The United States Court of Customs and Patent Appeals (CCPA), which was the predecessor of the United States Court of Appeals for the Federal Circuit reversed a decision by the United States Patent Office (USPTO) to reject a patent application on the basis of alleged improper use of the “Markush claims” format. The CCPA confirmed unity of the claimed invention at issue and therefore considered the Markush claims format as being properly used.

The Federal Circuit affirmed the rejection by the US Patent and Trademark Office (USPTO) of a number of product-by-process claims based on the lack of novelty of the claimed product. Patentability of product-by-process claims is determined on the basis of the product, not the process.

The United States Supreme Court ruled that amending (i.e. narrowing) a patent claim during prosecution does not necessarily result in a complete bar to the doctrine of equivalents. It rejected the Federal Circuit’s decision that a complete bar to equivalents always results when a claim is narrowed during prosecution and thereby confirmed its own case law.

The Court of the Commissioner of Patents in this decision focused on two main issues: (1) the protection of new medical uses of known products under South African patent law and (2) the requirements for prior art to destroy novelty by anticipation.

The Federal Circuit deviates from earlier precedent (Scripps Clinic, see case summary) in applying different treatment to patent claims in the context of patent prosecution on the one hand and in the context of patent litigation on the other hand. This case concerns in particular the scope of product-by-process claims. It also provides a useful illustration of how to examine infringement of a process claim in terms of literal infringement and the doctrine of equivalents.

In this decision, the United States Court of Appeal for the Federal Circuit confirmed earlier case law by stating that direct infringement of a process patent requires all of the steps of the claim to be performed by a single entity or to be at least attributable to a single entity.

In this decision from 1983, the New Zealand Court of Appeal considered methods of treatment of humans to not constitute patentable inventions.

The Court ruled that New Zealand is bound by the TRIPS Agreement that obliges it to provide patent protection for all inventions, without discrimination. In the view of the Court, claims on the use of a known compound for the manufacture of pharmaceutical compositions in which the compound exhibits previously unknown therapeutic activity are inventions.

The Enlarged Board of Appeal decided that the presence of one surgical step in a multi-step method is sufficient to exclude the method from patentability. The exclusion of methods of surgery is not limited to a therapeutic purpose.

The Enlarged Board of Appeal (EBoA) decided that as a matter of principle, a European patent is to be granted for an invention which meets the patentability criteria, and, as such, the principle of a narrow interpretation is to apply to clauses excluding patentability, for instance of diagnostic methods. For a method to be considered a diagnostic method, it must include all the steps relating to it. There is no diagnostic method if one of the steps is lacking.