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A Practitioner's Guide to European Patent Law: For National Practice and the Unified Patent Court (eBook)

Paul England

ISBN13: 9781509928620

Published: October 2019

Publisher: Hart Publishing

Country of Publication: UK

Format: eBook (ePub)

Price: Out of print
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9781509928606
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£120.00

Written by a team of lawyers with long-standing experience in patent litigation in Europe, this book is a comprehensive and practical guide to European patent law, highlighting the areas of consistency and difference between the most influential European patent law jurisdictions: the European Patent Office (EPO), England & Wales, France, Germany and the Netherlands.

It is frequently the case that the decisions and approaches of these courts are cited by European patent lawyers of all jurisdictions when submitting arguments in their own national courts. The book is therefore intended to provide a guide to patent lawyers acting in the national European courts today. The book also looks to the future, by addressing all the areas of patent law for which the proposed Unified Patent Court (UPC) will need to establish a common approach.

Uniquely, the book: i) addresses European patent law by subject matter area, assessing the key national and EPO approaches together rather than in nation-by-nation chapters; and ii) provides an overview in each chapter of the common ground between the national approaches, and outlines a foundation for the UPC.

Subjects:: Intellectual Property Law, eBooks

Contents:: Introduction; 1. The Skilled Person and their Common General Knowledge; I. The Skilled Person or Team; II. Common General Knowledge; III. Towards Common Ground in the UPC; 2. Scope of Protection of Patent Claims; I. Statutory Basis; II. General Principles of National Law on the Doctrine of Equivalents; III. The Role of the Prosecution File; IV. Numerical Ranges; V. Case Comparison – The Pemetrexed Decisions; VI. Towards Common Ground in the UPC; 3. Direct Infringement; I. Statutory Basis; II. Issues Relating to Article 25(a) CPC 1989; III. Products Made by an Infringing Process (Article 24(c) CPC 1989); IV. Second Medical Use Claim Infringement; V. Infringement of DNA Sequences; VI. Towards Common Ground for the UPC; 4. Indirect Infringement; I. Statutory Basis; II. Means Relating to an Essential Element of the Invention; III. Staple Commercial Products; IV. Knowledge; V. Double Territoriality; VI. Indirect Infringement of Second Medical Use Claims; VII. Common Design; VIII. Towards Common Ground in the UPC; 5. Defences; I. The Diverse Sources of Defence to Infringement; II. The Experimental Use Exemption; III. The Bolar Exemption; IV. Exhaustion; V. Invalidity of Claims Asserted; VI. FRAND Licence Objection; VII. Prior Use; VIII. Innocent Infringement as a Defence to Damages; IX. Towards Common Ground in the UPC; 6. Remedies; I. Statutory Basis; II. Preliminary Injunctions; III. Final Injunction; IV. Stays of Injunction and Tailored Orders; V. Springboard Relief; VI. Award of Damages and Lost Profits; VII. Recall, Removing from the Channels of Commerce and Destruction; VIII. Publication of Judgment; IX. Towards Common Ground in the UPC; 7. 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. Towards Common Ground in the UPC; 8. Novelty; I. Statutory Basis; II. General Principles of EPO and National Case Law; III. Interpreting Patent Claims and the Prior Art for Novelty Purposes; IV. Made Available to the Public; V. Novelty Over General Disclosures in the Art; VI. Priority; VII. First, Second and Subsequent Medical Uses; VIII. Other Forms of Purpose-limited Claims; IX. Claim Amendment; X. Towards a Common Approach for the UPC; 9. Inventive Step; I. Statutory Basis; II. The Approach of the EPO Boards; III. The Approaches of the National Courts; IV. Criticism of Problem-and-Solution; V. Criticism of Motivation-based Tests; VI. An Alternative Basis for Assessing Inventive Step; VII. Mixed Technical and Non-technical Features; VIII. Combinations of Prior Art Features; IX. Secondary Indicia; X. Case Comparison; XI. Towards Common Ground for the UPC; 10. Sufficiency; I. Statutory Basis; II. General Approaches of EPO and National Law; III. Biogen Insufficiency and Lundbeck-type Cases; IV. Functionally Defined, 'Reach-through' Claims; V. Biological Deposits; VI. Plausibility in the Context of Insufficiency; VII. Lack of Clarity; VIII. Towards Common Ground in the UPC; 11. Plausibility; I. Is Th ere 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; VIII. The Plausibility Threshold; IX. Further Questions; X. Towards Common Ground for the UPC; 12. Supplementary Protection Certificates; I. Statutory Basis; II. Conditions for Grant; III. Protected by a Basic Patent in Force; IV. Marketing Authorisations in the SPC Context; V. Term; VI. Medicinal Products for Paediatric Use; VII. Reform; VIII. Towards Common Ground for the UPC; 13. Patent Ownership, Dealings and Employee Inventors; I. Introduction; II. Ownership; III. Inventor Compensation; IV. Rights of Co-owners; V. Patent Dealings; VI. Effect of Transfer of Ownership on Licensee; VII. Compulsory Licences and Licences of Right; VIII. Patent Ownership, Dealings and Employee Inventors in the UPC; 14. Cross-border Actions in Europe; I. The Brussels Regulation; II. Cross-border Validity Actions; III. Cross-border Infringement Actions; IV. Cross-border Declarations of Non-infringement; V. Common Ground for the UPC; 15. The Impact of Brexit; I. Background; II. The Brexit Options; III. Brexit and Patents; IV. Brexit and Supplementary Protection Certificates