Seminar - Patent Law

Date and Time:24 September 10.00 (arrival and coffee 09.00-10.00)
Location:DSM Delft
Maximum participants:40

Registration via WON secretary.
Registration for non-members opens 10 September.

Participant list will be filled in the following order:

Participation is free, however, registration obliges to participation. Number 41 on the list will be disappointed to hear there were empty seats.

AGENDA

  1. 10.00
    Priority and Prior rights
    Detailed analysis of the various possibilities and impossibilities for claiming priority under EPC and national patent laws. Further, the prior art effect of unpublished patent applications in conjunction with priority claims and the effects of EPC2000, will be discussed.
  2. coffee break
  3. Priority/prior rights case
    Discussion and solution of case that has been prepared by attendants.
  4. Novelty
    The aspects of novelty under the EPC that are important for patent information specialists.
  5. 12.30-13.30
    Lunch
  6. Patentability
    Exclusions to patentability. First and second medical use. Selection inventions.
  7. Tea break
  8. Patentability case
    Discussion and solution of case that has been prepared by attendants.
  9. Issues with the Enlarged Board of Appeal
    Several issue on patentability are now before the Enlarged Board of Appeal. These and the possible consequences of the upcoming decisions will be discussed.
  10. 16.00
    end

The Cases

Priority/prior rights case

On 5 January 1997 a European (priority) patent application EP-P (designating DE, FR, GB and NL) was filed covering subject matter A and B. A subsequent PCT application, claiming priority from this EP application, was filed on 4 January 1998, claiming and disclosing A and the combination of A and B (A+B). Publication date of this application was 6 July 1998. When the PCT application was converted into a European patent application EP-Q, designating all EPC countries, the supplementary search report mentioned the following prior art:
a. a US patent with a filing date of 12 December 1996 and a publication date of 8 June 1998 disclosing A, B and A+B
b. a European patent application (EP-A) designating GB, FR, IT and ES filed 10 December 1995 and published 6 June 1997 claiming and disclosing subject matter B.
c. a French national patent application, filed 6 June 1998 and published 20 December 1998 disclosing subject matter A, claiming priority from a European patent application (EP-B) dated 6 June 1997, disclosing A, B and A+B.
d. a European patent application EP-C designating DE, DK and GB filed 3 January 1998 and published 20 July 1998, disclosing subject matter A+B. This application claimed the priority of a US application that only disclosed B.
e. An internet page (retrieval date 6 November 1999) which stated that subject A was available for sale in 1996.

Which of these documents are truly novelty destroying, and why? Is it possible to still obtain a valid European patent and, if so, what will be the claimable subject matter? Will any of the above mentioned patents or patent applications (a-d) be able to claim any of the subject matter? What would change if all dates were 10 years later (i.e. if the filing date of EP-Q would fall under EPC2000)?

Patentability case

In the prior art it is known that a certain compound A can be used as a growth enhancer for plants. You now have found that this compound can also be used as a medicament for treating fungal infections in humans. Further, you found that this compound can also be used as a fungicide in plants. Which of the following claims would be deemed to be patentable in a European patent application and why (not)?
1. Compound A.
2. Compound A for use as a medicament.
3. Compound A for use as a fungicide.
4. Use of compound A for the treatment of fungal infections in humans.
5. Use of compound A as a fungicide in plants.
6. Method for treating a fungal infection in a human being by administration of compound A.
7. Method for combating fungal infection in plants by treating plants with compound A.
8. Use of compound A for the manufacture of a medicine for treating fungal infections.

Bart van Weezenbeek

Bart is a Dutch and European patent attorney. He started his professional career as zoological technician with the pharmaceutical company of Organon in Oss. While working, he studied biology at the University of Utrecht (majoring in microbiology and neuropharmacology). In 1988 he joined the Library group of Organon as patent literature searcher and completed the (old) GO literature searcher course. In 1990 he joined the patent department of Organon where he trained to become patent attorney. In 1994 he was registered both as Dutch and as European patent attorney.
From 1988-1993 he studied Dutch Civil Law at the University of Tilburg, specializing in intellectual property and Anglo-American law.
In 1994 he became patent attorney at the small plant biotechnological company MOGEN, where he also acted as company lawyer, after passing the post-doctoral course for company lawyer. When the activities at MOGEN were terminated in 2002 he switched jobs to Vereenigde, where he now is senior associate.

Since 2001 he is deputy justice with the Appeal Court of The Hague. He is an active member of the Dutch Orde van Octrooigemachtigden, where he is member of the juridical commission, member of the PR commission and vice-president of the Disciplinary Council. For the epi he sits on the patent documentation committee en on 1 January 2009 he was appointed as member of the Disciplinary Board of Appeal.

He organizes and is tutor of the CEIPI course in The Hague (training for the EQE) and he is teaching patent law at the post-doctoral course for company lawyers and since 2007 at the GO course for patent information specialists.