H I R S C H & P A R T N E R S A v o c a t S o l i c i t o r R e c h t s a n w a l t CHEMICAL INVENTIONS IN FRANCE Recent decisions and case law Dr Denis Schertenleib Avocat & Solicitor Partner Hirsch & Associés Paris France

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS Recent decisions Inventive step – obviousness to try Inventive step – technical problem solved Added matter

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS Solvay v DuPont High Court of Paris, 1 July 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS Merck v Teva Arrow & EG Labo v Merck Two separate judgments of the High Court of Paris on FOSAMAX rendered on February 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS Inventive step – the technical problem solved The approach of French Courts is objective. The patentees 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS 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 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS Added Matter Art 123(2) of the European Patent Convention. Ground for revocation. DSSI v European Central Bank, Paris High Court, 9 January 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS 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.

H I R S C H & P A R T N E R S Dr Denis Schertenleib HIRSCH & PARTNERS 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 EPOs strict case law on added matter.