This new edition is a comprehensive and practical guide to European patent law – a 'ius commune'. The book highlights the areas of consistency and difference between the most influential European patent law jurisdictions: the European Patent Office, England and Wales, France, Germany, and the Netherlands. The book also draws insights from further afield, with contributions from other, very active, patent jurisdictions, including Italy, Sweden, Denmark, and Switzerland.



Uniquely, the book addresses European patent law by subject matter area, assessing the key national and EPO approaches together rather than nation by nation. Each chapter outlines the common ground between the national approaches and provides a guide for the possible application of European patent law in national courts and the UPC in the future.



In addition to featuring content on new countries, the second edition includes new chapters dedicated to the substantive aspects of FRAND, declarations, and evidence. There is also an expanded commentary on construction, including common terms used in patent claims. A must-read for anyone working in the field of European patent law.

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