Next ‘Fireside Chat’ on Wed, 29 June 2022, 12:15 CEST on LinkedIn

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LinkedIn

It’s already close to the end of the month again, i.e. the next ‘Fireside Chat’ is upcoming. It will be the 15th edition, and it will be on LinkedIn for the second time. The switch from Clubhouse to LinkedIn Live worked smoothly — at least for me; I do hope, for you, too! If you missed it: The recordings of #14 are still available here.

The next ‘Fireside Chat’ is planned as follows:

Date: Wed, 29 June 2022
Time: 12:15 hrs CEST
Venue: LinkedIn; see you here

My current draft list of topics is as follows:

👉 S2022_002
Novartis ./. Mepha Pharma
Order of 2 June 2022: ‘Fingolimod 0.5 mg’
👉 O2020_004 (the aftermath)
yodoba AG ./. Swisscom (Schweiz) AG
Rumour has it …
👉 INGRES
Some take-aways from the GA of 23 June 2022

/MW

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Next ‘Fireside Chat’ on Wed, 1 June 2022, 12:15 CEST on LinkedIn

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LinkedIn

I was re-thinking the Fireside Chat format a while ago, and I have been curious to learn how you would like it. The outcome of my little poll showed a clear tendency: A preference for lunch time over the evening; and a preference for LinkedIn Live over Clubhouse.

Accordingly, the next Fireside Chat is planned as follows:

Date: Wed, 1 June 2022
Time: 12:15 hrs CEST
Venue: LinkedIn; see you here

I hope the start time leaves you enough time to grab a sandwich before joining … 😉

My current draft list of topics is as follows:

👉 S2022_001
Pelliheat AG ./. Hans SCHÄREN
Judgment of 2 March 2022: ‘Register ban’
👉 O2020_004
yodoba AG ./. Swisscom (Schweiz) AG
Judgment of 22 March 2022: ‘Swisscom TV 2.0’
👉 S2021_006
Bayer HealthCare LLC ./. Helvepharm AG
Judgment of 26 April 2022: ‘Sorafenib tosylate’
👉 The FPC’s 10th Anniversary
Symposium of 6 May 2022: A quick recap
👉 Art. 84 EPC
Claims shall «be supported by the description» …
Missed the Live session? Here is the recording.

/MW

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The Swiss FPC’s tenth anniversary: Eager for the next decade(s)!

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Have you been at the symposium in St. Gallen last Friday, at the occasion of the Swiss FPC’s tenth anniversary? Oh man, what a great event that was! I am still quite inspired by the interesting discussions on the merits — and the joyful chats with so many colleagues, live and vibrant again.

I did not take sufficient notes in order to come up with a thorough summary of the whole day. The following are just some of my very personal take-away messages:

Since the beginnings of the FPC, a total of 56 judgments have been appealed to the Supreme Court; only nine appeals have been allowed, fully or in part. Such a 16 percent reversal rate is indicative of the (very) good quality of the first instance judgments of the FPC.

Some discussions circled around the disposal of cases by settlement. Dieter BRÄNDLE referred to it as the finest way of concluding a case («edelste Variante der Streitbeilegung»), for good reasons. However, settlements have become pretty rare in recent years; see the statistics here. This is most likely due to the fact that many cases are just tiny puzzle pieces in multi-jurisdictional patent fights which are not easily settled. Some courts do apply «shuttle diplomacy» in their settlement efforts (sometimes confused with «Einzelabreibungen», i.e. anything but truly diplomatic approaches to push / threaten the parties into a settlement). But it became very clear that the FPC will not try «shuttle diplomacy» in the near future.

The «Saisie Helvétique», a precise description of a presumably infringing embodiment, has not been used very often in more recent times. Why is that? Some said that parties might opt for a PI right away, instead of securing (further) evidence of the last tiny bit of infringment beforehand. Further, a precise description is anyting but cheap, and there may well be other options in particular in an international setup which are more favorable to secure evidence (e.g. a saisie-contrefaçon in France).

On the procedural side, it was discussed whether it should be possible for a plaintiff to base a PI request on the patent in suit in various versions, i.e. with a whole cascade of auxiliary inter partes limitations — or whether that inherently contravenes the necessary urgency. Indeed, I feel it may sometimes be a wise approach in PI proceedings to envoke the patent only to the extent necessary to precisely cover the attacked embodiment; one may still pursue the case more broadly in subsequent main proceedings anyway when time is not so much of the essence anymore (with a PI in place). It will be interesting to see how the FPC will henceforth deal with (too?) many inter partes limitations in PI proceedings.

On the merits, we discussed whether it is (or should be?) possible to just disregard a particular piece of prior art as closest prior art in the assessment of obviousness right away (simply because it is too unrelated to the invention), or whether anything has to be assessed in civil proceedings simply because a party pleaded it. It appears that this question had never been critical in judgments of the FPC by now; but it is still important to know that there is no settled case-law in this respect (see this Blog here).

Further, we briefly touched the formulation of the ‘objective technical problem’ and whether the ‘Swiss finish’ in some judgments is appropriate, i.e. that the problem should be somehow addressed in the closest prior art. See this Blog here for a more detailed discussion of this issue.

Oh, and one should maybe keep this pointed remark of Sir Colin BIRSS in mind when discussing a controversial judgment:

If you ever felt that arguing / pleading a case is difficult; believe me, judging that case is harder.

With respect to the UPC, it became clear that quality of its judgments will be the (most) critical issue for users. Anyway, the UPC will have to deal with this well-known triangle just like any other service provider:

service triangle

The UPC’s goal of 12m for main proceedings was considered as very (unrealistically?) ambitious. Quality will largely depend on the judges; the hiring is currently underway. The goal is to have not too many judges in the beginning (only 50 technically trained judges), both for cost reasons and to ensure that the judges have enough cases to gain experience.

Re opting-out, Beat WEIBEL of Siemens provided some statistical insight: They will opt out for 17.3% of Siemens’ entire portfolio.

The initially published version of the above paragraph erroneously mentioned an opt-out ratio of 12.7%. I confused my notes. The paragraph has been corrected; the correct value is 17.3%

/MW

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Buzzkills in the patenting of medical devices: Learn more at VESPA’s evening seminar on 14 April 2022 (mixed mode)

Just in case you missed it: VESPA’s next evening seminar is about patenting of medical devices, and in particular certain buzzkills one might come across in this respect:

«Spassbremsen» bei der Patentierung von Medizinprodukten

VESPA

The event will take place on Thursday, 14 April 2022 at the Haus zum Rüden in Zürich (see map). You may also attend online.

The detailed program and a registration form is available below.

And you know what’s best? Participation is free of charge for VESPA members (CHF 90,– for non-members). An apéro riche is offered after the seminar (CHF 60,–).

/MW

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Final call for the annual FPC case-law seminar on March 22 (mixed mode)

AROPI

Hurry up, it is still possible to sign up for the nineth edition of the joint AROPIVESPA seminar

The jurisprudence of the Federal Patent Court in 2021

VESPA

on Tuesday, 22 March 2022 at the Alpha-Palmiers hotel, rue du Petit-Chêne 34, 1003 Lausanne. You may also attend online.

Ralph Schlosser and Christophe Saam will present the legal and technical aspects of the decisions rendered by the Federal Patent Court in 2021, followed by a discussion.

Participation is free of charge for members of AROPI or ACBSE.

/MW

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18:15 hrs Opening connection
18:30 hrs Welcome / Introduction
18:40 hrs Presentation of the case-law
19:40 hrs Discussion
20:00 hrs Aperitif

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Please sign-up for the event by Email to Olivier Sacroug, olivier@sacroug.ch

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The Swiss FPC’s tenth anniversary: Don’t miss the symposium on 6 May 2022

Time flies. Ten years have now already passed since the Federal Patent Court became operational. Time to look back, to reflect, and to take a sneak peek into the future.

Towards this end, the FPC is organizing a not-to-be-missed symposium on Friday, 6 May 2022 in St. Gallen:

Europäisch harmonisiertes Patentrecht und nationale Patentgerichte: Rückblick und Ausblick

Please see the detailed program below for further information. Registration via an online form is open until 18 March 2022.

Oh, btw, it will be an in-person event. Real people meeting real people again, at a great location … 🙂

Reported by Martin WILMING

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The annual evening seminar about case-law of the FPC is back, in mixed mode!

vespa.swiss

Don’t miss VESPA‘s evening seminar about recent case law of the FPC on Thursday, 14 October 2021 in Zurich (17:15 hrs CET); see the detailed program below.

Gain first-hand insight from Tobias BREMI (second ordinary judge at the FPC) at Haus zum Rüden, Limmatquai 42, 8001 Zurich; see map. A covid certificate (3G) is required for attending the seminar in person.

But:
You may also join the event by videoconference.

The event is free of charge for VESPA member; the fee for non-member is CHF 90,–. An apéro riche afterwards is offered for CHF 60,–.

Please use the registration form below or save your spot online.

Reported by Martin WILMING

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Book Launch Webinar: The Protection of Intellectual Property Rights Under International Investment Law

Klopschinski et al.

I recently came across the monograph ‘The Protection of Intellectual Property Rights Under International Investment Law‘, authored by Simon Klopschinski, Christopher Gibson and Henning Grosse Ruse-Khan. It has been published in December 2020, and a review has been published on The IPKat about a month ago.

The reason why I am mentioning this here is that there will be a book launch webinar on 27 May 2021 (5pm CET) with interesting presentations by the authors, esteemed commentators and moderated by Joseph Straus. See the flyer for the detailed program.

The Zoom webinar is free of charge. I understand that no pre-registration is needed. You can join directly via the ‘Registration now’ hyperlink here.

/ MW

The annual must-attend event on case-law of the FPC on Thursday, 12 March 2020

UPDATE 11 March 2020:

Struck by the bug: The event has been canceled due to COVID-19.

vespa.swiss

Don’t miss VESPA‘s annual evening seminar about recent case law of the FPC on Thursday, March 12 in Zurich; see the program below.

Gain first-hand insight from Tobias BREMI (second ordinary judge at the FPC) in the Haus zum Rüden, Limmatquai 42, 8001 Zurich; see map.

The event is free of charge for VESPA members; the fee for non-members is CHF 90,–. An apéro riche afterwards is offered for CHF 60,–.

Space is limited; please use the registration form below or save your spot online.

Reported by Martin WILMING

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Conference of 3 December 2019 on case management issues in IP proceedings

I had the pleasure to attend the conference on Case Management Issues in IP Proceedings earlier this week in St. Gallen, jointly organized by INGRES and SVRH. Expectedly, the discussion between judges, legal practitioners and patent attorneys was vibrant and open-minded. I gained a lot of full and frank insight into how cases are handled before the various commercial courts in Switzerland; these aspects of the conference will surely be dealt with in a summary to be made available here.

My personal take-away messages concerning proceedings before the FPC are the following:

No split reply anymore …

In the normal course of infringement proceedings, the FPC had ordered a partial reply from the plaintiff that only dealt with the nullity arguments brought forward by the defendant in his answer to the complaint, as a plea in defense. The FPC’s intention was to have a single statement of both parties on the two key aspects of the case, i.e. infringement and validity, before the parties were summoned for the instruction hearing. In the informal part of the instruction hearing, the court delegation could thus indicate a preliminary opinion on both key aspects, in view of the first exchange of arguments. Things may well have changed in view of the second exchange of briefs. But still, the interim assessment of the matter in the instruction hearing had been based on a well-balanced exchange of arguments: The first round had been completed. The exchange of briefs had been as follows:

Old practice w split reply

In view of the obiter dictum in the Supreme Court’s recent decision 4A_70/2019 (discussed on this Blog here), the FPC has meanwhile discontinued the practice to split the reply in infrigement proceedings. Thus, the regular exchange of briefs in infringement cases will be as follows:

New practice w/o split reply

The reply will not be split anymore. The plaintiff will be invited to file his reply only after the instruction hearing. That’s a pretty standard exchange of briefs now, as it is known in any kind of proceedings governed by the CPC.

… and how that might influence the procedural strategy of the parties

Clearly, the assessment of validity of the patent in suit by the court delegation during the instruction hearing will be even more preliminary than ever before. The plaintiff will likely not have anticipated and addressed all the nullity arguments in the complaint. Thus, there will likely be nullity arguments on file on which the plaintiff / patentee has not yet been heard, and the court delegation cannot easily give an opinion on such arguments (except, maybe, for some formal / purely legal issues). Time will tell whether the instruction hearing will henceforth be of that much value to foster a settlement as it had been in the past; see the settlement rates over the years on this Blog here.

Some food for further thought, based on what has been discussed at the conference:

    • Will we see more infringement complaints with a full and frank discussion of potential nullity arguments, based on what has been argued in proceedings elsewhere, or in prior communication between the parties? That is pretty likely, indeed. It became clear in the discussion that such extensive frontloading has already happened.
    • A defendant in an infringement case has any motiviation to get invalidity reasonably addressed by the court delegation in the instruction hearing. But that will not happen to large extent when the plaintiff had just been silent on validity in his complaint. Still, the defendant might cure this ‘defect’ himself: He could gather what had been argued elsewhere by the patentee / plaintiff in defense of his patent or during prosecution, and disprove those arguments.  The plaintiff would be hard pressed to contradict his own arguments that had been made elsewhere — and the court delegation could well indicate an opinion on such arguments in the instruction hearing, in my opinion.
    • Will patents more often be asserted only to a limited extent in the future, i.e. limited enough to render the (expected) plea for nullity in defense moot, yet broad enough to cover the allegedly infringing embodiment? In my perception, that would not be a sign of weakness at all. It is just pragmatic to assert the patent only to the extent necessary.
    • Yet another strategy of patentees might be to frontload various limited versions of the patent for assertion inter partes (verbal limitations) as auxiliary requests already with the complaint, to get a broad(er) picture of potential allowability in the instruction hearing.
    • Finally, patentees might also consider to assert the patent as granted, but to set out in the reasons that a whole lot of further features of the patent, from dependent claims or even from the specification, are fulfilled in the allegedly infringing embodiment. That leaves much leeway for various verbal limitations at a later stage of the proceedings.

Plan B?

Now, what if the instruction hearing turns out to be not of much value under the new regime anymore? Dieter BRÄNDLE mentioned that the Commercial Court Zurich had invited the parties to submit a brief statement only for consideration in the instruction hearing. If no settlement was reached and the parties wanted to rely on anything from their statements, they had to refile those arguments with their outstanding briefs.

Could that maybe a worthwile approach to bring the patentee’s complete view on defendant’s plea for nullity to the court delegation’s attention before the instruction hearing? Initial reactions were split: Would such a statement maybe considered as a reply in disguise? That could have fatal consequences with respect to an early closure of the file. However, I have also heard prominent voices in favor of this approach. Mark SCHWEIZER indicated that nothing like this would now be introduced in a rush now. Let’s see how the new regime works in practice. If it doesn’t, one might well consider this in more detail.

On a sidenote, I have recently been involved in a settlement conference in U.S. proceedings. The judge did a great job, even though no settlement could be reached in the end. The judge issued a very specific order beforehand about a confidential memorandum to be filed by both parties; see the Order for Settlement Conference. Along with a strict word count limit, I feel this is indeed very helpful for a judge to better understand where both parties are coming from. I am not overly enthusiastic about litigation in the U.S. at all, but this could be sth worth to consider.

Settlement talks in general

Should court-mediated settlement talks be held only with the two parties together? What about shuttle diplomacy, i.e. the judge(s) also talking with each party individually, e.g. to overcome certain personal tensions or hostile feelings between the parties and/or their representatives. Shuttle diplomacy (referred to as ‘Einzelabreibung’ or ‘Einzelabschlachtung’ by some participants) is practised at least by some Swiss courts; see Mark SCHWEIZER’s recent comparative study.

One potential downside is, of course, that a party may easily feel uncomfortable with the fact that some unilateral conversation is going on behind the scene between the judge(s) and the counterparty.

Mark SCHWEIZER had been asked whether shuttle diplomacy is done at the FPC. The answer was a clear ‘No’, and it became pretty clear that this was not an option for him at all.

Further news from the FPC

What¨s up?

The FPC has recently issued ex parte interim measures without any written statement of the grounds, in accordance with Art 239(1) lit. a CPC. A written statement of the grounds must be provided if one of the parties so requests within 10 days of the notice being given of the decision; else, the parties are deemed to have waived their right to challenge the decision (Art 239(2) CPC). Since ex parte interim measures cannot be appealed in any event (see e.g. decision 134 III 417 of the Supreme Court), ex parte interim measures need arguably not come along with a written statement of the grounds in any event. It would have been interesting to learn more about the particular urgency of this matter that urged the FPC to explore this possibility. However, nothing will be published: The parties have settled. Darn!

As mentioned on this Blog here, a timeline for the further course of the proceedings is established during the instruction hearing if no settlement is reached. It became clear that not everybody at the FPC believes that this is feasible, but Mark SCHWEIZER said that he is a die-hard optimist.

Claim construction is key in almost every case — and it might perhaps play an even more important role in the instruction hearing than ever before. However, Mark SCHWEIZER indicated that claim construction is still frequently treated like a red-headed stepchild in the briefs, and that it is hard for the court to only catch a glimpse of a party’s understanding of a certain feature from e.g. the discussion of the cited prior art.

Mark SCHWEIZER mentioned on a sidenote that he would tend to always allow joint procedural requests of both parties, as long as they do not contravene the law. Let’s see how parties make use of this flexibility.

The unconditional right to be heard sometimes leads to an essentially meaningless exchange of party submissions after formal closure of the file. Both sides feel prompted to reply just in order to formally contest the other party’s allegations. The question came up whether a court could forward such statements with the comment that the submission is deemed to be contested in any event. Mark SCHWEIZER indicated that the FPC would look into this, in particular whether this would be compliant with the CPC.

Gossip

Based on what had been mentioned at the conference I have to believe that the recent dissenting opinion had been supported by two judges; the actual split of the panel was thus 3:2. That’s a close call, indeed! See this Blog here for further information.

Reported by Martin WILMING

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What is the ‘plausibility’ concept good for?

Plausibility is a big deal nowadays in almost every high stake patent case:

Does the application as filed in view of the common general knowledge at the filing date make it plausible that the invention really works?

This question addresses the sufficiency of disclosure requirement, Art. 83 EPC, when the alleged effect is recited in the claim (i.e. in case of a medical use claim).

Or, when the alleged effect is not recited in the claim, in assessment of the non-obviousness requirement; Art. 56 EPC:

Is it plausible that (essentially) all embodiments covered by the claim really solve the problem the invention allegedly solves?

Frankly, I am constantly struggling with all the hustle and bustle about ‘plausibility’.

What is it all good for?

‘Plausibility’ is nowhere mentioned in the law, and I question that the ‘plausibility’ criterion is sth that is really needed to come to ‘right’ decisions. Thus, I have eagerly awaited the VESPA autumn conference of 31 October 2019:

Plausibilität — Ein neuer Nichtigkeitsgrund in Europa?

Expectedly, it was a phantastic event. Lara Dorigo (Lenz & Staehlin), Prisca von Ballmoos (Merck Group) and Els Cielen (EPO) shed light on the issue from various perspectives. But still, I am struggling with the over-emphasis on ‘plausibility’ in recent times.

Here is why:

Sufficiency of disclosure

Sufficiency of disclosure is all about the basic trade-off in patent law: In accordance with Art. 83 EPC, the invention has to be disclosed in the application as filed

[…] in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art […]

for that it really provides a contribution to the art in a way that enables the skilled person to carry out the invention later, when the patent has lapsed.

Lara rightly pointed out that ‘plausibility’ is frequently associated with the necessity of including data in the specification:

Source: quotes.deming.org/3734

I have at least two issues with that.

First, the EPC in no way requires data or experimental evidence, and I am convinced that one must not introduce such a requirement through the backdoor. An ‘armchair invention’ is perfectly fine. If an inventor correctly anticipates that his invention will work in practice, and the skilled person is enabled to carry out the invention based on the information given in the application as filed and in further view of the common general knowledge, I fail to see any issue under Art. 83 EPC.

And, second, there is just no basis in the law to only trust in god but not to trust an applicant. If there is a firm statement in the application as filed concerning a certain effect being achieved, I cannot see how that could have been held ‘not plausible’ per se. Unless, of course, there are indications to the contrary. But if that is not the case, then a mere statement w/o any data or experiments should suffice, in my opinion.

Play by the rules

Problems typically arise with (overly) broad claims and/or very vague specifications. No applicant / patentee should be surprised to get in trouble in such cases. But ‘plausibility’ is not the real issue, in my perception. I feel that the problem in such cases is rather that the invention just cannot be worked by the skilled person without undue burden. The ‘undue burden’ criterion is established in the case law and EPO practice since ages, and it would well be sufficient to sort out those cases that only confront the skilled person with some indications of how to set up a research program in the hope to finally make the invention. A prime example in this respect is T 609/02 — Salk Institute / AP-1 complex (HTML | PDF), specifically referring to the ‘undue burden’ criterion in ¶ 12. Consequently, the Board held that the alleged invention was insufficiently disclosed.

No need to fiddle around with ‘plausibility’ in such cases.

Obviousness

T 939/92 — AgrEvo / Triazoles (HTML | PDF) is mostly referred to as the origin of all ‘plausibility’ discussions. Interestingly, though, T 939/92 is silent about ‘plausibility’. It rather uses the term ‘credibly’. In a nutshell, T 939/92 had held that an ambitious technical problem (herbicidal activity) could only be taken into account if it could be accepted as having been solved, i.e. if it would be credible that substantially all claimed compounds possessed this activity — which was clearly not the case here.

Now, let’s have a look at the most controversially discussed case T 488/16 — BMS / Dasatinib I (HTML | PDF). The alleged effect was not recited in the claim; the single claim at stake was a straight forward compound claim:

The only claim at stake in T 488/16

Sufficiency of disclosure was not an issue; the alleged effect is not recited in the claim. ‘Plausibility’ was thus dealt with by the Board in the assessment of inventive step. The Board held in ¶ 4.9:

In the board’s judgement, it is not acceptable to draw up a generic formula, which covers millions of compounds, vaguely indicate an “activity” against PTKs and leave it to the imagination of the skilled reader or to future investigations to establish which compound inhibits which kinase and is therefore suitable to treat the respective diseases associated therewith. In this context, the board notes that it has been acknowledged by the appellant that the skilled person would not expect that each compound would be active against all kinases.

It is pretty evident from the above that a second medical use claim, i.e. a product claim with the alleged effect being recited in the claim, would have been doomed for lack of sufficiency of disclosure. No discussion of ‘plausiblity’ would have been necessary at all; it could have been a straight forward revocation based on the ‘undue burden’ criterion, essentially in line with T 609/02 — Salk Institute / AP-1 complex (HTML | PDF), ¶ 12.

But since a claim on the compound per se was at stake, the Board had to deal with it in the assessment of inventive step; Art. 56 EPC. But that claim is even broader than any medical use claim. Could the result be any different? That would have been somewhat strange, wouldn’t it?

This is where T 1329/04 — Johns Hopkins / Factor-9 (HTML | PDF) comes into play (hn):

The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.

Against this standard, the patentee in T 488/16 failed and the patent was revoked. The Board was not convinced that the technical problem had already been solved at the filing date, in particular by dasatinib. Apparently, two post-published documents were the first disclosure showing that for dasatinib the purported technical problem has actually been solved. In accordance with established case law, these documents were therefore not taken into consideration in the assessment of inventive step. Thus, the problem to be solved had to be defined in a less ambitious way, namely as the provision of a further chemical compound — a non-starter at the EPO in any event.

I fully agree with the result, but I am not convinced that one really needs the concept of ‘plausibility’ for that. I feel the Board could just have held that the specification re dasatinib was so vague and unspecific that it appears that the invention (in terms of an actual ‘contribution to the art’) had not yet been made on the filing date.

Lara pointed out that the concept of ‘plausibility’ has not yet appeared in Swiss jurisprudence. Frankly, I feel it is not being missed.

Tobias Bremi mentioned in the final discussions that the concept of ‘plausibility’ is sth that judges in various jurisdictions are struggling with. Lack of ‘plausibility’ may have been useful to sort out some cases, but any broader application might well have the (unwanted) consequence that ‘armchair’ inventions were prohibited.

Reported by Martin WILMING

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