Lawyers from EIP have taken on a matter for Creative United, where they provided advice in relation to the Accessible Musical Instruments Challenge (the “Project”). The Project aims to address the accessibility challenges of people who want to play or produce music, but find it physically challenging to do so.
From July until the end of September, eight virtual teams will collaborate to address a series of innovation challenges, focusing on the design, manufacture and supply of non-standard musical instruments and assistive equipment for both disabled and non-disabled musicians to use. Challenges include identifying how to improve upon the design and production processes of the existing 3D printed one handed recorder; developing a violin bow holder which enables a prosthesis to replicate bow control; and working to standardise the production of a bespoke moulded trombone stand to enable mass production. These efforts will culminate in an event in October where the teams will showcase their progress so far.
EIP Managing Associate Alex Morgan led on this matter and says: “It was a pleasure to support Creative United on this interesting and important initiative. I’m excited to see what developments the virtual teams devise.”
Read more about the Challenge here.
On 9 July 2020 the CJEU issued its decision in Santen Case C‑673/18. The judgment will have major repercussions as the earlier decision in Neurim Case C‑130/11 has been overturned.
Santen were seeking an SPC for Ciclosporin for use in the treatment of keratitis (inflammation of the cornea) based on their marketing authorisation for their medicinal product Ikervis, which contains ciclosporin in the form of an ophthalmic emulsion.
However, a much earlier marketing authorisation already exists for ciclosporin albeit in a completely different formulation: Sandimmune, which is an oral solution indicated for preventing organ rejection. However, the therapeutic indications for Sandimmune also include the treatment of endogenous uveitis, an inflammation of all or part of the uvea, the middle part of the eyeball.
While the formulations of the two ciclosporin products are quite different - ophthalmic emulsion as opposed to oral solution, both are indicated for uses that might be considered ophthalmic.
The main issue was whether Santen’s SPC application complied with the requirements of Article 3(d) of the SPC Regulation No 469/2009, which stipulates that the marketing authorisation on which the SPC application is based must be “the first authorisation to place the product on the market as a medicinal product”. If there is an earlier authorisation in respect of that product (product being defined in the SPC Regulation as meaning active ingredient or combination of active ingredients), then ostensibly an SPC cannot be granted.
Santen relied on the earlier CJEU decision Neurim, in which it was held that an earlier authorisation for veterinary use of a product (melatonin) did not preclude the granting of an SPC based on a later marketing authorisation for human use and a later patent directed towards that use. However, the judgment in Neurim was cast in broader terms than was strictly required to dispose of that case, and it was stated “the mere existence of an earlier marketing authorisation obtained for a veterinary medicinal product does not preclude the grant of a supplementary protection certificate for a different application of the same product for which a marketing authorisation has been granted, provided that the application is within the limits of the protection conferred by the basic patent relied upon for the purposes of the application for the supplementary protection certificate.”
The scope of the applicability of the Neurim judgment to later cases (in particular where the earlier marketing authorisation is for a human pharmaceutical product rather than a veterinary product) has been unclear, but one interpretation of the Neurim decision would be that in any situation where there is a later patent directed towards a new use of an existing product, an SPC can be granted if there is later marketing authorisation directed towards that use.
In the Santen decision (read here), the CJEU disregarded the legal questions put forward by the referring Court (the Cour d’appel de Paris), and instead addressed the underlying premiss, namely that it may be possible in certain circumstances to obtain an SPC for a new therapeutic application of an active ingredient which has already been the subject of an marketing authorisation prior to the marketing authorisation on which the application for that SPC is based.
The CJEU explicitly departed from Neurim to hold that this premiss is not correct. While there is no explicit statement that the Neurim judgment is overruled or reversed, it is clear that the test set out in Neurim, of considering the “first” marketing authorisation to mean the first falling within the scope of protection of the basic patent, is disapproved and no longer applies.
The CJEU upheld the textual meaning of Article 3(d), holding in the operative part of the judgment that it is to be interpreted as “meaning that a marketing authorisation cannot be considered to be the first marketing authorisation, …, where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of a marketing authorisation for a different therapeutic application”.
The CJEU followed the recommendation of the Advocate General, whose Opinion stated that the CJEU should abandon the test of the “protection conferred by the basic patent” set out in Neurim and return to a literal interpretation of Article 3(d).
This reasoning implies that however different the formulation or therapeutic use, an earlier marketing authorisation for a particular active ingredient will be an absolute bar to obtaining an SPC based on a later marketing authorisation relating to the same active ingredient.
While the Neurim decision offered hope of a more flexible interpretation of the SPC Regulation to allow under certain circumstances an SPC to be granted where Article 3(d) suggested it would not be possible, the price of that hope was a troubling lack of clarity as to what the limits might be. This judgment has removed that possibility of flexibility, but has instead provided clarity that Article 3(d) means what it says.
Today EIP Partner Florian Schmidt-Bogatzky has been recognised for his expertise in intellectual property with a ranking in Best Lawyers in Germany 2021.
Recognition by Best Lawyers is based entirely on peer review with a methodology designed to capture, as accurately as possible, the consensus opinion of leading lawyers about the professional abilities of colleagues within the same geographical area and legal practice area.
Best Lawyers employs a sophisticated, conscientious, rational, and transparent survey process designed to elicit meaningful and substantive evaluations of the quality of legal services.
Full rankings can be found at: https://www.bestlawyers.com/current-edition/Germany
EIP has today been ranked in a special report commissioned by the FT of Europe’s leading patent firms.The rating is the result of a joint project by the Financial Times and Statista, which conducted extensive research. A wide-ranging survey was sent to over 10,000 European patent attorneys both in law firms and working in-house as well as clients. After analysing the 2,900 recommendations received from clients and peers 160 firms are featured in the overall list.
The report covers six broad sectors: Biotechnology & Food; Chemistry & Pharmaceuticals; Electrical Engineering; IT & Software; Materials & Nanotechnology; and Mechanical Engineering.
We are delighted to be rated as gold for Electrical Engineering; IT & Software; and Mechanical engineering and bronze for Biotechnology & Food and Chemistry & Pharmaceuticals.
The full report can be viewed here.
The 2020 edition of IAM Patent 1000 has been published, with retained rankings for the firm and excellent client and market feedback.
Eleven partners from EIP’s UK and German offices have been recognised among the world’s leading patent practitioners.
Editorial for the firm’s UK’s practice recognises how it “blends litigation and patent prosecution in a seamless team” and one client commented that “The lawyers really put their heart into the case and there is never even a single moment’s doubt that they have their clients’ interests first and foremost in mind.”
The firm’s UK patent litigation team retained its silver ranking with it noted that its reputation in the field of SEPs is difficult to beat. In addition to the firm’s recognition several partners received positive commentary. Robert Lundie Smith is referred to as a dab hand at overseeing parallel proceedings in multiple jurisdictions while Kathleen Fox Murphy is described as a talented litigator and SEP specialist. Gary Moss is described as a “very switched-on patent litigator with a wide commercial perspective and strong legal knowledge”; while it is noted that Matthew Jones does not limit his contentious prowess to his field of study, having been involved just this year in a major electronics matter.
The firm’s UK patent prosecution team is listed as recommended with specific mentions for Laurence Brown; Jerome Spaargaren who brings personal skill and insight as an inventor to the table for clients; Matt Lawman noted as “very knowledgeable, timely and has great attention to detail”; while Heather McCann is described as a “consistent and high-quality” practitioner who has “excellent technical knowledge” something IAM notes Darren Smyth also boasts in spades.
EIP’s German patent infringement team is ranked in the bronze category and editorial recognises the firm’s star in Germany is firmly in the ascendant, thanks to polished performances in multinational patent litigation, particularly in the field of electronics. Christof Höhne is celebrated for his “collaborative approach and ability to always provide creative, on-point advice”; while Florian Schmidt-Bogatzky is described as a “responsive, thorough and dedicated” practitioners who “is driven to get the right result and has a great grasp of all details”.
IAM Patent 1000 has been compiled following an extensive research process which included in the region of 1,800 interviews with numerous attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field.