Two new decisions on swiss-type claims

In a first decision the Austrian Supreme Patent and Trademark Senate (ASPTS) found that in a declaratory action concerning the non-infringement of a patent the existing right (patent) as de-fined in the register shall form the basis for the proceedings. Thus, only the subject matter in dispute shall be compared with the subject matter of the patent. However, the validity of the claims of the patent the action is based on shall not be the ob-ject of such declaratory proceedings.

The second decision concerned the issue of claim construction. The ASPTS found that a claim which includes a description of the corresponding chemical compound by way of a Markush formula shall comprise all possible stereochemical alternatives of the chemical compound, i.e. the S-form, R-form, all mixtures of the enantiomers, and e.g. the racemate, if the patent specification does not contain further details on three-dimensional stereo-chemical orientation of a chiral group in the chemical compound (i.e. neither direct nor indirect information, e.g. details on synthesis of the salts and/or the free compound). Thus, if the patent specification does not provide a basis therefor, a narrow interpretation of the Markush formula to, e.g. the racemate, or the obligatory presence of both enantiomers is not justified.

Both decisions were related to esomeprazole and atorvastatin, two blockbusters. In both cases the molecules were described as Markush formulas in the claims of the corresponding patents without any details on the specific stereochemical orientation of the substituents on possible asymmetric C-atoms. The ASPTS clarified that such a claim should not be limited to, e.g. the racemate or the obligatory presence of both enantiomers only, but should comprise all possible stereochemical alternatives of the chemical compound, i.e. the S-form, R-form, all mixtures of the enantiomers, and the racemate, e.g.

Dipl.-Ing. Peter Pawloy