in which soundrecording media may be distributed by persons who, by reason of the expiry of the rights relating to those media under the previous legislation, had been able to reproduce and market them before that Law entered into force.

 

IPPT19990622, ECJ, Lloyd v Loint's

Likelihood of confusion: it is possible that mere aural similarity between trade marks may create a likelihood of confusion.

 

IPPT19990504, ECJ, Windsurfing Chiemsee

Geographical designation of origin - Distinctive character by means of trade acceptance: a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings.

 

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

 

IPPT19990403, ECJ, Gorgonzola

Use of a name such as 'Cambozola‘ may be deemed to evoke the protected des-ignation of origin 'Gorgonzola‘, irrespective of the fact that the packaging indicates the product's true origin.

 

 

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.

 

IPPT19990223, ECJ, BMW v Deenik

The purpose of informing: use of the mark for the purpose of informing the public that he carries out the repair and mainte-nance of goods is permitted, unless the mark is used in a way that may create the impression that there is a commercial connection with the trade mark pro-prietor.

 

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. 

 

IPPT19990121, EBA-EPO, Genentech

[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.

 

1998

 

IPPT19981203, ECJ, Generics

A medicinal product is essentially similar to an original medicinal product where it satisfies the cri-teria of having the same qualitative and quantitative composition in terms of active principles, of having the same pharmaceutical form and of being bio-equivalent, unless it is apparent in the light of scientific knowledge that it differs significantly from the original product as regards safety or efficacy.

 

IPPT19981126, ECJ, Bronner

The refusal, by a press undertaking which holds a very large share of the market in a Member State and operates the only nationwide newspaper home-delivery scheme, to allow the publisher of a rival newspaper, to have access to that scheme for appropriate remuneration does not constitute abuse of a dominant position.

 

IPPT19981117, ECJ, Van Uden v Deco-Line

Jurisdiction on the court hearing that application even where proceedings have already been, or may be, commenced on the substance of the case and even where those proceedings are to be conducted before arbitrators.

 

IPPT19981112, EBA-EPO, Good Faith - Unilever
[G 2/97] Principle of good faith: no obligation to notify appellant that appeal fee is missing

 

IPPT19981027, ECJ, Réunion Européenne v Spliethoff
Indivisible dispute? that a defendant domiciled in a Contracting State cannot be sued in another Contracting State before a court seised of an action against a co-defendant not domiciled in a Contract-ing State on the ground that the dispute is indivisible rather than merely displaying a connection. Place of discovery of the damage is not the place where the harmful event occurred. Matters relating to tort

IPPT19980929, ECJ, Canon v Cannon
Distinctive character older trademark relevant - Confusion likely when public encounters different places of production, but not when public can believe the undertakings are not economically-linked.

 

IPPT19980825 Court of Justice, Hertel v Switzerland
Violation of article 10: injunction not necessary in a democratic society: It will be seen from the foregoing that Mr Hertel played no part in the choice of the illustration for issue no. 19 of the Journal Franz Weber, that those statements that were definitely attributable to him were on the whole qualified and that there is nothing to suggest that they  had any substantial impact on the interests of the members of the MHEA.

 

IPPT19980723, CAFC, State Street Bank v Signature

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.


 

IPPT19980716, ECJ, Silhouette v Hartlauer 

National rules providing for world-wide exhaustion are contrary to the Directive.

 

IPPT19980716, ECJ, Gut Springenheide

The Court took into account the presumed expectations of an average consumer who is reasonably wellinformed and reasonably observant and circumspect.

 

IPPT19980701, TBA-EPO, IBM

[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

 

IPPT19980616, ECJ, Hermes v FHT

Dutch summary proceedings is a provisional measure as stated article 50(6) TRIPs.  

 

IPPT19980609, ECJ, Chiciak and Fol

European designation of origin can not be changed by national provision or protected on a national level. The provision cannot constitute a sufficient basis for interpreting the 1996 regulation as meaning that, in the absence of a footnote, each constituent part of the compound name is protected.

 

IPPT19980519, ECJ, Drouot Assurances v Consolidated Metallurgical Industries

Article 21 of the Convention is not applicable in the case of two actions between different parties, unless it is established that, with regard to the sub-ject-matter of the two disputes, the interests of the parties are identical to and indissociable from one another.

 

IPPT19980428, ECJ, Metronome Musik

Article 1(1) Council Directive 92/100/EEC on exclusive rental right deemed valid.

 

IPPT19980316, ECJ, Feta I  

The Commission took no account whatsoever of the fact that the name 'Feta' had been used for a considerable time in certain Member States other than the Hellenic Republic, when registering that name.

 

1997

 

IPPT19971111, ECJ, Loendersloot

The owner of trade mark rights may prevent a third party from removing and then reaffixing or replacing labels unless (I) it is established that that would contribute to artificial partitioning of the markets between Member States (II) the relabelling cannot affect the original condition of the product (III) the presentation of the relabelled product is not such as to damage the reputation of the trade mark; and (IV) the relabeller informs the trade mark owner before the relabelled products are put on sale
 

IPPT19971111, ECJ, Puma v Sabel
Risk of association is no alternative for the wording 'likelihood of confusion', but serves to define its scope - No risk of confusion when the public would only associate both trademarks with one another because of their analogous semantic content.

 

IPPT19971104, ECJ, Dior v Evora

The proprietor of a trademark or holder of a copy-right can not oppose a reseller that advertises in a way that is customary for that sector of trade, unless use of the goods seriously damages the reputation of the trademark.

 

IPPT19970612, ECJ, Yamanouchi v Comptroller-General

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

 

IPPT19970123, ECJ, Biogen

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.


1996

 

IPPT19961205, ECJ, Merck v Beecham

The holder of a patent for a pharmaceutical product cannot oppose importation by a third party of that product from another Member State before the product could be protected by a patent in that State, unless the holder of the patent can prove that he is under a legal obligation to market the product in that Member State.

 

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

 

IPPT19960724, EBA-EPO, Interpretation of 71a(1) EPC – GE CHEMICALS

[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.

 

IPPT19960719, EBA-EPO, Fresh grounds for opposition – De la Rue

[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.

 

IPPT19960711, ECJ, Bristol Meyers Squibb

Interpretation of the principle of exhaustion in line with earlier case law of the ECJ - repackaging of pharmaceuticals

 

IPPT19960711, ECJ, MPA Pharma v Rhône-Poulenc

Interpretation of the principle of exhaustion in line with earlier case law of the ECJ - repackaging of pharmaceuticals

 

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.

 

IPPT19960327, ECHR, Goodwin v United Kingdom

 

Importance of source protection; chilling effect: Having regard to the importance of the protection of journalistic sources for press freedom in a democratic society and the potentially chilling effect an order of source disclosure has on the exercise of that freedom, such a measure cannot be compatible with Article 10 of the Convention unless it is justified by an overriding

 

IPPT19960219, EBA-EPO, Representation - BOGASKY
[G 4/95] Oral submissions on legal or technical issues by non-qualified representative

 

 

1995

 

IPPT19951215, ECJ, Bosman

Article 48 of the EEC Treaty precludes the application of rules laid down by sporting associations, under which a professional footballer who is a national of one Member State may not, on the expiry of his contract with a club, be employed by a club of
another Member State unless the latter club has paid to the former club a transfer, training or development fee.

 

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.

 

IPPT19951120, ECHR, BAT v The Netherlands

No violation of article 6 – access to civil courts of decision of Appeals Division of Patent Office

 

IPPT19950912, TBA-EPO, AgrEvo

[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.

 

IPPT19950406, ECJ, Magill

Abuse of a dominant position: RTE and ITP, as the agent of ITV, enjoy, along with the BBC, a de facto monopoly over the information used to compile listings for television programmes. There is no actual or potential substitute, appellants prevent the appearance of a new product without a jusitification for the refusal and appel-lants reserved to themselves tehe secondary market of weekly television guides by excluding all competition on that market.  

 

IPPT19950307, ECJ, Shevill v Presse Alliance

Place where the harmful event occurred must be understood as being intended to cover both the place where the damage occurred and the place of the event giving rise to it. In the case of a libel by a newspaper article the place of the event giving rise to the damage, is the place where the publisher of the newspaper in question is established.