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Volker Tillmann

The Federal Court of Justice confirmed that the definition of the person skilled in the art aims at defining a fictive person, from whose point of view the prior art and the patent is considered. Therefore, this definition cannot be based on considerations as to interpretation of the patent or inventive step.

A full summary of this case has been published on Kluwer IP Law.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post Germany : Wärmeenergieverwaltung, Federal Court of Justice of Germany, X ZR 14/16, 09 January 2018 appeared first on Kluwer Patent Blog.

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Dominik Scheible

The FCJ held that when assessing inventive step the claim should be interpreted so that the disclosed embodiments are taken into account. Prior art that is far removed from the disclosed embodiments can thus not be assumed to disclose the most important features. Further, it was again confirmed that prior art that already provides a solution to a relevant problem does not provide an indication for the skilled person to look for (another) solution

A full summary of this case has been published on Kluwer IP Law.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post Germany : Monolithic multilayer actuator, Federal Court of Justice of Germany, X ZR 21/16, 19 December 2017 appeared first on Kluwer Patent Blog.

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Peter Reap

In an interference proceeding, the Patent Trial and Appeal Board correctly determined that claims 65-67 of applicant General Hospital Corporation’s (GHC’s) U.S. Patent Application No. 13/789,575 for methods of removing hair by using nanoparticles to damage hair follicles lacked sufficient written description under § 112 of the Patent Act, the U.S. Court of Appeals for the Federal Circuit has ruled. However, the Board’s determination that GHC failed to show that its proposed new claim 74 was patentable and failed to meet its burden of showing that claim 74 interferes with any of the claims of U.S. Patent No. 8,821,941, owned by Sienna Biopharmaceuticals, was arbitrary and capricious. Thus, the Board’s denial of GHC’s contingent motion to add new claim 74 was vacated and the dispute remanded for further proceedings (The General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., May 4, 2018, Moore, K.).

A full summary of this case has been published on Kluwer IP Law.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post USA: The General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1012., 04 May 2018 appeared first on Kluwer Patent Blog.

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Adrian Crespo

In preliminary injunction proceedings, the influential Barcelona Court of Appeal held that reasons of “congruence” bind the court to basing the assessment of inventive step strictly on the particular prior art document chosen as the closest prior art by the party challenging its validity, regardless of whether that choice is technically and objectively justified. This could kick start a worrisome trend in Spanish revocation proceedings that is deeply inimical to the proper application of the problem-solution approach. The Court also made findings on the impact of decisions of the Opposition Division on Spanish injunctions.

A full summary of this case has been published on Kluwer IP Law.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post Spain : Ruling No. 159/2017, Court of Appeal of Barcelona, AUTO Nº 159/2017, 27 December 2017 appeared first on Kluwer Patent Blog.

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Thorsten Bausch

The Federal Court of Justice confirmed that a nullity defendant can defend its patent to a limited extent only insofar as it is attacked by the nullity plaintiff. The limited defence of the patent in dispute by combining an attacked claim with an uncontested subclaim or with one of several variants of an uncontested subclaim is inadmissible.

A full summary of this case has been published on Kluwer IP Law.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post Germany : Ankopplungssystem, Federal Court of Justice of Germany, X ZR 10/15, 01 March 2017 appeared first on Kluwer Patent Blog.

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Miquel Montañá

The Barcelona Court of Appeal (Section 15) recently handed down an interesting judgment (dated 6 February 2018) revoking a utility model and ordering the owner to pay the damages caused by having enforced it while knowing that it lacked novelty. According to Article 114 of the former Spanish Patent Act (equivalent to Article 104 of the Act now in force), when a patent or utility model is revoked, as a general rule, the revocation does not affect, inter alia, final judgments where infringement has been declared. However, there is an exception for cases where the owner had acted in bad faith.

What is interesting about this recent judgment is that it is one of the very few to date, if not the only one, in which the contours of this exception have been examined. The facts of the case can be summarised as follows:

In 2002, the owner of the utility model filed a patent infringement action against the company that brought the revocation action that led to the judgment of 6 February 2018 being discussed here. As a result, at second instance, on 6 April 2006 the Barcelona Court of Appeal (Section 15) handed down a judgment declaring the infringement and ordering the defendant to pay 532,109.85 Euros by way of damages.

In 2015, the defendant in the above case filed a revocation action requesting the utility model to be declared null and void due to lack of novelty, as well as a damages claim. In particular, it alleged that, in the first proceedings, the owner of the utility model had sought to enforce it while knowing that it was null and void due to lack of novelty because the invention had been disclosed in a catalogue distributed by the owner of the utility model in 1999, that is, before the priority date. Also, it contended that the owner of the utility model had acted in bad faith because, as the catalogue had been conceived and distributed by that very same company, it was undisputable that it knew that the invention lacked novelty.

The owner of the utility model did not dispute that the invention had been disclosed in such catalogue. Rather, it contested the date on which the catalogue had been made available to the public. It alleged that the catalogue had been published in 2002 (not in 1999), which caused the dispute to revolve around this specific point of fact (i.e. the date of publication of the catalogue). After considering the documents and witnesses proposed by the parties, in its judgment of 6 February 2018 the Barcelona Court of Appeal came to the conclusion that the catalogue had been distributed in 1999. Having reached this conclusion, the Court examined whether or not the owner of the utility model had acted in bad faith. It found that, in this context, “bad faith” depended on the knowledge of the nullity of the title, adding that, in this specific case, the knowledge of the catalogue and of its distribution in 1999 was unquestionable, as it was a document belonging to the owner of the utility model. The Court thus concluded that the owner of the utility model had pursued the infringement action knowing that the utility model lacked novelty and, therefore, in bad faith. As a result, the owner was ordered to reimburse the amounts received as compensation in the first proceedings and the corresponding legal costs.

In conclusion, the teaching from this judgment is clear: if you know that your patent lacks novelty, you’d better not enforce it.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post If you know your patent lacks novelty, you’d better not enforce it appeared first on Kluwer Patent Blog.

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Rik Lambers

The Hague courts are not reluctant to cross borders in patent litigation. The Dutch cross-border injunction is one (in)famous example. Maybe it’s the lack of mountains providing – on the spare sunny days – clear views to foreign skies. In two recent cases The Hague District Court has embraced a pan-European approach to the threat of patent enforcement. Not to grant an injunction, but to the reimbursement of costs for threatening with an injunction.

When it comes to cost reimbursement in patent litigation, in the Netherlands the winner takes it all (Art. 1019h Dutch Code of Civil Procedure, the implementation of Art. 6 Enforcement Directive). The losing party of patent litigation has to pay the full legal costs of the winning party (and carry his own). That is, only if the litigation concerns the (threat of) enforcement of a patent in the Netherlands. In a ‘pure’ nullity action (e.g. a party merely claiming the nullity of the patent without an infringement counterclaim), the court does not awards the full costs, but a relatively small statutory fee (referring to the CJEU’s Bericap/Plastinova judgment). This can be the difference between a couple of thousand euros and a hundredfold thereof.

But what constitutes a threat of enforcement in the Netherlands?

In the Vita / Ivoclar case (decision April 4, 2018), Vita claimed nullification of the Dutch part of Ivoclar’s European patent (Ivoclar decided not defend the Dutch part). Ivoclar had sent a warning letter to Vita’s German counsel, stating: ‘Due to Vita’s unwillingness to accept the licence terms we proposed, and its ongoing infringements of Ivoclar’s patents, we have decided to immediately begin asserting our legal rights against Vita in any country that we deem appropriate’. The Hague Court considered this a threat of enforcement in the Netherlands (‘any country’). In this regard the Court considered that – without any known substantiation in its written judgment – that Vita’s decision to file nullity proceeding in the Netherlands directly related to Ivoclar’s initiation of infringement of proceedings against Vita in Germany, while Vita’s product attacked in Germany was the same as in the Netherlands. Result: full cost reimbursement instead of the low standard fee.

In the Acteon / Dürr Dental case (decision April 11, 2018), the German counsel of patentee Dürr sent a warning letter to the German counsel of Acteon. The letter included the phrase: “Unsere Mandantin hat festgestellt, dass Ihre Mandantin ein Gerät unter der Bezeichnung PSPIX im Geltungsbereich des deutschen Teils ihres Patentes anbietet und vertreibt […]” (English translation: “Our client has determined that your client offers and trades in an apparatus falling within the scope of protection of the German part of her patent […]”). Attached to the letter was a declaration to be signed by Acteon to refrain from offering infringing devices “im Geltungsbereich des Europäischen Patents EP (…) 371” (English translation: “within the scope of protection of the European Patent EP (…) 371”), and to destruct “die in Deutschland (…) befindlichen (…) Vorrichtungen” (English translation: “the devices located in Germany”). Dürr – when Acteon did not comply – initiated infringement proceedings in Germany (claiming infringement of the German part of the patent). Acteon subsequently filed nullity proceedings in the Netherlands (Dürr decided not to defend against this nullity claim). The Court considered above ‘German’ actions a threat of enforcement in the Netherlands. Result: full cost reimbursement instead of the low standard fee.

These recent decisions show the Dutch Court is not only willing to grant cross-border relief, but also to present the bill for a cross-border threat. Something for foreign counsel to consider when drafring warning letters.

Disclosure: the author represented Dürr Dental in the Netherlands

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post German Threats Cost Dutch Euros appeared first on Kluwer Patent Blog.

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John Collins and Sumer Dayal

On 28 March 2018, the Australian Government introduced the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 to the House of Representatives.

This follows IP Australia’s public consultation in October 2017 of an exposure draft of amendments for Australia’s IP laws that included, among other matters, a mechanism to phase out the innovation patent system and repeal certain data requirements relating to pharmaceutical patents with an extended term (our coverage of the exposure draft can be found here).

The bill formalises the proposed repeal of section 76A of the Patents Act, thereby removing the abovementioned data requirements.  However, the bill does not include the anticipated repeal of the innovation patent system as was the case in the original exposure draft.

This begs the question, why did the Government remove the proposed amendments?

Innovation patents – will the guillotine drop?

In its response to public submissions with respect to abolishing innovation patents, IP Australia reaffirmed its support for this course of action and noted that “[n]o significant new evidence on the value of the innovation patent system was presented by the submissions that had not already been considered by the Productivity Commission and the Government in reaching that decision“.

IP Australia was also of the view that the amendments in the exposure draft struck the right balance to phase out the innovation patent system without affecting existing rights.  The amendments in the exposure draft allowed for innovation patents that would have a priority date prior to the commencement of the amendments.

However, the Government appears to want to consider the matter further.  IP Australia’s policy release states that it has “decided to undertake further industry consultation targeted at better understanding the needs of SMEs before the phase out of the innovation patent occurs“.

Notably, there is no timeline for this consultation period – all we know is that further information will be provided in ‘due course”.

Innovation patents appear to have survived the guillotine this time around – but watch this space.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post Enter Phase 1:  Australia’s government tables new IP law amendments but omits abolishing innovation patents appeared first on Kluwer Patent Blog.

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John Collins and Sumer Dayal

On 28 March 2018, the Australian Government introduced the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 in the House of Representatives.

This follows IP Australia’s public consultation in October 2017 of an exposure draft of amendments for Australia’s IP laws that included, among other matters, a mechanism to phase out the innovation patent system and repeal certain data requirements relating to pharmaceutical patents with an extended term (our coverage of the exposure draft can be found here).

The bill formalises the proposed repeal of section 76A of the Patents Act, thereby removing the abovementioned data requirements.  However, the bill does not include the anticipated repeal of the innovation patent system as was the case in the original exposure draft.

This begs the question, why did the Government remove the proposed amendments?

Innovation patents – will the guillotine drop?

In its response to public submissions with respect to abolishing innovation patents, IP Australia reaffirmed its support for this course of action and noted that “[n]o significant new evidence on the value of the innovation patent system was presented by the submissions that had not already been considered by the Productivity Commission and the Government in reaching that decision“.

IP Australia was also of the view that the amendments in the exposure draft struck the right balance to phase out the innovation patent system without affecting existing rights.  The amendments in the exposure draft allowed for innovation patents that would have a priority date prior to the commencement of the amendments.

However, the Government appears to want to consider the matter further.  IP Australia’s policy release states that it has “decided to undertake further industry consultation targeted at better understanding the needs of SMEs before the phase out of the innovation patent occurs“.

Notably, there is no timeline for this consultation period – all we know is that further information will be provided in ‘due course”.

Innovation patents appear to have survived the guillotine this time around – but watch this space.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post Enter Phase 1: Australia’s government tables new IP law amendments but omits abolishing innovation patents appeared first on Kluwer Patent Blog.

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Thorsten Bausch

…clearly less spectacular than the UK’s ratification of the UPCA, but nevertheless noteworthy and – perhaps! – even more relevant in the long run (but that we shall see). My colleague Mike Gruber was kind enough to compile the following brief summary of the Federal Patent Court’s full decision on the Raltegravir (Isentress®) compulsory license matter. Here is Mike’s report:

Isentress II, decision on royalty rate in Merck v. Shionogi, 3 Li 1/16 (EP)

Today, the German Federal Patent Court published its written reasoning of the 21 November 2017 ruling in the main proceedings of Merck’s compulsory license action. To recap briefly, in August 2016 the Federal Patent Court granted the first compulsory license in preliminary proceedings in Germany and allowed Merck to use Shionogi’s European Patent EP 1 422 218 with regard to certain dosages of the antiretroviral drug Isentress® (confirmed on appeal). Since the patent in suit was revoked by the European Patent Office in the meantime, the present main proceedings focused on setting the royalty rate for the compulsory license and rendering of accounts.

The Federal Patent Court ordered Merck to pay for using the patent until the revocation. The royalty rate was set at 4% of net sales of Isentress®, taking into account the typical royalty range, the patent’s potential impact on the market and other factors such as the contribution of the patent to the actual product covered by the compulsory license and the required use of the licensee’s own IP rights. For assessing the contribution of the patent to the actual product, the court considered the amount of (fictitious) development work that would have been needed to arrive at the marketable product. Factors which can lead to an increase of the royalty rate for a compulsory license were said to include the continuous risk for the patentee that the patent’s validity will be attacked and the fact that it results in the involuntary aid to a competitor.

More from our authors:
Mediation: Creating Value in International Intellectual Property Disputes
by Théophile Margellos, Sophia Bonne, Gordon Humphreys, Sven Stürmann



The post And here is Germany’s contribution to World Intellectual Property Day 2018 appeared first on Kluwer Patent Blog.

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