News

Plausibility, Sufficiency and Inventive Step

A recent decision issued by the High Court has found that a patent to the second medical use of atomoxetine for the treatment of ADHD is valid. In his judgement, Mr Justice Henry Carr provided further guidance on the relationship between plausibility, sufficiency and inventive step. Practical advice – take care when relying on prior art disclosures to support plausibility so as to avoid the possibility of a squeeze attack. Include as much data as is reasonably possible having regard to the claim scope, nature of invention and common general knowledge.

European Patents can now be validated in the Republic of Moldova

EPO Clarifies Timing for Filing Divisional Patent Applications

Recent Decision confirms the Assessment of Added Matter

CJEU: Covalent binding of active ingredients does not preclude grant of SPCs

Covalent binding of active ingredients does not preclude grant of SPCs. The Court of Justice of the European Union (CJEU) recently considered whether a carrier protein covalently conjugated to the active ingredients of a vaccine could itself be protected by a Supplementary Protection Certificate (SPC). The Court found that while the covalent binding of active ingredients does not preclude the grant of an SPC, a carrier protein can only itself be considered an “active ingredient” if it produces a physiological effect which is covered by the marketing authorisation of the medicine in which it is present.

Repeated pain but no gain for Warner-Lambert

The dispute concerned the drug pregabalin, marketed by Warner-Lambert under the trade mark “Lyrica” for the treatment of epilepsy, generalized anxiety disorder (GAD) and pain. According to evidence put forward during the trial, prescription of pregabalin for pain accounted for 50% of sales. Patents directed to the compound per se expired in 2013 but Warner-Lambert owns a European patent (No. EP 0 934 061) directed to its use in treating pain which expires in 2017. Marketing of generic pregabalin for pain treatment would constitute an infringement of Warner-Lambert’s patent.

US Functional Biotech Claims – Vulnerable to Invalidity?

In AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., the US Federal Circuit reminded patent applicants of the importance of providing a suitable selection of representative examples to support broad claims, particularly claims which define a class of products (a genus) in terms of function rather than structure.

Recent European Court of Justice decision to boost stem cell research in Europe

Stem cell research companies and organisations will welcome a recent decision from the European Court of Justice (CJEU) which has extended the scope of patentability in the field of stem cell research. The decision opens the door for inventions relating to unfertilised human eggs whose division and further development have been stimulated by parthenogenesis to be patented in Europe. In practice, it remains to be seen how the European Patent Office and national patent offices in Europe will interpret the decision.

Two Recent EPO Board of Appeal Decisions

It is often argued that salt and polymorph screening during pharmaceutical drug development is now so routine that any resultant salts and polymorphs must be obvious from a patent perspective. This certainly seems to have been the stance of the EPO Examining Division in recent times where the bar for an inventive salt and/or polymorph has been set very high. Indeed the Board of Appeal has not really lowered this bar but has indicated that it is possible to get over it and seems to have adopted a more conciliatory tone in connection with this type of application.