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Restrictive Preliminary Injunction Practice in Germany Challenged Following Referral to CJEU Over the last few years certain Regional Courts in Germany have refused to grant preliminary injunctions to patentees unless the patent has been held valid in opposition proceedings at the European Patent Office (EPO), or in nullity proceedings before the German Federal Patent Court. This contrasts with practice elsewhere in Europe, including in the UK, where a preliminary injunction can... Read more
German Federal Council Passes Bill for Re-ratification of UPCA Today the Federal Council (Bundesrat) unanimously passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) thereby achieving the two-thirds majority of the members mandated by the Federal Constitutional Court (FCC). The bill must now be signed by the German Government and the Federal President before UPCA and Protocol on Provisional Application (PPA) ratification can be... Read more
EPO Approach to Priority Entitlement Clarified by Board of Appeal in Case T0844/18 In a press communiqué dated 6 November 2020 the Technical Board of Appeal of the European Patent Office (EPO) issued its written decision revoking European patent number EP2771468 owned by the Broad Institute, Inc. and others. The patent claimed a fundamental aspect of the CRISPR/Cas9 gene editing technology platform. The patent was initially opposed by nine opponents during first instance... Read more
Actavis Strikes Again: Edwards Lifesciences Find Success in Second High Court Heart Valve Case of 2020 For the High Court of England and Wales, Mr Justice Birss judged that Meril’s Navigator device, a catheter based delivery system for their MyVal transcatheter heart valve, infringed an Edwards Lifesciences patent covering their SAPIEN valve, under the doctrine of equivalents. The decision provides further guidance on the application of Actavis vs Lilly and is another example of its positive... Read more
UKIPO is Calling for Views on the Impact of AI on IP Rights The UKIPO has issued an open consultation including a call for views in relation to artificial intelligence and intellectual property. The consultation includes a number of questions in various fields of intellectual property (IP) including patents, designs, trademarks and copyright, inviting respondents to contribute their opinions on the present and future legal framework of how these rights interact with developments... Read more
The EPO Abolishes the Option to Waive the Right to a Further Notice of Allowance When Filing Amendments/Corrections The EPO has decided to abolish the option to waive the right to a further communication under Rule 71(3) EPC (notice of allowance) when filing amendments/corrections in response to an initial communication under Rule 71(3) EPC. The option was originally introduced by the EPO in 2015 in order to improve procedural efficiency. However, the EPO has found that applicants very... Read more
EPO Enlarged Board of Appeal Rules Against Claims to Plants Produced by Essentially Biological Processes The EPO’s Enlarged Board of Appeal (EBA) has today issued its decision on referral G3/19 relating to patent-eligibility of plants obtained by essentially biological processes. This is the latest development in a chain of events and controversies in this area, in which Article 53(b) EPC excludes from patentability “essentially biological” processes for the production of plants by breeding as opposed... Read more
EPO Announces Pilot Project for Holding Opposition Division Oral Proceedings via Videoconference The President of the EPO issued a decision on 14 April 2020 concerning a pilot project to hold oral proceedings before opposition divisions via videoconference. A notice was also issued, which provides additional information regarding oral proceedings held by videoconference. Although the EPO has offered the possibility of oral proceedings before examining divisions via videoconference since 1998, and has recently... Read more
UK Court of Appeal Refuses to Allow Late Payment of SPC Fees: Genentech Inc. v The Comptroller General of Patents The UK Court of Appeal recently issued a judgment concerning late payment of SPC fees for the product “ranibizumab”, which is an active ingredient of Genentech’s medicine “Lucentis” for age-related macular degeneration. The SPC was granted to Genentech in 2007 for a period expiring in January 2022, provided that the annual fees required for the SPC were duly paid. This... Read more
EPO Announces that Examining Division Oral Proceedings will be via Videoconference The President of the EPO issued a decisionon 1 April 2020 concerning oral proceedings before examining divisions. A noticewas also issued, which provides additional information regarding oral proceedings held by videoconference. According to the President’s decision, oral proceedings before examining divisions will take place by videoconference, unless there are serious reasons for the oral proceedings to take place on the... Read more
EPO to Increase Official Fees from 1 April 2020, Including an Increased Appeal Fee for Most Corporate Appellants The European Patent Office (EPO) has announced that the official fees charged for European patent applications will be increasing from 1 April 2020. More details of the fee increases can be found here and here. Most official fees are increasing by an “inflationary” amount of 4-5%. An exception is the appeal fee, which will be increasing by nearly 20% for... Read more
SPC Manufacturing Waiver Regulation Will Enter Into Force on 1 July 2019 On 11 June 2019, the EU published Regulation (EU) 2019/933, which amends Regulation (EC) 469/2009 concerning supplementary protection certificates (SPCs). The amendments to the SPC regulation will permit third parties to manufacture a medicinal product protected by an SPC for the exclusive purpose of export to countries outside the EU. The amendments will also permit third parties to stockpile such... Read more
EPO Stays Examination of Applications Relating to Technical Simulations in Light of Enlarged Board Referral As reported recently, an EPO Board of Appeal has referred questions to the Enlarged Board of Appeal seeking clarification on the extent to which a computer-implemented simulation of a technical system or process can solve a technical problem by producing a technical effect and thus contribute to an inventive step.The referral is pending as case G1/19. In the underlying case... Read more
EPO Plant Patent-Eligibility Update – Political Pressure Brings Further Uncertainty For Applicants Recent weeks have seen important developments in the debate on patent-eligibility of plants in Europe, with the EPO’s Boards of Appeal and its President, Administrative Council and member states pulling in opposite directions. The President has now referred questions, published today, to the Enlarged Board of Appeal, but the admissibility of the referral is uncertain, so it is unclear how... Read more
EPO Announces Further Cooperation with Standards Bodies The EPO has announced a cooperation with European Committee of Standardization (CEN) and the European Committee for Electrotechnical Standardization (CENELEC) under which the three organisations will work together to improve and disseminate knowledge about the relationship between standards and patents. The agreement builds on existing co-operation in this area between the EPO, the European Telecommunications Standards Institute (ETSI) and the... Read more
EPO Extends Participation in WIPOs Digital Access Service (DAS) for the Exchange of Certified Copies of Priority Documents As reported previously here, the EPO has been participating in WIPO’s Digital Access Service (DAS) for the exchange of certified copies of priority documents since 1 November 2018. DAS allows for certified copies of priority documents to be exchanged electronically between the various participating patent offices, a complete list of which can be found here. The EPO’s initial implementation of... Read more
Questions About Patent Eligibility Of Technical Simulations Referred To EPO Enlarged Board Of Appeal EPO Technical Board of Appeal 3.5.07 has, in case T 0489/14 (Pedestrian simulation/CONNOR), referred questions to the Enlarged Board of appeal concerning what is to be considered technical in the fields of design and simulation. The cases of Designing optical systems/Philips and Circuit Simulation I/Infineon have long been cited as precedent that the design or simulation of a technical system... Read more
The End of Second Medical Use SPCs? AG’s Opinion in Abraxis C-443/17 Suggests that Neurim C-130/11 Should be Over-turned The Advocate General, Henrik Saugmandsgaard Øe, has today issued his Opinion in connection with the referral to the CJEU in Abraxis C-443/17. The full text of the Advocate General’s Opinion is available here. The Opinion is not binding on the CJEU. It is the role of the Advocates General to propose to the Court, in complete independence, a legal solution... Read more
EPO Joins WIPO’s Digital Access Service (DAS) for the Exchange of Certified Copies of Priority Documents The EPO has decided to participate in WIPO’s Digital Access Service (DAS) for the exchange of certified copies of priority documents from 1 November 2018 (for further details please see the EPO announcements hereand here). DAS allows for priority documents to be exchanged electronically between the various participating patent offices, a complete list of which can be found here. The... Read more
UK Announces Ratification of the Unified Patent Court Agreement Sam Gyimah, the UK Minister for Intellectual Property, has announced that the UK has today ratified the UPCA. The UK becomes the sixteenth state to ratify the UPCA. The other countries are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden. The UK ratification leaves Germany as the only remaining country which needs... Read more
Latvia Becomes the Fifteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 11 January 2018, Latvia became the fifteenth country to deposit its ratification of the UPC Agreement with the EU Council’s General Secretariat. The full list of countries which have deposited their ratification of the UPC Agreement is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden. The UPC Agreement... Read more
Enlarged Board of Appeal Issues Decision G1/16 Relating to Disclaimers The Enlarged Board of Appeal recently issued decision G 1/16, which provides welcome clarity regarding the allowability of undisclosed disclaimers. The caselaw of the Boards of Appeal has distinguished between “undisclosed disclaimers” and “disclosed disclaimers”. Undisclosed disclaimers are those in which a claim is amended to disclaim an embodiment which is not disclosed in the application as originally filed, but... Read more
EPO’s Enlarged Board of Appeal to Consider Extent of Clarity Examination of Amendments in Opposition Proceedings One of the EPO’s Technical Boards of Appeal have recently referred questions to the Enlarged Board of Appeal relating to the extent to which amendments incorporating features from dependent claims are open to examination for clarity. The referral is pending as case number G 3/14. Under Article 84 EPC, claims are required to be clear and concise and to be... Read more
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