COMPULSORY LICENSE DECISION UPHELD BY GERMAN FEDERAL COURT OF JUSTICE
Compulsory licenses are really very rare! The German Federal Court of Justice (BGH) has now upheld the decision by the German Federal Patent Court (BPatG) granting Merck a license to Shionogi’s patent EP 1 422 218 B1 covering the HIV drug “Isentress”, as sold by Merck.
License negotiations had gone sour and Shionogi sued Merck for patent infringement (No. 4c O 48/15). This proceeding was stayed as there is an ongoing opposition/appeal at the EPO (T 1150/15) for which oral proceedings have been scheduled for October 2017. In the meantime, Merck requested a compulsory license which was, in a first instance, granted by the BPatG and now upheld by the BGH.
The “Frankurter Allgemeine Zeitung” was the first to report that the President of the Federal Republic of Germany has agreed to suspend the Presidential signature required for formal ratification of the UPC Agreement until the German Federal Constitutional Court has reached a decision concerning the ongoing expedited proceedings relating to the implemenation of the UPC (2 BVR 739/17).
A private person is challenging the validity of the German law and process implementing the UPC Agreement. One issue is likely to be that the Boards of Appeal at the EPO are not sufficiently independent from the European Patent Organization. In any case this issue will delay the UPC substantially just as BREXIT has cast a doubt on the starting point for the UPC.
A team of our firm CH KILGER is presently visiting clients and colleagues in Asia, making a business trip through Japan, Korea and China. The excellent relationships with our Asian colleagues are further enhanced while discussing legal issues in Europe and Asia. Our Latin America office is present with one partner attorney, Dott. Maria Marazzi.
CH KILGER Anwaltspartnerschaft mbB has been awarded the Lawyer International Global Award 2017 in the category ‘Law Firm of the Year’ in respect to Patent Litigation Law. The firm will be presented in this month’s special edition of the Lawyer International magazine. The Lawyer International is the premier guide to leading most prolific firms and individuals throughout the world.
UK TO RATIFY UNIFIED PATENT COURT AGREEMENT
One of the last steps towards the establishment of a single patent court for Europe, and with it the entire unitary patent regime, was taken on 28 November 2016. According to a statement by UK Minister for IP, Baroness Neville-Rolfe, at the EU Competitiveness Council in Brussels, the Agreement on the Unified Patent Court (UPC) will be ratified by the United Kingdom. Her clarification was welcomed by the European Commission, the EU Member States and the EPO and many in the IP community, following months of uncertainty after the UK voted to leave the EU on 23 June, 2016. It is still totally unclear how the UK will remain in the UPC system in a post Brexit world though as UPC members are required to be EU member states.
In the current issue of „Der Onkologe“, Dr. Christian Kilger discusses the concept of inventive step in the patenting of human genes and proteins.
In the 6th Symposium of the GERMAN DESK LATIN AMERICA organized by the German-Argentinian chamber of commerce in Berlin in Mai 2016, CH Kilger Anwaltspartnerschaft mbB put forward proposals for improving Intellectual Property Protection and consequently investment opportunities in Argentina. The former German President Christian Wulff, who also attended the conference, offered to bring these ideas to the attention of the delegation of President Ing. Mauricio Macri prior to his visit to Germany on July 5, 2016.
The current issue of “Der Onkologe“ displays an article by Dr. Christian Kilger concerning Supplementary Protection Certificates (SPC).
THE EPO HAS PUBLISHED ITS ANNUAL REPORT FOR 2015
The 6th “German desk Latinamerica” Symposium will be held from the 11-13th May 2016, at the Spanish Embassy in Berlin, Germany. Focus of the conference are investment incentives and businesses with Latin America. The symposium will bring together attorneys, auditors and notaries to discuss success factors and best practices for the main growing Latin American markets. CHKilger Anwaltspartnerschaft will be represented by Dr. Christian Kilger, who will give a talk on “Patents in a global knowledge society”.
In recent weeks, reforms of the EU-trademark system were adopted. This will make the trademark system in Europe more „effective, efficient and coherent and to adapt it to the age of the Internet“.
The analysis of the patentability of medical devices with a new medical use authored by Dr. Christian Kilger and his colleagues Dr. Markus Meyer and Dr. Alexander Albrecht is published in the February 2016 edition of the journal GRUR Int.
“Patentability of Known Medical Devices with a New Medical Use – Case Law of the European Patent Office”
Is a medical device with a new medical use patentable before the European Patent Office (EPO)? In some cases it is. But when? A new and inventive device is clearly patentable. When the device per se is known, but the medical indication for which it is applied is new, the issue becomes more complicated. The article provides an overview of the evolution of case law relating to the patentability of devices with a new medical use and an attempt to formulate the criteria that devices need to fulfil in order to benefit from novelty of their new medicaluse.
Protective writs are preventative statements of defense against anticipated preliminary injunctions. With such writs, the putative respondent seeks to ensure that the injunction is refused, or at the very least to prevent the request from being granted without oral proceedings. The protective writ is widely used in patent proceedings. If a patent has recently been granted, there is often a risk that the patent proprietor will quickly seek to obstruct its competitors by means of an preliminary injunction. Protective writs are also often used if a foreign company is a new entrant into the German market and fears that its entry onto the market could provoke a preliminary injunction. Hitherto, protective writs have not been codified in statute. As of January 2016 that will be the case including a central register.
CH KILGER Anwaltspartnerschaft mbB will be listed in the 2016 Global Law Experts Guide (GLE) for the filing of Patent Litigation. GLE is the premier guide to leading legal professionals throughout the world.
Dr. Siegfried Schreiner joins CH KILGER Anwaltspartnerschaft mbB
Dr. Siegfried Schreiner studied chemistry with an emphasis on biochemistry and physical chemistry and completed his PhD in investigating mechanisms of biochemical compounds. In 1976 he joined Boehringer Mannheim GmbH (later Roche Diagnostics GmbH) and started his career as project manager for devices for test strip analysis, urinanalysis and photometric lab analysis. In 1979 Dr. Schreiner switched to the patent department of Boehringer Mannheim GmbH. His first areas of activity included remuneration according to German inventor’s law and biotech inventions. He passed the European Qualifying Exam in 1983 and moved to the facilities of Roche in upper Bavaria, where he built up the patent department and was head of for about 30 years. He trained successfully several candidates for Exam.
Dr. Schreiner is well experienced in all patent matters of diagnostics and pharmaceuticals in the fields of oncology, neuroscience, infectious diseases and immunology as well as in vitro diagnostics and bioscience reagents. He is especially experienced in the field of therapeutic antibodies. Dr. Schreiner’s practice involves work in the field of patent filing and prosecution, oppositions and appeals before the European Patent Office.
His exceptional career working for Roche included cases such as Genentech I and II, Riggs-Itakura (recombinant expression in bacteria), Cabilly and Boss (chimeric antibodies) G-CSF or Erythropoietin (EPO). Moreover, Dr. Schreiner was responsible for the Boehringer Mannheim litigation in the tPA case against Genentech.
He is further experienced in licensing matters, due diligence issues and patent litigation in Europe and USA. More recently Dr. Schreiner takes care of patent matters and strategy for various biotech entities.
CH KILGER Anwaltspartnerschaft mbB expands Team and Competences – Dr. Xavier Luria former Head of Safety and Efficacy of Medicines at the European Medicines Agency (EMA) joins Team.
The top tier IP boutique CH KILGER specializes in the life science field. In order to meet a growing demand for expert advice in the filed of drug development and drug regulation we have decided to expand our team by former Head of Safety and Efficacy of Medicines at the European Medicines Agency (EMA), Dr. Xavier Luria.
We are proud to be able to offer to our clients and colleagues this expertise in the field of drug development and drug regulation.
RIO DE JANEIRO BRASIL – CH Kilger Anwaltspartnerschaft, will take part in the Latin American Bio Conference to be held in Rio de Janeiro from October 14 to October 16, 2015. Dr. Kilger will giving a talk in the patent session. If you would like to arrange a meeting please contact: MARAZZI@CH-K.EU.
Poisonous priority applications sent to Enlarged Board of Appeal (T 557/13)
CH KILGER Anwaltspartnerschaft was registered in the German-Argentinian Chamber of Industry and Commerce. Deutsch Argentinische Kammer
BUENOS AIRES ARGENTINA – CH Kilger Anwaltspartnerschaft, Consejo Nacional de Investigaciones Científicas y Técnicas (CONICET) and the German-Argentine Chamber of Commerce organize International Conference on “PROTECTING YOUR INVENTIONS, TRADEMARKS AND DESIGNS IN EUROPE AND SOUTH AMERICA”. INTERNATIONAL CONFERENCE BUENOS AIRES ARGENTINA
DR. Christian Kilger and his colleagues Dr. Alexander Albrecht and Dr. Markus Meyer publish in GRUR International January 2015 on the patentability of inventions relating to personalized medicine – Medical advances are transforming the patentability requirements for small molecules and biologicals. After initially being banned, protection for chemical substances and compounds used in medicine was allowed first in Germany and later before the European Patent Office (EPO). Today, a second or further medicinal indication may be claimed in form of a purpose-limited substance claim potentially giving rise to various dependent patents. However, the case law regarding these compounds is evolving, due to a fundamental shift in medical practice. GRURInt_2015_01
CH Kilger Anwaltspartnerschaft opens its office in Buenos Aires.
‘IP Leadership Forum’ which will be held on January 7–8, 2014 at Le Meridien New Delhi – the capital of India. The theme for the conference is “IP Challenges in Today’s Turbulent Environment”. This two-day Conference will focus on recent developments in Intellectual Property. Speakers will include Dr. Christian Kilger.
Dr. Christian Kilger teaches patent law at the Technical University of Dresden on Sept. 3, 2013. The Medical Faculty at the Elite University TU Dresden, organizer of the International Summer School on Technology Transfer, is deeply embedded in a broad and interdisciplinary network for biomedical research. Its research groups follow a translational and interdisciplinary approach. Fanelli Haag & Kilger assist these groups in providing for European and US patent expertise.
EU Patent – Spain brings suit before the Court of Justice
Spain has brought two last minute actions before the Court of Justice (Cases C-146/13 and C-147/13) against Regulations 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements (OJ 2012, L 361/89). There is no parallel action against the Regulations to be expected from Italy, which already signed the Agreement on a Unified Patent Court. It could well be that these actions torpedo the EU plans to grant the first EU patent in 2014.
Dr. Christian Kilger will be a speaker at the 2nd C5 Forum on Pharma & Biotech Collaborations on May 14, 2013, in Frankfurt, Germany.