Chemical Selection Inventions in the EPO and Germany: Continued Divergence in Legal Interpretation

Abstract

The 2007 decision of the Federal Patent Court of Germany (FPC) invalidating the “Lipitor” patent is taken as a departure point for a review of the fundamental differences in how the European Patent Office (EPO) and the FPC and German Federal Supreme Court (FSC) assess the novelty of chemical compound selection inventions. The paper highlights EPO and German decisions pertaining to the novelty of specific chemical compounds (e.g., enantiomers) falling within, but not individually described in, a broader prior art disclosure (e.g., a racemate or a Markush formula). This divergence in opinion in the EPO and Germany is attributable largely to differences in how the skilled person is assumed to interpret the prior art. Germany and the EPO each require that it actually be possible to make a substance disclosed in a prior art document in order to be novelty destroying. They also each interpret the content of a prior art document as extending beyond its literal disclosure, including what the skilled person takes ...