Oppositions (and then appeals of the opposition decisions) are a mainstay of the work of the EPO, allowing third party scrutiny of granted patents prior, and often in place of, litigation. The process can also be a safe means of testing the litigation water as, with only a few exceptions, no estoppel is generated through these EPO proceedings.
Background Under UK law, if an invention is devised by a person who is an employee of another party, and that other party owns the invention by virtue of being that person’s employer then, if a patent is granted for the invention and either the invention or the patent turns out to be of outstanding […]
Federal Circuit leans on the Supreme Court’s recent decision in Amgen v. Sanofi to find Baxalta’s functionally defined antibody claims invalid for lack of enablement.
Just a few months ago, the US Supreme Court handed down its decision in Amgen v Sanofi (Amgen), namely that Amgen’s patents broadly claiming antibodies that inhibit the PCSK9 protein are invalid for lack of enablement. Now, in a decision that broadly mirrors Amgen, the Federal Circuit have found Baxalta’s functionally defined antibody claims insufficient.
Notwithstanding the doctrine of equivalents now used to interpret claim scope, the principle of purposive construction is still used to interpret specific terms in a patent claim. In this case this yielded the result that “bigger” could be the same as “not bigger”.
A recent Decision, T1482/21, from the Board of Appeal of the EPO considered whether a decision to re-establish a patent application can be challenged during Opposition proceedings at the EPO.
One of the first preliminary injunctions was issued by the Unified Patent Court on 22 June 2023. The decision was made ex parte and, remarkably, on the same day as the application for an injunction was filed by the proprietor, despite the respondent’s efforts to avoid the issue of an injunction by filing a protective letter.
EPO Enlarged Board of Appeal set to consider in G 1/23 the degree to which enablement impacts the status of a commercially available product as state of the art
Central to the assessment of patentability at the EPO is the definition of ‘state of the art’. Article 54(2) EPC defines the state of the art as ‘everything made available to the public’ before the effective filing date of a patent application. But when the thing made available to the public is a product with a defined chemical composition, how much of that composition is made available to the public by the simple disclosure of the product? G 1/92 provided an answer but as the current referral to the EPO’s EBA shows, there are gaps that need filing.
Following the Enlarged Board of Appeal decision G 2/21 (“plausibility”) earlier this year, the referring Board has issued its preliminary opinion on how to take EPO appeal no. T 116/18 forwards. It is clear the Board is uncertain how G 2/21 is to be applied, noting several interpretations of that decision seem feasible. Thus, new case law appears to be needed to help those using the European patent system understand the circumstances under which post-filed data can be relied upon by a patent proprietor in the assessment of inventive step.