SONN Patentanwälte – IP Attorneys

UPC Local Division: Second Medical Use - Validity

To benefit from the deemed novelty under Article 54(5) EPC, claims for a second medical use must relate to a specific use in a method under Article 53(c) EPC. The only reason why such claims can be patentable lies in the novelty (and inventive step) of the new use. With regard to inventive step,...

UPC Local Division: Inventive Step

To assess whether an invention is to be considered obvious in view of the state of the art, the problem-solution approach developed by the EPO should be applied as a priority – as far as possible – in order to increase legal certainty and further align the case law of the UPC with that of the EPO...

Second medical use not limited to therapeutic indications

The requirement underlying the “specific use” within the meaning of Article 54(5) EPC, as expressly concluded by the Enlarged Board in decision G 2/08, is to be interpreted only in contrast to the broad, general protection conferred by the first claimed medical use of a substance or composition....

Violation of human dignity in human–animal chimeras

Human–animal chimeras and methods for their production are excluded from patentability under Article 53(a) EPC if the invention infringes human dignity. This is the case, for example, where the claimed subject-matter does not rule out that the human cells involved in a human/pig chimera integrate...

Violation of morality during the development of the invention

Even if the patentee’s conduct during the development of the invention were regarded as contrary to morality and public order (in the case at hand: research on traditional antimalarial remedies among the Indigenous population of French Guiana, alleged by the opponents to be unfair), this does not...

Workability with open-ended parameter ranges in a claim

Where the claimed invention contains a physical parameter having an open-ended range in one direction that cannot be reproduced on the basis of common general knowledge together with the rest of the invention, the range can still be regarded as reproducible over the whole claim breadth if the description...

The patentability of computer simulations before the European Patent Office

The computer simulation of physical processes has found its way into wide areas of the economy. The decision G 1/19 now clarified the question under which conditions such a simulation can be patented. An article...

Patent claims are allowed to be speculative to a certain extent

Claims in patent applications typically involve generalisations which inherently include an aspect of speculation. Patent applications in the field of medicine represent in this respect no exception. The approaches developed in the jurisprudence of the Boards of Appeal of the EPO for the assessment...

Computer-implemented simulations are patentable under certain conditions

In the context of assessing inventive step, a computer-implemented simulation of a technical system or process that is claimed as such can solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer. For that assessment it is not a sufficient...

Animal suffering not balanced by the benefit to mankind

It must be examined in each case whether the benefit of an invention to mankind is so great that it weighs up animal suffering caused in the production of the subject matter of the invention. The commercial exploitation of the invention of a pharmaceutical preparation is contrary to public policy...