Ypsomed sued twice(!) for patent infringement by its UnoPen™

Reading time: 4 minutes

As noted earlier on this Blog here, we knew that a medical device company has been sued by two competitors for infringement of their respective patent(s) by one and the same injector pen.

Now we know that it’s Ypsomed’s UnoPen™ that is being haunted after:

With some further digging in the EPO dockets, I have now all the pieces together to summarize the essentials of the two cases that are pending at the FPC, as follows:

O2020_001

Becton, Dickinson and Company
./.
Ypsomed AG

Patent in suit: EP 2 825 227 B1 (limited, inter partes);
see EPO Register and Swissreg for further bibliographic information.
Main hearing: 4 June 2021, 10:00 hrs
BD logo

From Ypsomed’s acceleration request in EPO opposition proceedings, it is evident that corresponding infringement proceedings are pending before the Landgericht München I, case no. 21 O 367/20.

Oral proceedings in opposition at the EPO are scheduled for 18 October 2021. The summons came along with a preliminary opinion of the OD (cf. p. 2 et seqq.). By way of its main request, BD currently defends the patent in limited form only. However, it is currently unclear whether this wording corresponds to the limitation that has been made inter partes in the Swiss proceedings. The OD’s preliminary opinion holds that the main request is unclear and comprises unallowable amendments. Novelty / obviousness is not dealt with in-depth, for the time being.

In view of the branding on this exhibit, I feel confident enough to say that BD is represented by MLL in the Swiss proceedings.

O2017_022

Sanofi Aventis Deutschland GmbH
./.
Ypsomed AG

Patent in suit: EP 2 437 830 B2;
see EPO Register and Swissreg for further bibliographic information.
Sanofi logo

While opposition / appeal proceedings were pending at the EPO, Ypsomed interevened as an assumed infringer. From the redacted complaint it is clear that Sanofi has invoked yet two further European patents; see N 5.

Sanofi is represented by Homburger‘s Andri HESS and Roman BÄCHLER.

These proceedings have been derailed well after the expert opinion of judge-rapporteur Bremi had been established and most likely only shortly before the main hearing; see this Blog here. From the Supreme Court judgment 4A_243/2020, it is evident that Ypsomed is represented by Rentsch Partner.

A little bit of background

Ypsomed logo

It is not the first time that Ypsomed and Sanofi have locked jaws in patent infringement proceedings. They settled «all currently pending patent disputes and other litigations» in April 2008. At that time, Ypsomed had attacked Sanofi’s SoloStar®. The tables have turned now when Sanofi is seeking injunctive relief.

Noteworthy, Ypsomed’s growth in the pen business is, to large extent, attributable to the UnoPen™:

What is more, Ypsomed is being sued by a (very) good customer:

It will be interesting to see how all this finally unfolds. Stay tuned.

Reported by Martin WILMING

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G 1/21: State of play (continuously updated)

Reading time: 8 minutes

As mentioned earlier on this Blog here, the following question has been referred to the Enlarged Board of Appeal (EBA), with interlocutory decision T 1807/15 of 12 March 2021:

Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?

The docket to watch is EP 1 609 239.

Composition of the EBA

In a communication of 1 April 2021 (to be published in the OJ), the EBA noted that the panel considering the referal G 1/21 will be composed as follows (L, legal member; T, technical member):

Mr. C. Josefsson SE L, Chairman
Mr. W. van der Eijk NL L, rapporteur
Mr. I. Beckedorf DE L
Mr. R. Arnold GB L, external
Mr. E. Chatzikos GR L, external
Mr. G. Eliasson SE T
Ms. A. Ritzka DE T

This composition has first been indicated with a communication of the EBA of 17 March 2021.

No stay of first instance proceedings

The President of the EPO has decided that

[…] during pendency of the referral oral proceedings before examining and opposition divisions will continue to be held by VICO as under current practice, i.e. without requiring explicit agreement of the parties.

See the EPO’s news release of 24 March 2021 for details. The official notice (for publication in the OJ) holds that this is meant 

[…] to guarantee access to justice and ensure the functioning of the EPO […].

With a communication of same day, the Boards of Appeal have informed the public that new Art. 15a of the RPBA was approved by the Administrative Council on 23 March 2021 (Art. 15a is accordingly in force since 1 April 2021). Further, the following was noted (emphasis added):

Between May 2020 and February 2021, oral proceedings were held by videoconference in over 380 appeal cases. Initially, oral proceedings were held by videoconference only if all parties agreed. Since 1 January 2021, they have also been conducted without the consent of the parties in appropriate cases. The BOAC and the Administrative Council have confirmed this practice in new Article 15a RPBA (see CA/5/21, points 5 and 7).

The notification is silent about whether or not this practice is being continued or not pending the referral to the EBA.

Oral proceedings before the EBA

It is pretty clear that this referral is on the fast track.

It took the Registry of the EBA only 5 calendar days from the date of the referring decision (including a weekend) to issue summons to oral proceedings. They are scheduled to take place on 28 May 2021 at 09:00 hrs, by videoconference:

This is a very tight schedule. What is more, the EBA noted that

[…] a decision of the points of law referred to the Enlarged Board could be issued promptly

if the parties consider oral proceedings before the EBA not to be expedient and/or envisage not to attend the oral proceedings:

The patentee / respondent has indicated with letter of 26 April 2021 that he will not attend the ‘oral proceedings’ before the EBA; see here.

Isarpatent has taken over representation of the opponent / appellant with letter of 27 April 2021, suggesting that the referred question should be answered in the negative. In addition, C. Josefsson, A. Ritzka and G. Eliasson are objected for the appearance of bias.

Amicus curiae briefs

With a communication of 24 March 2021, third parties have been invited to submit written statements in accordance with Art. 10(1) of the Rules of Procedure of the Enlarged Board of Appeal, so-called amicus curiae briefs. They should be filed by 27 April 2021 with the Registry of the EBA, quoting case number G 1/21, and should be marked for the attention of Mr Nicolas Michaleczek ([email protected]).

The following list of amicus curiae briefs is continuously updated as they appear online. The color indicates whether the respective submission argues in favor (green) or against (red) ‘oral proceedings’ by videoconference without the consent of a party at least in non-pandemic times and/or before the Boards of Appeal. Unlabeled submissions are either not taking such a clear-cut position on the referred question, or relate to the appearance of bias only (epi (1) and (2)).

Amicus curiae

Date Submitted by
01 08 Apr 2021  VESPA
02 12 Apr 2021  epi (1)
03 13 Apr 2021  Bayer
04 15 Apr 2021  A. Schauinsland
05 16 Apr 2021  C. Menges
06 19 Apr 2021  Siemens
07 19 Apr 2021  BASF
08 20 Apr 2021  Med. for Europe
09 21 Apr 2021  Philips
10 21 Apr 2021  VPP
11 21 Apr 2021  APEB
12 22 Apr 2021  G-F & D
13 22 Apr 2021  VDA
14 23 Apr 2021  FEMIPI
15 23 Apr 2021  REPI
16 25 Apr 2021  BDPA
17 27. Apr 2021  PAkammer
18 26 Apr 2021  Plasseraud
19 26 Apr 2021  Roche
20 26 Apr 2021  Maiwald et al.
21 26 Apr 2021  Laine IP
22 26 Apr 2021  epi (2)
23 (undated)  IP Ability
24 26 Apr 2021  J. Cockburn
25 27 Apr 2021  Saint-Gobain
26 27 Apr 2021  Murgitroyd
27 27 Apr 2021  CIPA
28 27 Apr 2021  Clariant
29 27 Apr 2021  M. D. Snodin
30 27 Apr 2021  J. Schmidtchen
31 27 Apr 2021  VCI/VDMA/ZVEI
32 27 Apr 2021  EPLIT
33 27 Apr 2021  Fresenius Kabi
34 27 Apr 2021  IPO
35 27 Apr 2021  C&R
36 27 Apr 2021  FICPI
37 27 Apr 2021  IP Federation
38 27 Apr 2021  F. P. Vatti
39 27 Apr 2021  IK-IP
40 27 Apr 2021  Ericsson
41 27 Apr 2021  C. Beckmann
42 27 Apr 2021  CNCPI
43 27 Apr 2021  epi (3)
44 27 Apr 2021  Philip Morris
45 27 Apr 2021  ReadyOppoOne
46 27 Apr 2021  Union
47 28 Apr 2021  Downing IP

There is also a list of the amicus curiae briefs in a websection of the Boards of Appeal which is dedicated to G 1/21 here.

The President of the EPO has submitted comments under Art. 9 RPEBA on 27 April 2021.

Third party observations

In addition to the amicus curiae briefs, there are also a lot of unsolicited / anonymous third party observations (TPO) in the online file wrapper.

The following list of TPOs is continuously updated as they appear online.

What to wish for, and what to expect

One may like videoconferencing or not. That is a matter of opinion, not a matter of fact or law. I have attended quite some ‘oral proceedings’ by videoconference over the last months, in examination, opposition and appeal proceedings. I did not object to any of those, and they had all been reasonably okay under the current pandemic circumstances. Accordingly, I am not fundamentally against oral proceedings by videoconference per se.

However, I am a big fan of in-person oral proceedings when it really matters; see e.g. this Blog here. In non-pandemic times, parties should have the right (again) to insist on oral proceedings in person if they wish so. This must not be only something that is occasionally allowed upon request at the mercy of a deciding body of the EPO in individual cases.

So, this is what I wish for. Not much, actually.

What is more, I feel in good company with the views taken by both epi and BusinessEurope:

epi is the professional body representing all European Patent Attorneys, with currently about 12’300 members. BusinessEurope speaks for all-sized enterprises in 35 European countries whose national business federations are its direct members. Accordingly, the Standing Advisory Committee before the EPO (SACEPO) is mainly staffed with representatives nominated by epi and BusinessEurope; see here. Thus, the users have been consulted, and they clearly and overwhelmingly expressed their views.

But what to expect?

Some say that the answer will surely be ‘Yes’ (contrary to my wish), inter alia in view of:

    • the explanatory notes to Art. 15a RPBA in BOAC/16/20 (N 20) and the subsequent approval by the Boards of Appeal Committee and the Administrative Council (see above);
    • the composition of the panel of the EBA; and
    • the notice in the summons that a decision could be issued ‘promptly’ if no oral proceedings were necessary (see above).

I am not so sure about it. But I’m a die-hard optimist.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory decision of 12 March 2021

Appellant / opponent:

Rohde & Schwarz GmbH & Co KG
Mühldorfstrasse 15
D-81671 München (DE)

Respondent / patentee:

Andrew AG
Bächliwis 2B
CH-8184 Bachenbülach / Zürich

Composition of the Board:

Chairman: Richard LORD
Member and rapporteur: Wilhelm UNGLER
Member and rapporteur: Fabian GIESEN

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The (more) competent court shall decide examination and opposition appeals

Reading time: 2 minutes

A major revision of the Swiss PatA is currently in the making; see this Blog here, here and here. Inter alia, examination on the merits (novelty and inventive step) as well as a full-fledged opposition proceeding is proposed.

According to the draft bill, the Federal Administrative Court should have handled appeals against decisions of the IPI in examination and opposition. This has been criticized by many because the FPC would appear to be the more intuitive choice. The submissions during the public consultation almost unanimously reflect this.

The Supreme Court recommends that the FPC should handle such appeals:

The FPC is apparently willing to do so and proposes itself:

The Federal Administrative Court abstains from taking a position on whether or not it should be the responsible authority (obviously already in knowledge of the Supreme Court’s take on this), but reminds that independence of justice needs to be maintained if the FPC would be responsible for both administrative and civil proceedings:

But this can surely be resolved. INGRES, AIPPI, VESPA, VIPS and VSP have jointly commissioned an expert opinion of Prof. Dr. Rainer J. Schweizer who proposes to install a second administrative department (‘zweite verwaltungsgerichtliche Abteilung’).

In my perception, this addresses — and resolves — the reservations of the Federal Administrative Court. Some amendments to the PatCA will be necessary, but this appears doable. Accordingly, I would be surprised if the FPC would not turn out to be the appeal authority in the final bill.

Reported by Martin WILMING

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Resolving scheduling conflicts between EPO and FPC oral proceedings

Reading time: 2 minutes

The EPO has a pretty strict regime in place with respect to postponement of oral proceedings. As you might know, only a single date is fixed by the EPO ex officio, and this date

[…] will be cancelled and another date fixed […] only if the party concerned can advance serious reasons which justify the fixing of a new date. The request to fix another date shall be filed as soon as possible after the ground preventing the party concerned from attending the oral proceedings have arisen.

See the Notice from the EPO of 18 December 2008. Only a very limited set of ‘serious reasons’ is expressly whitelisted in ¶ 2.3. But even those whitelisted reasons are not sufficient sometimes. In particular in more recent times, at least in my experience. But that’s a different story; I might come back to this soon.

One of the whitelisted ‘serious reasons’ is a previously notified summons to oral proceedings before a national court. However, patent attorneys are not the legal representatives in by far the most cases at the FPC. They are rather only assisting, and the summons are not addressed to them. That makes it cumbersome to invoke the summons as a ‘serious reason’ with a request for postponement at the EPO.

However, the FPC has now issued a notice that patent attorneys assisting in proceedings before the FPC can request a confirmation that they are required to attend a hearing at the FPC, to avoid scheduling conflicts with the EPO.

Needless to say that this is MUCH appreciated.

/MW

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BREAKING — Revision of the Swiss PatA: Draft bill published

As explained earlier on this Blog here, major changes are afoot in the Swiss patent system.

The Federal Council has published the draft bill earlier today; see the press release. While the press release is available in English language, the draft bill  and the explanatory notes are not. I have prepared quick and dirty automated translations of the draft bill (EN) and the explanatory notes (EN), though.

The public consultation period runs until 1 February 2021. There is a lot to digest here. I have not done any detailed analysis of the draft bill, but the key elements are clear:

    • Patent applications will be examined on the merits, i.e.  re novelty and inventive step.
    • Appeals in examination proceedings will be heard by the Federal Administrative Court; judges with technical expertise may be called in.
    • Post-grant oppositions will be possible, also on the merits.
    • A utility model will be available, unexamined on the merits and with a reduced term (10y).
    • The utility model will qualify for the patent box, just as a patent.

A more in-depth analysis will follow.

UPDATE 30 October 2020:

A marked-up version of the entire PatA has been included below.

Reported by Martin WILMING

DRAFT BILL

The draft bill is also available in French and Italian.

We have compiled a marked-up version of the entire PatA, to provide appropriate context and to ease understanding:

EXPLANATORY NOTES

The explanatory notes are also available in French and Italian.

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Compad Consulting and Werner & Mertz litigating over entitlement to a patent

Reading time: 2 minutes

As reported by Christopher GILB in the Luzerner Zeitung today, there is some litigation going on at the FPC about entitlement to a European patent pertaining to a washing agent that is free from palm oil.

Where’s the patent?

It appears that Werner & Mertz (well known e.g. for its brands Erdal® and Frosch®) has sued the Swiss start-up company Good Soaps for lack of entitlement to the patent, i.e. unlawful usurpation thereof.

The patent has not been identified in the news. I could not leave it at that and did my homework. The patent application at stake is EP 2 592 134 »; the currently registered applicant is Compad Consulting GmbH. See the European Patent Register for further information. The file wrapper is telling: The complaint of 9 January 2019, the reply of 20 September 2019 (including all appendices) as well as the comments on the rejoinder of 5 December 2019 are available online. The instruction hearing took place on 8 July 2019 — without a settlement being reached.

The main hearing is said to be scheduled for 16 September 2020. I trust this will get interesting …

UPDATE 19 August 2020:

The official announcement of the main hearing has just been published by the FPC. No surprises anymore, it’s indeed all about EP 2 592 134 ».

Reported by Martin WILMING

Header image courtesy of T. K. Naliaka, under CC BY-SA 4.0

BIBLIOGRAPHY

Case No. O2019_001

Werner & Mertz
./.
Compad Consulting GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Frank SCHAGER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant / Counterclaimant:

PATENT APPLICATION IN SUIT

Clean version of the DREX, i.e. the version for which the EPO indicated its intention to grant a patent:

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No oral proceedings by video-conference if parties do not agree

Reading time: 3 minutes

Case No. 4A_180/2020 (Supreme Court) | Decision of 6 July 2020

Oral proceedings by video-conferencing are currently en vogue, e.g. in the U.K. and The Netherlands, just to name a few. When all parties agree, I have no issue with that. But I am troubled when parties to proceedings are forced into video-conferencing even when they don’t want them, e.g. in first instance proceedings at the EPO; see this Blog here.

Under the Swiss Civil Procedure Code (CPC), the Supreme Court had to deal with an appeal of a party who did not consent with the main hearing being held by video-conference at the Commercial Court Zurich. The hearing was held nevertheless by Zoom, in accordance with a procedural decision of 1 April 2020 (you can’t make this up) — and the respective party did not attend. It was bound to happen: The Supreme Court has now set aside the judgment on the merits in the aftermath of the hearing, in no uncertain terms.

The Supreme Court holds that the CPC requires the physical presence of the persons summoned and the members of the court at the same place. This results, for example, from the provisions governing appearance at the main hearing and the consequences of default; see, for example, Art. 133 lit. d, Art. 134,  Art. 147(1) CPC. The Code of Civil Procedure thus conceives the main hearing as an oral hearing in the courtroom with the parties and members of the court physically present.

On a side note, the EPC is not much different in this respect; see e.g. R. 115(2) EPC (emphasis added); yet a further argument why I believe that the recent draconian move of 1 April 2020 [sic!] to make videoconferencing in first instance proceedings at the EPO mandatory should be revisited:

If a party duly summoned to oral proceedings before the European Patent Office does not appear as summoned, the proceedings may continue without that party.

For this and yet further reasons, the Supreme Court allowed the appeal and set the judgment of the Zurich Commercial Court aside. In doing so, it explicitly did not address the security concerns regarding the use of the ZOOM Cloud Meetings app. You don’t think there are any? The zoom-bombed bond hearing in Florida on 5 August 2020 in the case of Graham Clark, the alleged mastermind of a recent bitcoin scam through the accounts of high-profile Twitter users, is a prime example of what can go wrong.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_180/2020 (Supreme Court) | Decision of 6 July 2020

n/a
./.
n/a

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Defendant / Appellant:

Representative(s) of Respondent / Plaintiff:

DECISION

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Synova and Avonisys litigating over water jet guided laser technology

Reading time: 2 minutes

According to a press release of 21 November 2019,

Synova SA has brought an action against Avonisys AG and its directors with the Swiss Federal Patent Court for infringing on the Swiss part of Synova’s Patent EP 1 833 636 B1 » by marketing its ‘Air-Jet’ technology.

The press release is still available online at presseportal.ch. Synova’s own MicroJet technology is explained in the following promotional video:

Synova explained in their press release that Avonisys’ founders and directors are former employees of Synova. Avonisys’ Air-Jet technology that allegedly infringes EP 636 » can be understood from their technical paper and a promotional video below:

Further bibliographic information about EP 636 » can be found in the European Register and Swissreg.

From Avonisys’ press release of 4 December 2019 (still available online at presseportal.ch), in response to Synova’s press release, it becomes clear that Synova had apparently already filed their complaint on 5 June 2018 — but only made this public in November 2019.

Avonisys denies that their Air-Jet technology infringes EP 636 ». Further, Avonisys has apparently lodged a counter-claim for nullity (inter alia based on a PhD thesis of Ricardo Cadavid-Giraldo), and yet a second counter-claim based on the Unfair Competition Act.

Stay tuned …

UPDATE 2 September 2020:

Synova has partially waived the patent (request of 19 June 2020, published 14 August 2020); see the corresponding H1 publication ».

Further, the battle of press releases continues: Avonisys has commented on the partial waiver with a press release of 1 September 2020, shortly before the main hearing of 3 September 2020.

Reported by Martin WILMING

PATENT IN SUIT

As initially granted:

 

After the partial waiver:


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News from yesteryear: The first FRAND case at the FPC

Apparently, the FPC had to deal with its first FRAND case already back in 2018, but it had been settled and thus no judgment is available. Not even the parties are known. But what is known is the following:

According to this source, the case

    • had been pending at the FPC;
    • Andri HESS (Homburger) represented two clients in the dispute; and
    • the case has ultimately been settled, presumably already back in 2018.
worldtrademarkreview.com

From this source, I conclude that MLL represented the counterparty.

iam-media.com

As you may imagine, I’m bursting with curiosity. But I could not get hold of any further information about this case by now. Any help would be greatly appreciated. Now it’s your turn … 😉

By the way, for those of you who are interested in FRAND cases, the European Commissions’ JRC Report on Licensing Terms of Standard Essential Patents of 2017 gives an excellent overview of cases.

Reported by Martin WILMING

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The public may be excluded from settlement discussions — but maybe not from the instruction hearing in general?

Reading time: 3 minutes

As discussed a while ago on this Blog here, the settlement discussion at the occasion of a main hearing is non-public at the FPC. I trust that this will not change any time soon, in view of a decision of the Supreme Court that has been published earlier this week (4A_179/2019 of 24 September 2019). In that case, an accredited court reporter of the Republik had been asked to leave the room for the settlement discussion at the end of a main hearing in proceedings at the Zurich labor court. Ultimately, the Supreme Court has now endorsed this exclusion of the public from the settlement discussion:

Die Bemühungen des Gerichts, zwischen den Parteien zu vermitteln, gelten nicht als Gerichtsverhandlung respektive Verhandlung und unterstehen nicht dem Grundsatz der Justizöffentlichkeit.

Now, what about instruction hearings according to Art. 226(2) CPC?

Maybe, the Supreme Court telegraphed a message by explicitly saying nothing (emphasis added):

Demgegenüber ist hier nicht zu beurteilen, ob es zulässig wäre, die Öffentlichkeit über die Vergleichsgespräche hinaus generell von Instruktionsverhandlungen auszuschliessen, zumal an solchen nach Art. 226 Abs. 2 ZPO unter anderem auch der Sachverhalt ergänzt und die Hauptverhandlung vorbereitet werden kann ([…]).

In English (emphasis added):

On the other hand, it is not necessary here to assess whether it would be permissible to generally exclude the public from instruction hearings beyond the settlement discussions, especially since, according to Art. 226 para. 2 CPC, the facts of the case can be supplemented and the main hearing can be prepared in the instruction hearings ([…]).

The FPC took note. Here is the FPC’s tweet of earlier today:

Indeed, the Supreme Court did leave it undecided whether the public could also be excluded from the formal part of an instruction hearing. Still, the Supreme Court made it crystal clear that it does not want to see its judgement being read on instruction hearings in general, in view of what is (or maybe) going on in (the formal part of) an instruction hearing — contrary to mere settlement discussions, be it during a main hearing or an instruction hearing.

In my perception, that’s a somewhat deafening silence on this issue, isn’t it?

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_179/2019 (Supreme Court) |  Decision of 24 September 2019, on appeal against RA190002-O/U (High Court, Zurich) | Decision of 6 March 2019 (unpublished)

[accredited court reporter, Republik] (Appellant)
./.
Labour Court, Zurich (Respondent)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Kathrin KLETT
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Marie-Chantal MAY CANELLAS

Court Clerk:

    •  Dr. Christian KÖLZ

Representative(s) of Appellant:

    • Marin FARNER (FWE)

Representative of Respondent:

    • n/a

SUPREME COURT DECISION

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The money behind the pharmaceuticals being litigated

The Njardarson Group of the University of Arizona has just published the 2018 edition of the poster ‘Top 200 Pharmaceutical Products by Retail Sales‘ (file size is about 8 Mb).

Quite a few have already been litigated in Switzerland. And there is more to come, for sure. Stay tuned.

Reported by Martin WILMING

TOP 200 PHARMACEUTICALS (2018 ed.)

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The EPO assesses all aspects of entitlement to priority. Rightly so.

Reading time: 9 minutes

Proper assignment of the right to claim priority is intensely discussed in recent times, in particular the way how the EPO addresses such issues.

Why is that?

Broad’s logo

Most attention is where the biggest money is. Or where the most spectacular mishap occurs. Or both. The Broad Institute is upon to lose its CRISPR-Cas gene editing patents in Europe, for a lack of entitlement to priority. It’s not a question of ‘same invention’ this time, but rather of identity of inventor(s) / applicant(s) in both the priority application and the subsequent application.

Some priority basics at the EPO

Art. 87 to 89 EPC provide a complete, self-contained code of rules on claiming priority for the purpose of filing a European patent application (see J 15/80, confirmed in e.g. J 9/07). However, since the EPC — according to its preamble — constitutes a special agreement within the meaning of Art. 19 PC, it is clearly intended not to contravene the basic principles concerning priority laid down in the latter (see T 301/87, G 3/93 and G 2/98).

EPO logo

The EPO does not normally check the validity of a priority right during examination. A check, however, is made if relevant prior art has been made available to the public within the meaning of Art. 54(2) EPC on or after the priority date claimed and before the date of filing or if the content of the European patent application is totally or partially identical with the content of another European application within the meaning of Art. 54(3) EPC, such other application claiming a priority date within the above-mentioned period. In opposition proceedings this applies where prior art is invoked in connection with a ground for opposition under Art. 100(a) EPC in relation to which the priority date is of decisive importance. If the claim to priority turns out to be not valid, intervening prior art may lead to revocation of the patent.

All this is not very exciting; it’s just the law because the patentee cannot enjoy the benefit of an earlier effective date.

It is established practice at the EPO that the claim to priority is invalid if, at the filing date of the subsequent application, the applicant did not have the right to claim priority. Further, it is settled case-law at the EPO that the validity of the transfer of the right to claim priority is a matter of national law (cf. e.g. T 1008/96). All this is even reflected in the Guidelines, A-III, 6.1:

[T]he transfer of the application (or of the priority right as such) must have taken place before the filing date of the later European application and must be a transfer valid under the relevant national provisions. Proof of this transfer can be filed later.

A revolutionary new approach?

Tobias Bremi (second ordinary judge at the FPC) recently made an interesting contribution to the discussion on priority issues at the Fordham Conference (summarized on IPKat here). Tobias argued:

[The] EPO is not competent to assess entitlement to priority issues. […] As long as the formalities encoded in the law have been complied with, entitlement is to be presumed by the EPO.

And, finally, with respect to the CRISPR-Cas case referred to above, Tobias mentioned that he is

still hopeful that they will reconsider in the next instance.

The FPC has distributed a link to IPKat’s report, and the tweet is strict to the point: In Tobias’ view, third parties have no standing to challenge the assignment of the right to priority.

That’s a pretty bold statement, and Judge Grabinski apparently referred to it as ‘revolutionary’. Tobias’ key arguments are as follows:

  1. Analogy to entitlement proceedings

Tobias is cited on IPKat as follows:

Once the formal requirements for claiming priority have been complied with, there is actually no legal basis for questioning entitlement, there is no legal basis for the EPO to ask for proof, and there is also no legal basis for finding a loss of the priority right. [T]he general idea of the EPC was to keep the EPO completely out of entitlement issues as a matter of principle for a number of reasons and to leave that exclusively to the jurisdiction of national courts. It is for national courts to decide on entitlement issues when challenged by an allegedly entitled person. As long as the formalities encoded in the law have been complied with, entitlement is to be presumed by the EPO.

  1. General principles of property law

In Tobias’ view,

[i]t goes against the general principles of property law that priority entitlement issues can be brought up by any third party before the EPO and not just by the one who is allegedly entitled. This opens up rather opportunistic and destructive battles on the validity of priority claims.

  1. Clash with the Paris Convention

With respect to the same/all applicant(s) approach of the EPO (see e.g. T 788/05), Tobias held that

if the EPO uses that approach, actually they apply the ‘lex protectionis’, i.e. the law of the country where protection is sought, to the priority applicants. However, the gist of the Paris Convention is to reduce impediments for international protection.

In Tobias’ view, these principles are in jeopardy by forcing applicants to comply with the law of the country of subsequent filing.

In sum, arguments i) – iii) are also presented by Broad on appeal in opposition proceedings of EP 2 771 468 B1; see Broad's appeal brief (p. 19 ff).

I don’t agree.

Wholeheartedly. Here is my line of thinking:

  1. The analogy with entitlement proceedings is flawed

Entitlement proceedings concern only two sides; i.e. the applicant / patentee on the one hand, and yet another party who believes to be the legitimate owner on the other hand. The EPC explicitly applies the legal fiction that the applicant is entitled (Art. 60(3) EPC), until someone else comes along at a national court and challenges this. The EPO then steps back until the national court has decided on this issue, and thereafter continues its proceedings with the legitimate owner. In my view, this makes perfectly sense since the public is not concerned in any way.

On the other hand, entitlement to priority affects the effective filing date and is therefore decisive for the EPO to correctly assess patentability. There is no legal fiction of entitlement to priority. The EPO fulfills its duties according to Art. 114 in conjunction with Art. 87 to 89 EPC and aims to grant / maintain only those patents that comply with the EPC, to full extent. Rightly so.

  1. General principles of property law are not contravened

It is not just a ‘third party’ who challenges the right to claim priority. It is either the EPO when fulfilling its duties to check for compliance with the EPC, or it is a party to the proceedings in opposition / appeal proceedings who raises the issue. It is in no way ‘destructive’ or ‘opportunistic’ by the EPO or parties to proceedings to challenge a patent for non-compliance with the law. I fail to see how this might go against general principles of property law.

  1. There is no clash with the Paris Convention

The Paris Convention clearly aimed to facilitate international filings. The current practice at the EPO in no way contradicts this purpose. It definitely makes foreign filings much more simple than before the Paris Convention. Admittedly, the European approach is not absolutely fool-proof by design. But it doesn’t have to be. It’s the law: Practitioners are navigating a jungle of pitfalls every day — not only in their home jurisdictions, but in particular abroad. Messing up a priority claim before an IP5 office is just one of many potential nightmares. 

The mere fact that the USPTO more easily acknowledges entitlement to priority even in cases where not all initial applicants are named in the subsequent application doesn’t impress me much. In my view, they just overachieve the minimum standards defined in the PC. But that’s no good reason to abolish with decades of consistently developed case-law at the EPO.

Final thoughts

Consider a world where the EPO does not care anymore about who claims priority.

Bad guys could systematically just grab all early published European patent applications, or utility models, that are still within the priority year and then file subsequent applications with the EPO, claiming priority. The applications could proceed to grant without the entitlement to claim priority ever being challenged. Bad guy could only be stopped by the legitimate owner of the utility model.  If that just doesn’t happen because he/she doesn’t care anymore, or is afraid of costly litigation, bad guy has got the patent. This cannot be it.

Stay firm, EPO.

Reported by Martin WILMING

DISCLOSURE STATEMENT

Nil. I have nothing to disclose. In particular, I am not in any way engaged in the CRISPR-Cas proceedings referred to above. /MW

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