A Practitioner's Guide to European Patent Law

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 addresses European patent law by subject matter area, assessing the key national and EPO approaches together rather than in nation-by-nation chapters; and provides an outline in each chapter of the common ground between the national approaches, as a guide for the possible application of European patent law in the UPC.

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

“What is genuinely European in European Patent Law? Is there a common set of rules or understandings related to topics such as indirect infringement, equivalents, exhaustion, damages and joint ownership? To say that answering these questions in one book is challenging would be grossly underestimating the task. Paul England (with the assistance of Sara Burghart [Munich], Judith Krens [Amsterdam] and François Pochart [Paris]) took up the challenge and certainly has met, if not exceeded, the high expectations created by the book's title... a useful reference to litigators, patent attorneys and in-house counsels throughout Europe.” –  Peter Ling, The IPKat