A Practitioner's Guide to European Patent Law

Introduction I. Towards a ius commune of Patent Law II. The Purpose of this Book 1. The Skilled Person and their Common General Knowledge I. The Skilled Person or Team II. Common General Knowledge III. Key Issues for the UPC 2. Scope of Protection of Patent Claims I. Statutory Basis II. Principles of Construction III. General Principles of National Law on the Doctrine of Equivalents IV. The Role of the 'Formstein Defence' V. The Role of the Prosecution File VI. Particular Terms and Forms of Claim VII. Numerical Ranges VIII. Case Comparison - The Pemetrexed Decisions IX. Key Issues for the UPC 3. Direct Infringement I. Statutory Basis II. Liability III. Territoriality IV. Product Claims (Article 25(a) CPC 1989) V. Process Claims (Article 25(b) CPC 1989) VI. Products Made by an Infringing Process (Article 25(c) CPC 1989) VII. Processes for Obtaining New Products VIII. Second Medical Use Claim Infringement IX. Infringement of DNA Sequences XI. Key Issues for the UPC 4. Indirect Infringement I. Statutory Basis II. Means Relating to an Essential Element of the Invention III. Means Suitable for Putting the Invention into Effect IV. Knowledge V. Staple Commercial Products VI. Double-territoriality VII. Indirect Infringement of Swiss Form Claims VIII. Other forms of Contributory Infringement XI. Key Issues for the UPC 5. General Defences I. The Diverse Sources of Defence to Infringement II. The Experimental Use Exemption III. The Bolar Exemption IV. Other Statutory Defences V. Exhaustion VI. De minimis VII. Public Interest Compulsion and Crown Use VIII. Invalidity and Non-Infringement of Claims Asserted IX. Issue Estoppel X. FRAND License Objection XI. Prior Use (Article 37 CPC 1989) XII. Innocent Infringement as a Defence to Damages XIII. Key Issues for the UPC 6. Declarations I. General Jurisdictional Basis II. Declarations of Non-Infringement III. Declarations that a Patent is Standard Essential IV. Declarations Concerning Validity V. Key Issues for the UPC 7. FRAND I. Standards, SEPs and FRAND II. Guidance at the European Level III. General Principles of National Law IV. Determining the FRAND Rate V. Anti-Suit Injunctions (ASIs) and Anti-Anti-Suit Injunctions (AASIs) VI. Key Issues for the UPC 8. Remedies I. Statutory Basis II. Preliminary Injunctions III. Damages for Unjustified Injunctions IV. Protective Letters V. Quia Timet Injunction VI. Final Injunctions VII. Springboard Relief VIII. Award of Damages IX. Account of Profits X. Recall, Removing from the Channels of Commerce and Destruction XI. Publication of Judgment XII. Effect of Tested Validity XIII. Substantive Treatment of Costs XIV. Key Issues for the UPC 9. 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. Key Issues for the UPC 10. Novelty I. Statutory Basis II. General Principles of EPO and National Case LAW III. Treatment of Disclosure and Enablement IV. Interpreting Patent Claims and the Prior Act for Novelty Purposes V. Made Available to the Public VI. Novelty over General Disclosures in the Art VII. Priority VIII. Product by Process Claims IX. Second and Subsequent Medical Uses X. Other Forms of Purpose-limited Claims XI. Claim Amendment XII. Key Issues for the UPC 11. Inventive Step I. Statutory Basis II. Date III. Determination of Fact or Law? IV. Technical or Commercial Question? V. The Role of Common General Knowledge VI. Structured Approaches to Inventive Step VII. Motivation Based Approaches VIII. Criticism of Problem-and-Solution IX. Criticism of Motivation-based Tests X. An Alternative Basis for Assessing Inventive Step XI. Mixed Technical and Non-technical Features XII. Combinations of Prior Art Features XIII. Other Factors XIV. Case Comparison (Tadalafil) XV. Key Issues for the UPC 12. Sufficiency I. Statutory Basis II. General Approaches of EPO and National Law III. Principle of General Application IV. Technical Contribution and Invention Treated Separately V. Forms of Claim VI. Inventive Improvements/Infringements VII. Promised Quality not Enabled and Errors VIII. Deposits of Biological Material IX. Plausibility in the Context of Insufficiency X. Lack of Clarity XI. Key Issues for the UPC 13. Plausibility I. Is There 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 and ab-initio Plausibility VIII. The Plausibility Threshold IX. Further Questions X. Key Issues for the UPC 14. Supplementary Protection Certificates I. Statutory Basis II. Certificates for Plant Protection Products III. Conditions for Grant IV. Protected by a Basic Patent in Force V. Marketing Authorisations in the SPC Context VI. Extent of Protection (Article 4 SPC Regulation) VII. Same Rights as Conferred by the Patent (Article 5 SPC Regulation) VIII. Term IX. Medicinal Products for Paediatric Use X. The SPC Manufacturing for ex-EU XI. Key Issues for the UPC and the Need for Reform 15. Patent Ownership, Dealings and Employee Inventors I. Introduction II. Ownership III. Approaches to Inventor Compensation IV. Right of Co-owners V. Patent Dealings VI. Effect of Transfer of Ownership on Licensee VII. Compulsory Licenses VIII. Public Interest Compulsion IX. Unitary Patents as ‘Objects of Property’ 16. Cross-border Actions in Europe I. Relation between National and EPO Proceedings II. The Brussels Regulation III. Cross-border Validity Actions IV. Cross-border Infringement Actions V. Cross-border Declarations of Non-infringement VI. Key Issues for the UPC 17. Evidence I. General Principles II. Burden of Proof III. General Obligations to Produce Evidence IV. Specific Means for Obtaining Evidence V. Role of Witness of Fact Evidence VI. Opinion Evidence VII. Experiments VIII. Letters Rogatory (Letters of Request) and US 1782 IX. Border Seizures X. Confidentiality XI. Privilege XII. Key Issues for the UPC