European Patent Law and Litigation
Guest Lecture, Health and Intellectual Property Law in a Global
Environment
4 August 2010 | Geneva | Mark Schweizer
meyerlustenberger Rechtsanwälte − Attorneys at Law
www.meyerlustenberger.ch
European Patent Law and Litigation
Overview
1. Briefest introduction to the European Patent
Convention (EPC)
2. Patentable subject matter: second and
further medical use, or Swiss type claims no
more
3. Litigation in Europe: of Italian torpedos, the
spider in the web, and what‘s left of them
4. Outlook: European and European Union
Patents Court (EEUPC)
2
European Patent Law and Litigation
European Patent Convention
Centralized grant, decentralized enforcement
3
European Patent Law and Litigation
European Patent Convention
4
European Patent Law and Litigation
European Patent Convention
1. Filing with the European Patent Office (EPO)
2. Examination at EPO and grant if the application
complies with the European Patent Convention,
namely
» Patentable subject matter (veery basically: technology)
» Industrial application, novelty, and inventiveness
3. But: after grant, independent right in each jurisdiction
4. Even during opposition before EPO
5
European Patent Law and Litigation
European Patent Convention: Opposition
6
European Patent Law and Litigation
European Patent Convention: Validation
Validation in each jurisdiction where
protection is sought, namely by
» filing of a translation into the official
language of that state
» paying of patent annuities for that
state
7
European Patent Law and Litigation
European Patent Convention: Cost
8
European Patent Law and Litigation
European Patent Convention: London Agreement
9
European Patent Law and Litigation
10
European Patent Convention: Summary
„European“ Patent is a bundle of national
patents: centrally examined and granted, but
after grant and validation, each national part of
the European Patent (EP) is independent
» national courts are competent to decide on validity
and infringement
» one national part may be annulled, another part (of
the same EP) may be upheld
European Patent Law and Litigation
Patentable Subject Matter
Any technology – but what is technology?
11
European Patent Law and Litigation
12
Patentable Subject Matter: Methods of treatment
any invention, in all fields of technology
Methods for treatment of the human […] body
by […] therapy […] shall not be regarded as
inventions which are susceptible of
industrial application […].
This provision shall not apply to products, in
particular substances or compositions, for use
in any of these methods.
European Patent Law and Litigation
Patentable Subject Matter: Methods of treatment
13
European Patent Law and Litigation
Novelty of first medical use
The fact that a substance as such is
known (not novel, part of the state of
the art) does not exclude that its use
in a method of treatment can be
patented, provided that its use for
this method is not comprised in the
state of the art
14
European Patent Law and Litigation
Patentable Subject Matter: Second medical use
„Substance X for the treatment of
disease y“
„Use of substance X for the
manufacture of a medicament for
the treatment of disease y“
15
European Patent Law and Litigation
Patentable Subject Matter: Second medical use
Expansion of „new use“ by case law to
» use of known substance for treatment of
known disease in new subjects;
» use of known substance for treatment of
known disease with new way of
administration;
» use of known substance for treatment of
known disease with new dosage regime?
16
European Patent Law and Litigation
Novelty of further medical use: „Dosage regime“
„Use of nicotinic acid […] for the
manufacture of a sustained release
medicament for use in the treatment
by oral adminstration once per day
prior to sleep, of hyperlipidemia,
[…]“
17
European Patent Law and Litigation
18
Novelty of further medical use: „Dosage regime“
The fact that a substance is known
for (at least one) medical use does
not exclude the patentability of this
substance for any specific use in a
method of treatment, provided that
such use is not comprised in the
state of the art.
Art. 54(5) EPC 2000
European Patent Law and Litigation
Novelty of further medical use: Conclusion
EPC 2000 allows „use type claims“ for
further medical uses of substances with
known therapeutic effects, such uses are
not restricted to the treatment of a
different disease
» Swiss-type claims no longer required
(and no longer permitted)
19
European Patent Law and Litigation
Patentable subject matter: methods of treatment?
20
European Patent Law and Litigation
Cross-border litigation
or rather: same dispute, different courts, sometimes different outcomes
21
European Patent Law and Litigation
22
Cross-border litigation: Brussels Regime
1. Persons should be sued at their domicile (art. 2(1) Brussels I
Regulation)
2. A person may be sued in matters relating to tort, delict or quasidelict, in the courts for the place where the harmful event
occurred or may occur (art. 5(3) Brussels I Regulation)
3. If a person is one of a number of defendants, he may be sued in
the courts for the place where any one of them is domiciled,
provided the claims are so closely connected that it is expedient
to hear and determine them together to avoid the risk of
irreconcilable judgments resulting from separate proceedings
(art. 6(1) Brussels I Regulation)
4. However, in proceedings concerned with the registration or
validity of patents the courts of the Member State in which the
registration has been applied for have exclusive jurisdiction
(art. 22(4) Brussels I Regulation)
European Patent Law and Litigation
Cross-border litigation: practicalities
23
European Patent Law and Litigation
Cross-border litigation: the torpedo
Where proceedings involving the same
cause of action and between the same
parties are brought in the courts of
different Member States, any court other
than the court first seised shall of its own
motion stay its proceedings until such
time as the jurisdiction of the court first
seised is established (art. 27(1) Brussels
I Regulation)
24
European Patent Law and Litigation
Cross-border litigation: the torpedo
25
European Patent Law and Litigation
Cross-border litigation: GAT v. LuK (C-4/03)
26
European Patent Law and Litigation
Cross-border litigation: Roche v. Primus (C-593/03)
27
European Patent Law and Litigation
Litigation in the pharma sector: some figures
28
European Patent Law and Litigation
Litigation in the pharma sector: some figures
29
European Patent Law and Litigation
Litigation in the pharma sector: some figures
30
European Patent Law and Litigation
Litigation in the pharma sector: some figures
31
European Patent Law and Litigation
European and EU Patents Court (EEUPC)
the way forward?
32
European Patent Law and Litigation
33
European and EU Patents Court (EEUPC)
One court (with several first instance
divisions) with exclusive jurisdiction
in respect of civil litigation related to
the infringement and validity of EU
patents and European patents
European Patent Law and Litigation
European Union (EU) Patent
34
European Patent Law and Litigation
European and EU Patents Court (EEUPC)
35
European Patent Law and Litigation
36
Thank you for your attention.
Questions?
Mark Schweizer
m.schweizer@meyerlustenberger.ch
meyerlustenberger
Forchstrasse 452
Postfach 1432
8032 Zürich
www.meyerlustenberger.ch