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

Explanatory Note and Acknowledgements Abbreviations Table of Cases Table of EU and International Material Table of National Materials Introduction I. Towards a ius commune of Patent Law II. The Purpose of this Book III. Outline of Chapters 1. The Skilled Person and their Common General Knowledge I. The Skilled Person or Team II. Common General Knowledge III. Towards Common Ground 2. Construction and 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. Forms of claim VIII. Numerical Ranges IX. Towards Common Ground 3. Direct Infringement I. Statutory Basis II. Liability III. Product claims (Article 25(a) CPC 1989) IV. Process claims (Article 26 CPC 1989) V. Products Made by an Infringing Process (Article 24(c) CPC 1989) VI. Processes for obtaining new products VII. Second Medical Use Claim Infringement VIII. Problems raised by purpose limited claims IX. Infringement of DNA Sequences X. Unjustified threats XI. Towards Common Ground 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. Staple Commercial Products V. Knowledge VI. Staple commercial products VII. Double Territoriality VIII. Extra-territoriality IX. Indirect Infringement of Second Medical Use Claims X. Other forms of contributory infringement XI. Towards Common Ground 5. Defences I. The Diverse Sources of Defence to Infringement II. The Experimental Use Exemption III. The Bolar Exemption IV. Other defences in the CPC 1989 V. Exhaustion VI. De minimis VII. Public interest compulsion and Crown use VIII. Invalidity and non-infringement of Claims Asserted IX. Euro-defences X. Prior Use XI. Innocent Infringement as a Defence to Damages XII. Towards Common Ground 6. Declarations I. General jurisdictional basis II. Declarations of non-infringement III. Declaration that patent is standard essential IV. Declarations concerning validity 7. FRAND I. Standards, SEPs and FRAND II. European Guidance III. General Principles of National Law V. Determining the FRAND royalty rate 8. Remedies I. Statutory Basis II. Preliminary Injunctions III. Damages for unjustified injunction IV. Effect of Protective Letter V. Quia Timet Injunction VI. Final Injunction VII. Publication of Judgment VIII. Affect of tested validity IX. Approach to costs X. Towards Common Ground 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. Towards Common Ground 10. Novelty I. Statutory Basis II. General Principles of EPO and National Case Law III. Disclosure and enablement IV. Interpreting Patent Claims and the Prior Art 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. First, Second and Subsequent Medical Uses X. Other Forms of Purpose-limited Claims XI. Claim Amendment XII. Towards a Common Approach 11. Inventive step I. Statutory Basis II. Date III. Determination of fact or law? IV. A technical or commercial question? V. The role of Common General Knowledge VI. The Approach of the EPO Boards VII. The Approaches of the National Courts 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. Towards Common Ground 12. Sufficiency I. Statutory Basis II. General Approaches of EPO and National Law III. Principle of general application IV. Forms of claim V. Inventive improvements / infringements VI. Enablement not meeting quality promised VII. Errors VIII. Biological Deposits IX. Plausibility in the Context of Insufficiency X. Lack of Clarity XI. Towards Common Ground 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 VIII. The Plausibility Threshold IX. Further Questions X. Towards Common Ground 14. Supplementary Protection Certificates I. Statutory Basis II. Plant Protection Regulation 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 Waiver XI. Towards Common Ground 15. 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. Public interest compulsion or Crown use IX. Patent Ownership, Dealings and Employee Inventors 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. Common Ground 17. Evidence I. General principles II. Burden of proof III. General obligations to produce evidence IV. Specific procedures for obtaining evidence V. Witness of fact evidence VI. Expert opinion evidence VII. Evidence as Applied to Construction VIII. Experiments IX. Letters rogatory (letters of request) and US 1782 X. Border seizures XI. Confidentiality XII. Privilege Appendices Appendix A: Extracts of EPC 2000 Appendix B: Extracts of the Community Patent Convention 1989 Appendix C: The SPC Regulation Appendix D: The Biotechnology Directive Appendix E: The Enforcement Directive Appendix F: The Unitary Patent Regulation Appendix G: Extracts of the Unified Patent Court Agreement Appendix H: Consolidated Version of the Paediatric Regulation Index