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June 18, 2014

Comments

All very sensible. However EP practice does not include terminal disclaimers.
Consider the following scenario:
Patentee sells EP1 with claims directed towards "Use of X for the manufacture of a medicament for the treatment of Y" to company A.Patentee sells EP2 with claims directed towards "X for use in the treatment of Y" to company B.
According to the explanation provided, Company B could sue Company A for infringement.
One has to wonder if that was the intention of the Technical board of appeals.

Good morning - have not yet read the decision, but in the dawn of our new day, I was curious as to whether the decision contains any disparaging remarks about scriveners and their ability to claim an invention in a multitude of forms (generally following the US 101 category distinctions)...

(conversely, I wonder if our judicial elite will pick up on the apparent differences that make out the name of the game, as it were)

As usual, I remain...

Sinai Yarus:

"Patentee sells EP1 with claims directed towards "Use of X for the manufacture of a medicament for the treatment of Y" to company A. Patentee sells EP2 with claims directed towards "X for use in the treatment of Y" to company B. According to the explanation provided, Company B could sue Company A for infringement."

Wrong. You can't sue someone else for owning a patent that overlaps in scope of protection with your patent. Go back to patent law 101.

If B were to use X to manufacture a product for treating Y, as claimed by EP1, then A could sue B, even though the product with its intended use is within the scope of the claims of EP2; and if A manufactures a product for treating Y by including X in the product, as claimed by EP2, B could sue A, even though such use is also within the scope of EP1. That's because a patent confers a right to exclude, not a right to make, use or sell.

Presumably in such a situation, A and B would cross-license.

Of more interest is what happens to C, who now needs to negotiate with both A and B if he wants to use X to make a medicine for treating Y. He will likely run afoul of the scope claims of both patents and need to negotiate with both parties, increasing his transaction costs. The avoidance of such situations was one of the policy considerations in the adoption of terminal disclaimer practice in the USA.

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