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CHEMICAL INVENTIONS IN FRANCE

CHEMICAL INVENTIONS IN FRANCE. Recent decisions and case law Dr Denis Schertenleib Avocat & Solicitor Partner Hirsch & Associés Paris France ds@hirschlex.com. Recent decisions. Inventive step – obviousness to try Inventive step – technical problem solved Added matter .

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CHEMICAL INVENTIONS IN FRANCE

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  1. CHEMICAL INVENTIONS IN FRANCE Recent decisions and case law Dr Denis Schertenleib Avocat & Solicitor Partner Hirsch & Associés Paris France ds@hirschlex.com

  2. Recent decisions • Inventive step – obviousness to try • Inventive step – technical problem solved • Added matter HIRSCH & PARTNERS

  3. 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

  4. 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

  5. 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

  6. 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

  7. 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

  8. 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

  9. 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

  10. 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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