Category Archives: European Practice

Patentee-Friendly Claim Construction in the UK Courts?

Author: Hazel Ford Ph.D.
Editor:  Martin D. Hyden

The UK Supreme Court has handed down its judgment at the conclusion of a long-running dispute between Eli Lilly and Actavis.  The cases related to Eli Lilly’s patent, which claims the use of the drug pemetrexed disodium in combination with vitamin B12 in the treatment of cancer.  Actavis sought declarations of non-infringement for its proposed products which used pemetrexed diacid, pemetrexed ditromethamine or pemetrexed dipotassium in place of pemetrexed disodium.  Continue reading

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New EPO Rules For Patenting Plants and Animals

Author: Hazel Ford Ph.D.
Editor:  Martin D. Hyden

The EPO has clarified its approach to the patentability of plants and animals by making changes to its rules.

Article 53(b) EPC derives from an EU Directive (Article 4(1) of Directive 98/44 EC) and excludes from patentability “essentially biological processes for the production of plants or animals”.  According to the EPO’s Enlarged Board of Appeal, this excludes from patentability any process that contains the steps of sexually crossing the whole genomes of plants and then selecting the desired progeny plants.  However, the Enlarged Board concluded in decisions G 2/12 and G 2/13 that the exclusion only applies to process claims, and not to the plants that are produced by those processes.  Until recently, the EPO had followed this practice during examination and in post-grant oppositions. Continue reading

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The Essentiality Test – Falling Out of Favour at the EPO?

Author: Katherine Banks Ph.D.
Editor:  Hazel Ford Ph.D.

The European Patent Office (EPO) has a notoriously strict approach when considering amendments to patent applications.  If an amendment extends the subject matter beyond the content of the application as filed, then the amendment is unallowable under Article 123(2) EPC.  This is assessed based on the “gold standard” test, which examines whether the skilled person would regard the amended subject-matter to be directly and unambiguously derivable from the application as originally filed.  Continue reading

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The Short-Lived Ailment of Poisonous Divisionals

The Short-Lived Ailment of Poisonous Divisionals

Author: Leythem A. Wall
Editor: Eric P. Raciti and J. Derek McCorquindale

After four years of the European Patent Office (EPO) ruling that a parent application can lack novelty over its divisional application, and vice versa, the EPO Enlarged Board of Appeal (EBA) in their decision G1/15 has finally put an end to this familicidal practice. Continue reading

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EPO Enlarged Board of Appeal Finds the Cure For Poisonous Divisionals

Author: Leythem Wall
Editor: Adriana L. Burgy

At the end of 2012, a European Patent Office (EPO) Board of Appeal decision sent shockwaves through Europe; it concluded that a European divisional patent publication could be novelty destroying to the European parent patent from which it is derived, the so called “poisonous divisional.”

The reasoning behind the “poisonous divisional” is that the parent claims are not entitled to priority, whereas the anticipatory subject matter in the divisional publication is entitled to priority. In fact, the problem works both ways, i.e., the publication of the parent could also be novelty destroying against a divisional application whose claims are not entitled to priority. Continue reading

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