PHARMACEUTICAL IP

Chemistry

The chemical sciences underpin an array of innovations, from novel materials to advanced synthetic methodologies. Chemistry innovations are at the forefront of developing solutions to challenges our society faces today.

At Evolve, our team can support you, providing expert advice across technologies such as agrochemicals, cosmetics, nanomaterials and green- and clean-tech. We will work with you to develop IP strategies that create valuable IP portfolios protecting your important innovations.

Sector insights...

The problem with product-by-process patents (T 1065/23)

Inventions may be defined in a patent as product, a process, or a product defined by the process that it is made. The choice of patent claim format you choose to define the invention can be highly influential to validity and enforcement later on.

Non-reproducible commercial products are prior art (G1/23)

Is your product prior art if you disclose it before you file your patent, but without disclosing how it is made or what it is made from? The EBA answers “yes”.

Excluding a technical feature is not inventive without evidence of a technical effect (T 1865/22)

The recent Board of Appeal decision in T 1865/22 considered the inventive step of a composition where the only distinguishing feature was a lower concentration of a component compared to the closest prior art. The prior art taught that higher concentrations of this component were advantageous. The Board of Appeal found that simply excluding a technical feature disclosed…

To infinity and beyond! The sufficiency requirements for open-ended ranges (T 1977/22)

The recent Board of Appeal decision in T 1977/22 related to the patentability of claims defining subject matter with open-ended parameter ranges. The question before the Board of Appeal was whether a claimed open range, and its numerically infinite scope, could ever be said to be sufficiently disclosed (Article 83 EPC). The Board of Appeal rejected the argument…

The UPC’s first decision on infringement by equivalence (Plant-e v Bioo, UPC_CFI_239/2023)

In Plant-e v Bioo the UPC provided its first decision addressing the doctrine of equivalents in patent infringement proceedings (UPC_CFI_239/2023). The Local Division of the Hague set out a novel four-part test for assessing equivalence drawn from various national jurisdictions. The test appears relatively patentee-friendly, with the Local Division finding infringement of the claims despite the alleged infringement lacking…

A more nuanced approach to the evidence standard for prior use (T 1311/21)

The EPO provides crucial guidance on the standard of proof in alleged prior use cases, advocating for a nuanced approach.

Gold Standard test for novelty reigns supreme, even for subranges (T 1688/20)

The EPO confirms that the selection of a subrange within a known broader range, is a patentable invention.

How do you determine the novelty of a second (non-medical) use claim? (T 1395/15)

At Evolve we are used to discussing the patentability of second-medical use inventions. But what about non-medical second uses? The recently published Board of Appeal decision T 1385/15 related to the patentability of such a second use. According to case law from the Enlarged Board of Appeal (EBA), a second use of a known product is novel if…

New EBA referral: When is prior use of a product excluded from the prior art for lack of enablement?

There has been a new referral to the Enlarged Board of Appeal (EBA). This first referral of 2023 seeks clarification on the enablement test for prior use of a product. The referral particularly asks whether the non-enabling prior use of a product excludes the composition of the product from the prior art or whether it also excludes…

Boards of Appeal back rejection of special criteria for the novelty of purity inventions, but the Guidelines remain out of step (T 0043/18)

The EPO clarifies the criteria for the patentability of inventions based on the achievement of a higher chemical purity.
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