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

Explanatory Note on the Second Edition and Acknowledgements
Contents
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
1. The Skilled Person and their Common General Knowledge
	I. The Skilled Person or Team
	II. Common General Knowledge
	III. Key Issues for the UPC
2. 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 a 'Formstein Defence'
	V. The Role of the Prosecution File
	VI. Particular Terms and Forms of Claim
	VII. Numerical Ranges
	VIII. Case Comparison – The Pemetrexed Decisions
	IX. Key Issues for the UPC
3. Direct Infringement
	I. Statutory Basis
	II. Liability
	III. Territoriality
	IV. Product Claims (Article 25(a) CPC 1989)
	V. Process Claims (Article 25(b) CPC 1989)
	VI. Products Made by an Infringing Process (Article 25(c) CPC 1989)
	VII. Processes for Obtaining New Products
	VIII. Second Medical Use Claim Infringement
	IX. Infringement of DNA Sequences
	X. Unjustified Threats
	XI. Key Issues for the UPC
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. Knowledge
	V. Staple Commercial Products
	VI. Double-territoriality
	VII. Indirect Infringement of Swiss Form Claims
	VIII. Indirect Infringement of EPC 2000 Claims
	IX. Other Forms of Contributory Infringement
	X. Key Issues for the UPC
5. General Defences
	I. The Diverse Sources of Defence to Infringement
	II. The Experimental Use Exemption
	III. The Bolar Exemption
	IV. Other Statutory Defences
	V. Exhaustion
	VI. De minimis
	VII. Public Interest Compulsion and Crown Use
	VIII. Invalidity and Non-Infringement of Claims Asserted
	IX. Issue Estoppel
	X. FRAND Licence Objection
	XI. Prior Use (Article 37 CPC 1989)
	XII. Innocent Infringement as a Defence to Damages
	XIII. Key Issues for the UPC
6. Declarations
	I. General Jurisdictional Basis
	II. Declarations of Non-Infringement
	III. Declarations that a Patent is Standard Essential
	IV. Declarations Concerning Validity
	V. Key Issues for the UPC
7. FRAND
	I. Standards, SEPs and FRAND
	II. Guidance at the European Level
	III. General Principles of National Law
	IV. Determining the FRAND Rate
	V. Anti-Suit Injunctions (ASIs) and Anti-Anti-Suit Injunctions (AASIs)
	VI. Key Issues for the UPC
8. Remedies
	I. Statutory Basis
	II. Preliminary Injunctions
	III. Damages for Unjustified Injunction
	IV. Protective Letters
	V. Quia Timet Injunction
	VI. Final Injunction
	VII. Springboard Relief
	VIII. Award of Damages
	IX. Account of Profits
	X. Recall, Removing from the Channels of Commerce and Destruction
	XI. Publication of Judgment
	XII. Effect of Tested Validity
	XIII. Substantive Treatment of Costs
	XIV. Key Issues for the UPC
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. Key Issues for the UPC
10. Novelty
	I. Statutory Basis
	II. General Principles of EPO and National Case Law
	III. Treatment of 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. Second and Subsequent Medical Uses
	X. Other Forms of Purpose-limited Claims
	XI. Claim Amendment
	XII. Key Issues for the UPC
11. Inventive Step
	I. Statutory Basis
	II. Date
	III. Determination of Fact or Law?
	IV. Technical or Commercial Question?
	V. The Role of Common General Knowledge
	VI. Structured Approaches to Inventive Step
	VII. Motivation Based Approaches
	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. Case Comparison (Tadalafil)
	XV. Key Issues for the UPC
12. Sufficiency
	I. Statutory Basis
	II. General Approaches of EPO and National Law
	III. Principle of General Application
	V. Forms of Claim
	VI. Inventive Improvements / Infringements
	VII. Promised Quality not Enabled and Errors
	VIII. Deposits of Biological Material
	IX. Plausibility in the Context of Insufficiency
	X. Lack of Clarity
	XI. Key Issues for the UPC
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 and ab-initio Plausibility
	VIII. The Plausibility Threshold
	IX. Further Questions
	X. Key Issues for the UPC
14. Supplementary Protection Certificates
	I. Statutory Basis
	II. Certificates for Plant Protection Products
	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. Key Issues for the UPC and the Need for Reform
15. Patent Ownership, Dealings and Employee Inventors
	I. Introduction
	II. Ownership
	III. Approaches to Inventor Compensation
	IV. Rights of Co-owners
	V. Patent Dealings
	VI. Effect of Transfer of Ownership on Licensee
	VII. Compulsory Licences
	VIII. Public Interest Compulsion
	IX. Unitary Patents as 'Objects of Property'
16. Cross-border Actions in Europe
	I. Relation between National and EPO Proceedings
	II. The Brussels Regulation
	IV. Cross-border Infringement Actions
	VI. Key Issues for the UPC
	V. Cross-border Declarations of Non-infringement
17. Evidence
	I. General Principles
	II. Burden of Proof
	III. General Obligations to Produce Evidence
	IV. Specific Means for Obtaining Evidence
	V. Role of Witness of Fact Evidence
	VI. Opinion Evidence
	VII. Experiments
	VIII. Letters Rogatory (Letters of Request) and US 1782
	IX. Border Seizures
	X. Confidentiality
	XI. Privilege
	XII. Key Issues for the UPC
Index