A Practitioner's Guide to European Patent Law

For National Practice and the Unified Patent Court
Erscheinungsjahr 2019
ISBN: 978-1-5099-2860-6
Verlag: Hart Publishing

Buch, Englisch, 552 Seiten, Hardback, Format (B × H): 156 mm x 234 mm, Gewicht: 974 g

Written by a team of lawyers with long-standing experience in patent litigation in Europe, this book is a comprehensive and practical guide to European patent law, highlighting the areas of consistency and difference between the most influential European patent law jurisdictions: the European Patent Office (EPO), England & Wales, France, Germany and the Netherlands.

It is frequently the case that the decisions and approaches of these courts are cited by European patent lawyers of all jurisdictions when submitting arguments in their own national courts. The book is therefore intended to provide a guide to patent lawyers acting in the national European courts today. The book also looks to the future, by addressing all the areas of patent law for which the proposed Unified Patent Court (UPC) will need to establish a common approach.

Uniquely, the book addresses European patent law by subject matter area, assessing the key national and EPO approaches together rather than in nation-by-nation chapters; and provides an outline in each chapter of the common ground between the national approaches, as a guide for the possible application of European patent law in the UPC.

Autoren/Hrsg.

England, Paul

Fachgebiete

• Rechtswissenschaften Internationales Recht und Europarecht Europarecht Europäischer Gewerblicher Rechtsschutz, Medien-, IT- und Urheberrecht

Inhaltsverzeichnis

Introduction

1. The Skilled Person and their Common General Knowledge

I. The Skilled Person or Team

II. Common General Knowledge

III. Towards Common Ground in the UPC

2. Scope of Protection of Patent Claims

I. Statutory Basis

II. General Principles of National Law on the Doctrine of Equivalents

III. The Role of the Prosecution File

IV. Numerical Ranges

V. Case Comparison - The Pemetrexed Decisions

VI. Towards Common Ground in the UPC

3. Direct Infringement

I. Statutory Basis

II. Issues Relating to Article 25(a) CPC 1989

III. Products Made by an Infringing Process (Article 24(c) CPC 1989)

IV. Second Medical Use Claim Infringement

V. Infringement of DNA Sequences

VI. Towards Common Ground for the UPC

4. Indirect Infringement

I. Statutory Basis

II. Means Relating to an Essential Element of the Invention

III. Staple Commercial Products

IV. Knowledge

V. Double Territoriality

VI. Indirect Infringement of Second Medical Use Claims

VII. Common Design
VIII. Towards Common Ground in the UPC

5. Defences

I. The Diverse Sources of Defence to Infringement

II. The Experimental Use Exemption

III. The Bolar Exemption

IV. Exhaustion

V. Invalidity of Claims Asserted

VI. FRAND Licence Objection

VII. Prior Use

VIII. Innocent Infringement as a Defence to Damages

IX. Towards Common Ground in the UPC

6. Remedies

I. Statutory Basis

II. Preliminary Injunctions

III. Final Injunction

IV. Stays of Injunction and Tailored Orders

V. Springboard Relief

VI. Award of Damages and Lost Profits

VII. Recall, Removing from the Channels of Commerce and Destruction

VIII. Publication of Judgment

IX. Towards Common Ground in the UPC

7. Patentability and Industrial Application

I. Statutory Basis

II. Industrial Application

III. Excluded Subject-matter

IV. Exceptions to Patentability

V. Methods of Treatment and Diagnostics - Article 53(c) EPC

VI. Towards Common Ground in the UPC

8. Novelty
I. Statutory Basis

II. General Principles of EPO and National Case Law

III. Interpreting Patent Claims and the Prior Art for Novelty Purposes

IV. Made Available to the Public

V. Novelty Over General Disclosures in the Art

VI. Priority

VII. First, Second and Subsequent Medical Uses

VIII. Other Forms of Purpose-limited Claims

IX. Claim Amendment

X. Towards a Common Approach for the UPC

9. Inventive Step

I. Statutory Basis

II. The Approach of the EPO Boards

III. The Approaches of the National Courts

IV. Criticism of Problem-and-Solution

V. Criticism of Motivation-based Tests

VI. An Alternative Basis for Assessing Inventive Step

VII. Mixed Technical and Non-technical Features

VIII. Combinations of Prior Art Features

IX. Secondary Indicia

X. Case Comparison
XI. Towards Common Ground for the UPC

10. Sufficiency

I. Statutory Basis

II. General Approaches of EPO and National Law

III. Biogen Insufficiency and Lundbeck-type Cases

IV. Functionally Defined, 'Reach-through' Claims

V. Biological Deposits

VI. Plausibility in the Context of Insufficiency

VII. Lack of Clarity

VIII. Towards Common Ground in the UPC

11. Plausibility

I. Is Th ere a Statutory Basis?

II. Origins of Plausibility in the EPO

III. Inventive Step

IV. Insufficiency

V. Industrial Applicability

VI. The Novelty Context

VII. Post-dated Evidence

VIII. The Plausibility Threshold

IX. Further Questions

X. Towards Common Ground for the UPC

12. Supplementary Protection Certificates

I. Statutory Basis

II. Conditions for Grant

III. Protected by a Basic Patent in Force

IV. Marketing Authorisations in the SPC Context

V. Term

VI. Medicinal Products for Paediatric Use

VII. Reform
VIII. Towards Common Ground for the UPC

13. Patent Ownership, Dealings and Employee Inventors

I. Introduction

II. Ownership

III. Inventor Compensation

IV. Rights of Co-owners

V. Patent Dealings

VI. Effect of Transfer of Ownership on Licensee

VII. Compulsory Licences and Licences of Right

VIII. Patent Ownership, Dealings and Employee Inventors in the UPC

14. Cross-border Actions in Europe

I. The Brussels Regulation

II. Cross-border Validity Actions

III. Cross-border Infringement Actions

IV. Cross-border Declarations of Non-infringement
V. Common Ground for the UPC

15. The Impact of Brexit

I. Background

II. The Brexit Options
III. Brexit and Patents

IV. Brexit and Supplementary Protection Certificates

Über Autor(innen)

England, Paul
Paul England is a solicitor at Taylor Wessing, London, UK.

Paul England is a solicitor at Taylor Wessing, London.