Hoffmann Eitle - München, London

10.02.2009 -

German Federal Court of Justice restores Lilly's Olanzapine Patent

The German Federal Court of Justice (Bundesgerichtshof) has issued the long awaited reasoning of its landmark decision "Olanzapin" (X ZR 89/07) restoring Eli Lilly's European Patent EP-B-0 454 436. The patent had been revoked by the first instance court (Federal Patent Court) for want of novelty, but now is fully in force again. The Federal Court of Justice took the opportunity to clarify its existing case law on novelty, bringing it in closer harmony with the Case Law of the European Patent Office. The earlier Federal Court of Justice decision “Fluoran” which had given rise to a lot of misunderstandings and criticism was re-interpreted more narrowly and partly reversed (see below, lit. c).

The Headnotes of the Olanzapine decision read in our translation as follows:

a) An assessment as to whether the subject matter of a patent is anticipated by a prior published document requires that the entire content of the prior published document be ascertained. The decisive factor is the technical information disclosed to the person skilled in the art. The concept of disclosure in this context does not differ from that applied otherwise in patent law (continuation of the judgment "Fahrzeugleitsystem" of the Chamber dated December 16, 2003 – X ZR 206/98 – GRUR 2004, 407).

b) A disclosure may also include that which is not expressly mentioned in the patent claim or the description, but which, from the point of view of the person skilled in the art, is quite evidently required to carry out the protected teaching, and therefore does not need to be specifically disclosed, but will be "read in". The inclusion of plainly evident subject matter does not, however, permit the disclosure to be supplemented by expert knowledge. Just as when the literal meaning of a patent claim is ascertained, such an inclusion is only for the purpose of full ascertainment of the content and its meaning, i.e. the technical information the expert reader, based on his expertise, will find in the source (continuation of the decision "Elektrische Steckverbindung", BGHZ 128, 270).

c) As a matter of principle, the individual compounds falling under a chemical structural formula are not yet disclosed when said formula is disclosed (continuation of the decision "Fluoran", BGHZ 103, 150).