McDonnell Boehnen Hulbert & Berghoff LLP (JD Supra European Union)

42 results for McDonnell Boehnen Hulbert & Berghoff LLP (JD Supra European Union)

  • Broad Institute Loses Appeal in European Patent Office, Patents Remain Revoked

    Earlier this year, and almost one year to the day (January 17, 2019) that the Opposition Division (OD) of the European Patent Office revoked in its entirety European Patent No. EP 2771468, the Technical Board of Appeal affirmed the revocation (after suggesting it would refer some of the Broad's questions and challenges to the OD's decision to the Enlarged Board of Appeal).  A little more than ten

  • Broad Institute Patents Remain Revoked in Europe

    Last January 17th, the Opposition Division (OD) of the European Patent Office revoked in its entirety European Patent No. EP 2771468, which named as Proprietors The Broad Institute, MIT, and Harvard College and had been opposed by Novozymes A/S, CRISPR Therapeutics GG, and several strawmen).  Almost one year later to the day, the Technical Board of Appeal affirmed the revocation (after suggesting

  • The PTAB Goes to Europe: Four Recent Section 101 Decisions Designated as Informative

    On July 1, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) designated four of its recent 35 U.S.C. § 101 decisions as informative.  Each of these decisions came down after and applied the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance.  Two resulted in claims being found eligible, and two had the opposite outcome.  While not binding on...

  • News from Abroad -- Double Patenting: Will Prohibition End at Last?

    The approach of the European Patent Office (EPO) to prohibition of double patenting is well established and may, at a first glance, also seem well founded. Originally published in D Young & Co. on June 1, 2019.

  • EPO Releases Patentability Guidance for AI-based Applications - EPO Becomes First Authority to Release Guidance Specific to Eligibility of AI/ML

    Artificial intelligence (AI) and machine learning (ML) are specifically addressed in new draft Guidelines for Examination (Guidance) released earlier this month from the European Patent Office (EPO). The Guidance includes two new patentability-related subsections directed to 1) AI/ML; and 2) simulation, design or modeling.

  • News from Abroad: Antibodies in the European Patent Office -- Advanced Guide to Drafting and Prosecution

    The European Patent Office (EPO) applies the same basic patentability criteria to antibodies as to other inventions, but it can sometimes appear that antibodies are treated as a special case. Originally published in J A Kemp on June 10, 2018.

  • News from Abroad: EPO Guidance on the Therapeutic Methods Exclusion

    The therapeutic methods exclusion is often problematic to navigate. In T 0699/12, the Technical Board of Appeal (TBA) of the European Patent Office (EPO) has provided some useful guidance on its application. In an opposition before the Opposition Division, the division held that the patent in suit (which was for a method for performing in vivo dosimetry) was invalid pursuant to Art 53(c) of the

  • News from Abroad -- Disclaimers: Door Remains Open for Undisclosed Disclaimers at European Patent Office

    The Enlarged Board of Appeal has now released its written decision in respect of G 1/16 (T 0437/14). This decision resolves the question regarding which standard is to be applied to determine whether an "undisclosed disclaimer" in a patent claim introduces added subject-matter (that is, it contravenes Article 123(2) EPC). Originally published on D Young & Co. on March 14, 2018.

  • News from Abroad -- Briefing on Supplementary Protection Certificates for Medicinal Products

    What are SPCs? A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation. Originally published in J A Kemp on August 10, 2017.

  • News from Abroad -- EPO Applies Doctrine of Plausibility to Small Molecule Pharmaceuticals

    In Decision T 488/16, the Boards of Appeal of the European Patent Office (BoA) have revoked EP 1 169 038, which protected the blockbuster protein tyrosine kinase (PTK) inhibitor dasatinib (Sprycel®). The only request on file -- a single claim directed to dasatinib per se or a salt thereof -- was found to lack inventive step in view of the absence of evidence in the application as filed (and the...

  • News from Abroad -- EPO Lifts Stays of Proceedings Following Implementation of New Plant Patent-Eligibility Rules

    On 3 July, the European Patent Office (EPO) lifted its stays of proceedings on cases that had been held in abeyance pending new rules on the patent-eligibility of plant-related subject matter. Following an intervention by the European Commission in November 2016, as of December 2016 the EPO had stayed the prosecution of a number of plant-related applications pending a possible rule change. The...

  • News from Abroad: Revised Provisional Timetable for the Unitary Patent and Unified Patent Court

    The Preparatory Committee of the UPC has published a revised timetable for the final stages of preparations for the opening of the Unified Patent Court (UPC). The revised timetable indicates that the Sunrise Period during which existing European Patents can be opted out of the jurisdiction of the UPC could start in September 2017 and the UPC could start accepting cases in December 2017 when the...

  • News from Abroad: Antibodies in the European Patent Office

    The European Patent Office (EPO) continues to grant many patents relating to antibodies, and in doing so applies the same patentability criteria as to other inventions. However, some commentators have suggested that antibodies are regarded as a special case by the EPO when evaluating inventive step / obviousness. It is implied that the EPO sets a higher patentability threshold for inventions in

  • Trade Secrets in the Spotlight Again: the EU Directive

    May 2016 was a banner month for trade secret protection around the world. On May 11, 2016, President Obama signed the Defend Trade Secrets Act of 2016 (“DTSA”) into US law, creating a new Federal cause of action for misappropriation of trade secrets. And on May 26, 2016, the European Council formally adopted the “Directive on the protection of undisclosed know-how and business information (trade...

  • Changes to Trademark Registration in the European Union

    On March 23, 2016, new rules came into effect substantially amending the Community trademark system in the European Union (the “amended Regulations”). Below we discuss a number of points potentially relevant to U.S. brand owners, including (1) changes in terminology, (2) changes in fees, and, perhaps most important, (3) potential changes to the scope of protection of existing trademark...

  • News from Abroad: The UPC: to Opt Out or Not to Opt Out, That Is the Question

    Did you know that in the Unified Patent Court (UPC) a patentee will be able to get an injunction covering a market much bigger than the entire USA, in a procedure that lasts no longer than a year, at a hearing which lasts a day, by Judges who will largely be without the benefit of expert testimony or discovery? And if it all goes badly wrong a patentee could lose its patent for almost the whole...

  • News from Abroad: Ariosa Diagnostics V Sequenom and Isis Innovation -- A European View

    The June 12, 2015 decision of the Federal Circuit in the above case has been discussed by Kevin Noonan in his posting of 22 June, but it is believed that the factual and legal background could benefit from further discussion.

  • Some Human Embryonic Stem Cells Are Once Again Patent-eligible in Europe

    Last Thursday, the European Court of Justice rendered a decision in International Stem Cell (ISCO) Corporation v. Comptroller General of Patents, Designs and Trademarks (UK) that significantly modified the landscape for human embryonic stem cell (hESC) patenting, by holding that prohibitions against patents on hESCs only apply to such cells derived from embryos that had the potential to develop...

  • News from Abroad: Double Patenting at the EPO -- What Does "Same Subject Matter" Mean?

    Although the EPC does not specifically prohibit double patenting, that is the grant of two patents to the same applicant for the same invention, it is generally accepted that two patents cannot be granted to the same applicant for the same subject matter. However, what is meant by "the same subject matter" has in the past caused some confusion as it too is not defined by the EPC. A recent case...

  • News from Abroad: Are Multiple SPCs per Patent Allowed?

    Historically, it was widely thought that it was possible to obtain a separate supplementary protection certificates (SPC) for each product covered by a patent. However, in its judgment in Medeva in 2011, the Court of Justice of the European Union (CJEU) held that where a patent protects a product, only one SPC may be granted per patent. This judgement caused uncertainty and controversy...

  • News from Abroad: EPO Clarifies Extent to which Methods Involving Use of Human Embryos Are Excluded from Patentability

    Generally, the European Patent Office does not allow claims to methods involving the use of human embryos for industrial or commercial purposes. It was therefore perhaps not surprising that the Examiner objected to the claims of EP 05028411.6, which related to a method for obtaining pluripotent embryonic stem cells from an embryo. In defence of the claims, the applicant argued that, since the...

  • News from Abroad: Is an Emergency Marketing Authorisation Valid Basis for an SPC Application for a Plant Protection Product?

    The Court of Justice of the European Union (CJEU) has recently ruled that an emergency Marketing Authorisation (MA) for a plant protection product does not provide a valid basis for an SPC for that plant protection product.

  • News from Abroad: The Patents Court Considers the Appropriate Scope for Cross-Undertakings

    Actavis v Boehringer [2013] EWHC 2927 related to a dispute over the combination of telmisartan and hydrochlorothiazide, which was marketed by Boehringer and protected by an SPC. Actavis wanted to sell the combination product and believed the SPC to be invalid, but agreed to give an interim undertaking not to sell the combination product, pending the resolution of the dispute. In return,...

  • News from Abroad: EPO to Rescind Deadline for Filing Divisional Patent Applications

    Our colleagues at J.A. Kemp in the United Kingdom have advised us that they have received advance notice that the administrative council of the European Patent Office (EPO) has voted to amend Rule 36 EPC to remove the controversial 24-month time limit within which European divisional applications may be filed. The sole criterion set forth in amended Rule 36(1) EPC will be that the application to

  • News from Abroad: EPO Proposal Would Remove Time Limit for Divisional Filing

    Our August 2013 News item: "EPO divisional deadline U-turn in the offing..." seems prescient. We now learn that the EPO has made formal proposals to remove the current two-year time limit for filing divisionals. Originally published in Forresters on September 15, 2013.

  • News from Abroad: Second Referral for the "Broccoli" Patent Case to the Enlarged Board of Appeal

    Following the issuance of decision G2/07 in connection with the "Broccoli" patent, which discussed whether plant breeding methods were excluded from patentability as essentially biological processes for the production of plants, the Technical Board of Appeal in proceedings T83/05 have now referred further questions to the Enlarged Board of Appeal, relating to whether the exclusion of Article 53(b)

  • News from Abroad: Court of Appeal Refers Questions on Specific Mechanism to Court of Justice of European Union

    Merck Canada Inc and Merck Sharp & Dohme Ltd v Sigma Pharmaceuticals plc - Prior to their accession to the European Patent Convention, several states did not allow patent protection for pharmaceutical products. To address this, a special derogation known as "The Specific Mechanism" was put in place. This Specific Mechanism allows the holder of a patent or a supplementary protection...

  • News from Abroad: Patentees Denied Opportunity to Correct European Patent Text After Grant

    Originally published in Forresters on March 1, 2013. Background - Rule 140 EPC does not explicitly relate to the correction of patents, but to the correction of EPO decisions. However, until now, the European Patent Office (EPO) has allowed patentees to correct the text of a Patent after grant using Rule 140 EPC.

  • Member States Sign Agreement to Establish Unified Patent Court

    On Tuesday, the Council of the European Union announced that twenty-four member states had signed the international agreement that would establish a Unified Patent Court (UPC), a specialized court having exclusive jurisdiction over infringement and validity questions related to unitary patents. The Council release noted that Bulgaria was expected to sign the agreement in the coming days and that

  • News from Abroad: Parliament Approves EU Unitary Patent Package - December 17, 2012

    Originally published in the European Patent Attorneys at WP Thompson & Co. on December 17, 2012. A unitary patent package covering 25 member states of the EU (Italy & Spain are not currently taking part) may finally be realised after approval of a new EU patent regime by the EU parliament. In three separate voting sessions relating to a European unitary patent, a language regime and a...

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