Chemical inventions in france
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CHEMICAL INVENTIONS IN FRANCE. Recent decisions and case law Dr Denis Schertenleib Avocat & Solicitor Partner Hirsch & Associés Paris France [email protected] Recent decisions. Inventive step – obviousness to try Inventive step – technical problem solved Added matter .

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Chemical inventions in france l.jpg

CHEMICAL INVENTIONS IN FRANCE

Recent decisions and case law

Dr Denis Schertenleib

Avocat & Solicitor

Partner Hirsch & Associés

Paris France

[email protected]


Recent decisions l.jpg
Recent decisions

  • Inventive step – obviousness to try

  • Inventive step – technical problem solved

  • Added matter

HIRSCH & PARTNERS


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Solvay v DuPont

  • High Court of Paris, 1 July 2008. Patentee had identified unexpectedly efficient fire-extinguishing compositions.

  • Obvious to try where:

    • The prior art prompts the skilled worker to try out a compound in the search for improved properties.

    • The prompt can be the need to comply with new regulations (e.g. pollution).

  • Notwithstanding unexpected potency is identified through experiments.

    • Improvement can be merely a “bonus” effect.

HIRSCH & PARTNERS


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Merck v Teva Arrow & EG Labo v Merck

  • Two separate judgments of the High Court of Paris on FOSAMAX rendered on February 2008.

  • No inventive step involved in a patent on the therapeutic use of a compound if the compound was part of a shortlist of compounds worth investigating.

  • Notwithstanding that the compound may have had an unexpected therapeutic efficiency.

    • Improvement was merely a “bonus” effect, which cannot confer patentability on obvious solutions.

HIRSCH & PARTNERS


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Inventive step – the technical problem solved

  • The approach of French Courts is objective.

  • The patentee’s subjective solved technical problem is not essential.

  • The technical problem is based on the most relevant prior art, but needs to be disclosed in the description.

HIRSCH & PARTNERS


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The disclosure of the technical problem solved

  • Kverneland v Exel, 21 March 2008, Paris Court of Appeal & Cobra v Morito, High Court of Paris 30 March 2007.

  • Patentee sought to rely on an integer of the claim that resulted in a technical effect that was never described in the patent.

  • A technical feature of a claim can contribute to inventive step only if it has an associated technical effect that is disclosed in the patent.

HIRSCH & PARTNERS


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Technical problem - tips

  • Need to specify in the description the technical effects / advantages achieved by the invention.

  • Need to specify in the description the technical effect of each of the integers of the claims.

HIRSCH & PARTNERS


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Added Matter

  • Art 123(2) of the European Patent Convention. Ground for revocation.

  • DSSI v European Central Bank, Paris High Court, 9 January 2008.

    • The claims must be derived from the application as filed “directly and without ambiguity”.

    • Test is not of obviousness to the skilled worker.

    • Cannot combine different parts of the description “artificially”.

    • Limitations to the claims can also be added matter.

HIRSCH & PARTNERS


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Added matter - tips

  • Need to take great care when reformulating claims.

  • Critical times:

    • Upon entry into Euro PCT when removing multiple independent claims.

    • Limitation during prosecution (especially based on ranges, parameters and specific examples).

    • Reformulation for the purpose of clarity.

HIRSCH & PARTNERS


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Conclusion

  • Obviousness to try is now a strong sign of lack of inventive step. The invention will not be inventive if:

    • it results from an « obvious to try » course of experiments

    • even if improved properties are discovered, these being a « bonus effect » of the obvious experiments.

  • It is essential to describe the advantages of the invention in the description.

  • French decisions are now compliant with EPO’s strict case law on added matter.

HIRSCH & PARTNERS


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