A. Clarity of claims
BE – Belgium
Mons Commercial Court of 21 February 2013 (RG A/09/663) – Occhio v Malvern
Keyword: clarity of claims – sufficiency of disclosure
In a judgment of 12 January 2012 (see chapter III.D. "Amendments to claims"), the Mons Court of Appeal had held that the mandate issued to expert V, a professional representative before the EPO, and Occhio's limitation of the claims in its European patent 1 754 040 had been lawful. In its counterclaim, Malvern requested that the patent, even as limited, be revoked in its entirety on the ground that the terms used (homogeneous, non-ordered and turbulent dispersion) were unclear and too vague for industrial application.
Malvern acknowledged that lack of clarity was not a ground for revocation but argued that Occhio's limitation of the patent put the national court responsible for deciding on the limited patent's validity in the position of an examiner having to assess the clarity of the claims (Art. 84 EPC and Art. 17(2) Belgian Patents Act).
The court agreed that a lack of clarity in the claims was not in itself a ground for revocation. It could only render the patent invalid if it made the disclosure so unclear and incomplete that the skilled person could not carry out the invention (Art. 83 EPC and Art. 49(1) Belgian Patents Act).
There was no provision under the Belgian law currently in force for examination of voluntarily amended claims. As Occhio had correctly pointed out, such a procedure would only be introduced when the law of 10 January 2011 entered into force, and it was as yet unclear when that would happen. Consequently, the Court's sole task was to assess whether or not the claims limited by the patent proprietor were valid, which did not equate with the duties of an examiner.
On sufficiency of the description, the court held that, contrary to Malvern's assertion, the patent contained elements that made it possible to understand the terms used. It was true that the patent's description did not explain what was meant by turbulent flow but, since the expert understood it to mean a non-laminar flow, the Court considered that it had to be sufficiently familiar to a technician not to have to be precisely defined in the patent. On the clarity of the invention and sufficiency of the description, the expert concluded: "In my opinion, the skilled person reading the claims in the context of the description would not consider them unclear. ... It is no great problem for the skilled person to reproduce an apparatus and a method as defined in the patent. The two embodiments give the skilled person enough specifics to reproduce the invention."
Even though expert V undoubtedly did not have the same expertise in the relevant field as the technical advisors consulted by the parties, she was an engineer and a European patent attorney and, as such, had considerable experience of issues relating to the application of patents in practice and probably a great deal more such experience than those working on the purely academic or technical side. The Court held that her opinion could not therefore be brushed aside, as Malvern seemed to suggest. If she, as an expert, considered the information sufficient to enable her to reproduce the invention described in the patent without difficulty, that was an important factor for the Court's assessment. The Court ultimately held the expert's testimony to be sufficient and convincing, and ruled on that basis that the patent was sufficiently clear to be carried out by the skilled person.
DE – Germany
Federal Patent Court of 27 March 2012 (4 Ni 24/10) – Coffee machine
Keyword: clarity of amendments in revocation proceedings – combination of independent and dependent claims
European patent 1 521 542 was for a coffee machine comprising an improved locking device. The Court, hearing an action for its revocation, had to decide on the extent to which amendments limiting the claims which had been made during the proceedings had to be reviewed for conformity with the Art. 84 EPC clarity requirement.
It held that the admissibility of an amendment limiting the patent in revocation proceedings had to be reviewed comprehensively. The review was not limited to the grounds for revocation, because those grounds applied only to the patent as granted and not as amended.
This equally applied where the amended claim to be reviewed for clarity under Art. 84 EPC was in a European patent (Federal Court of Justice of 18 March 2010 – Xa ZR 54/06 – Proxy server system; by contrast, on the preceding EPO limitation proceedings, Federal Court of Justice of 1 March 2011 – X ZR 72/08 – Cosmetic sunscreen III). Art. 101(3) EPC expressly provided for this in respect of EPO opposition proceedings, whereas there was no such provision under the German Patent Act.
In this case, however, the amendment had merely entailed deleting the content of granted claim 1 without any replacement and moving claim 2 up to its place, so that, in effect, claim 2 had been retained as granted. Since the subject-matter to be reviewed was still the patent as granted, there were no grounds for a more extensive substantive examination and the review had to be limited to the revocation grounds submitted under Art. II(6)(1) of the Law on International Patent Treaties in conjunction with Art. 138(1) EPC, which did not include a clarity objection under Art. 84 EPC.
FR – France
Paris District Court of 13 February 2014 (13/00455) – Virbac v Merial
Keyword: insufficient description – clarity – undue burden
Virbac sought revocation of Merial's patents for a non-systemic spot-on formulation, asserting in particular that, as held by the English courts, their description was insufficient. Virbac addressed also lack of clarity of claim 1.
Merial countered the assertion of a lack of clarity by arguing that it was not a ground for revocation. The Court agreed that it was not an independent ground in itself, but considered that it could be an aspect indicating that the description was insufficient. In this case, however, claim 1 was not contradictory and there was no lack of clarity pointing to a failure to meet the sufficiency requirement on which the patent's validity depended.
Addressing insufficiency of description, the court held that the skilled person's common general knowledge did not include any theory explaining a non-systemic spot-on. Since the means of achieving the desired result were unknown, the combination of solvents and excipients enabling him to obtain a suitable formulation had to be specified. The formulation problem was even more complex in the case of compositions because a formulation suitable for one ingredient might prove ineffective for the other ingredient, which would have different physical and chemical properties.
The patents at issue gave no examples of formulations and did not provide the skilled person with the explanations needed to carry out the invention. It was well established that there was no statutory obligation to provide specific examples, and their absence was not enough in itself to render a patent invalid. In this case, however, the absence of examples was just one of the shortcomings in the description preventing the skilled person from carrying out the invention by applying his common general knowledge and the information in the patent.
Merial contended that Virbac had failed to show that the skilled person could not carry out the invention. The court, however, considered that the experiments he would have to conduct were more than simply routine. What was more, he would have to develop a formulation that would work with two active ingredients which might have different physical and chemical properties. Given the amount of tasks involved in such an empirical development process, this would mean extensive and unduly burdensome research. The description of claim 1 and its dependent claims was therefore insufficient and the patents were revoked.
B. Interpretation of claims and extent of protection
AT – Austria
Austrian Supreme Patent and Trademark Chamber of 27 February 2013 (Op 3/12)
Keyword: novelty – interpretation of claims (Article 69 EPC)
The patent in suit (EP 1 343 644) concerned a road/rail vehicle used to carry out track superstructure works. The Supreme Patent and Trademark Chamber examined, for novelty, the feature that the truck tractor had front and rear rail wheel pairs. A track tamping machine made by another company and already in use at the priority date had a second – rear – wheel pair, which however was used for measurement rather than support. Whether it anticipated the feature therefore depended on how the claim was interpreted, and in particular on whether both rail wheel pairs of the truck tractor had to be load-bearing.
Citing Art. 69 EPC and the Protocol on its interpretation, the Chamber held that determining the scope of protection conferred by a patent meant weighing up the claims' literal wording against the solution to the technical problem as set out in the description and drawings (Op 3/09 = PBl. 2010, 151), on the basis of what the skilled person would understand from them.
It was clear to the skilled person from the patent that two load-bearing rail wheel pairs were meant. Firstly, the claim's wording did not differentiate between the two wheel pairs. Measuring wheels were so different from load-bearing ones that no skilled person would conflate them in the same claim preamble. Secondly, that both wheel pairs were load-bearing was clear from a drawing to be used for interpreting the claim (within the limits of the wording). Thirdly, with only one load-bearing wheel pair the semi-trailer shown would have been unstable and therefore not technically viable. That alone would tell the skilled person that both pairs mentioned in the claim had to be load-bearing. This feature was therefore not anticipated by the tamping machine with just one pair of load-bearing rail wheels.
So the requirements for novelty were fulfilled – although in the end the Chamber revoked the patent for lack of inventive step.
DE – Germany
Federal Court of Justice of 17 July 2012 (X ZR 117/11) – Polymer foam
Keyword: claim construction
The Federal Patent Court had neglected to investigate the technical teaching in claim 1 in context and merely reached separate findings on the semantic content of individual features when assessing novelty. According to the Federal Court of Justice, however, a claim has to be construed by determining its semantic content as a whole and how its individual features contribute to the invention's intended effect. The semantic content of an individual feature always had to be determined in this context, which meant that the feature in question might take on a different meaning from that of a corresponding feature in a citation forming part of the prior art. Crucial for an understanding of an individual technical feature's meaning, at least in cases of doubt, is the function it performs, both by itself and in combination with the remaining features of the claim, in achieving the invention's effect. This had to be established using the description and drawings which explain and illustrate the claimed technical teaching and which, according to established case law, therefore had to be used not only in determining the extent of protection (Art. 69(1) EPC, § 14 German Patent Act) but also in construing the claim, irrespective of whether such construction serves as the basis for examining infringement or the patentability of the claimed subject-matter (Federal Court of Justice of 29 June 2010 – Crimping tool III).
It does not matter whether, once construed in this way, the claim contains an inadmissible extension beyond the content of the original application. Just as claims cannot be construed on the basis of what is patentable after an examination of the prior art (Federal Court of Justice of 24 September 2003 – Blisterless rubber strip I), they equally cannot be construed on the basis of the semantic content of the original documents. The patent specification alone serves as the basis for construction. A comparison with the published application can only be contemplated if there are inconsistencies between the description and the claim and such a comparison might help to clarify the extent to which the protected subject-matter has been limited on grant or during opposition proceedings (Federal Court of Justice of 10 May 2011 – Occlusion device; and of 4 February 2010 – Articulated coupling).
NL – Netherlands
Supreme Court of 4 April 2014 – Medinol v Abbott
Keyword: interpretation of claims – Article 69 EPC
The patent in suit (EP 1 181 902) concerned a flexible, expandable stent suitable for being implanted into a living body. According to the patent application, the object of the invention was to provide a flexible stent which minimally shrinks during expansion.
The main point in dispute in the infringement proceedings between Medinol (patent proprietor) and Abbott (alleged infringer) was whether the claims would also cover in-phase stents in which the problem underlying the patent at issue does not occur and which thus do not use the compensation mechanism provided by the claimed invention.
The Supreme Court rejected Medinol's argument that a claim can never be interpreted more narrowly than its literal wording allows. The Supreme Court stated that, according to Art. 1 of the Protocol on the interpretation of Art. 69 EPC, the extent of protection conferred by a European patent cannot be determined exclusively on the basis of the literal wording of the claims. The description and drawings can be used not only to clarify ambiguities in the claims but also to identify the inventive thought in the invention.
The Supreme Court also referred to its previous case law according to which the inventive thought behind the wording of the claims has to be weighed against the literal wording of the claims. Identifying the inventive thought behind the wording of the claims helps to avoid interpreting them solely on the basis of their literal meaning and, thus, perhaps too narrowly or unnecessarily broadly.
According to the Supreme Court, the description and the drawings are an important source for identifying the inventive thought. Background art not cited in the description can also be relevant in that regard. The most important factor for the interpretation of a patent is the skilled person's perspective and his knowledge of the prior art on the filing or priority date.
When assessing the subsequent question of infringement, the skilled person's knowledge at the time of the alleged infringement may also be taken into account, in particular with regard to equivalent elements.
In conclusion, the Supreme Court held that Medinol's patent was not infringed.
NO – Norway
Borgarting Court of Appeal of 24 January 2014 – Krka v Astrazeneca – Esomeprazole
Keyword: claim interpretation – chemical invention
AstraZeneca is the holder of the Norwegian patent NO 307 378, which protects optically pure salts of esomeprazole. In 2010 Krka introduced a generic drug with esomeprazole as the active pharmaceutical ingredient to the Norwegian market. AstraZeneca prevailed in preliminary injunction proceedings against Krka. AstraZeneca also initiated main proceedings at the Oslo District Court for a permanent injunction and damages. The District Court granted them and the decision was appealed to the Borgarting Court of Appeal.
The question in dispute was whether the esomeprazole salt with an optical purity of 98.8-99.5 % e.e. (enantiomeric excess) in Krka's generic product was "an optically pure compound" and thus fell within the scope of AstraZeneca's patent. The Court of Appeal came to the same result as the Oslo District Court. The concept "optically pure" as in the patent claim did not have a fixed scientific meaning and was therefore unclear. On the basis of the description, the court interpreted "optically pure" as a purity so high that the medicinal effect was achieved. An (exact) lower limit was thus not central either for the inventors or the Patent Office. Hence, there was no basis for interpreting the description "optically pure" in AstraZeneca's patent such that the pharmaceutical preparation for a patent must have a degree of purity of at least 99.8% e.e. The fact that the parallel European patent specified a lower limit of 99.8 % e.e. was not considered to be relevant for the interpretation of "optically pure". The Court of Appeal therefore held that the esomeprazole salt in Krka's product with an optical purity of 98.8 – 99.5 % e.e. was an "optically pure compound" as claimed in AstraZeneca's patent. The Court of Appeal accordingly held that the patent was infringed.
An appeal is pending before the Supreme Court.
C. Independent and dependent claims
FR – France
Court of Cassation of 20 May 2014 [13-10061] – X v Sig Sauer
Keyword: dependent claims – impact of a main claim's invalidity on dependent claims
French patent 2 730 803 related to an identification system for weapons, particularly firearms.
The Court upheld the Court of Appeal's ruling in its judgment of 5 October 2012 that the features of claim 1 amounted to a mere aggregation of means known to a skilled person (a specialist in general identification) and that, therefore, this claim lacked inventive step in the light of the state of the art at the filing date of the application.
The Court of Appeal had then ruled that claims 2 to 7 also had to be invalidated because they were dependent on claim 1, which lacked inventive step. Given that this main claim was therefore invalid, the dependent claims likewise had to be considered invalid. However the Court held that invalidating a main claim for lack of inventive step did not automatically lead to the invalidation of its dependent claims. The Court of Appeal had thus breached Art. L. 611-10, L. 611-11 and L. 611-14 of the Intellectual Property Code.
Editor's note: See also Court of Cassation (Commercial Division) of 9 July 2013 [12-18135]; Court of Cassation (Commercial Division) of 7 January 2014 [12-25955]. On the impact of the validity of a main claim on dependent claims, see Court of Cassation (Commercial Division) of 12 December 1995 [PIBD 1996 No. 607-III-139] – Packo v Nedap.
D. Amendments to claims
BE – Belgium
Mons Court of Appeal of 12 January 2012 (2011/RG/00402) – Malvern v Occhio
Keyword: amendment – extension beyond the content of the application as filed
Occhio was the proprietor of European patent 1 754 040, directed to a "method and device for dispersing dry powders".
After bringing infringement proceedings, Occhio had learnt of the existence of a Japanese patent application. The Court noted that patent proprietors confronted with allegations of invalidity not affecting their patent as a whole could attempt to save the patent by amending it. Amendments were only permitted if they genuinely limited the patent as originally granted. In other words, it was not permissible to extend the subject-matter (Art. 123(2) EPC and Art. 49(1) and (3) Belgian Patents Act).
The purpose of Art. 123(2) EPC was to prevent a patent proprietor from improving his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be detrimental to the legal certainty enjoyed by third parties relying on the original application. Legal certainty was the factor linking the question of a patent's validity to the question of its infringement (Art. 123(2) and 69 EPC).
Art. 123(2) EPC was relevant for Belgian patent practice where, as here, the Belgian part of a European patent was amended. First of all, it was relevant whenever the patent claims were reworded (whether or not in the context of proceedings). By virtue of Art. 49(1) Belgian Patents Act, it was also a basis for revocation (along with lack of novelty, inventive step, etc.). The ban on extending a patent's subject-matter applied both before and after grant. It was therefore important during national revocation proceedings not only to take account of the ban on extending the scope of the patent protection granted (Art. 123(3) EPC), but also to ensure that the amendments did not add features which the skilled person could not derive directly and unambiguously from the application as filed.
The question whether an amendment introduced elements that extended beyond the original application had to be assessed on the basis of all parts of the patent application disclosing the invention, i.e. the claims, the description and the drawings.
An amendment had to be regarded as introducing subject-matter going beyond the content of the application as filed if the overall change in content (be it by addition, alteration or deletion) resulted in the skilled person receiving information that was not directly and unambiguously derivable from that previously presented in the application, even if matter implicitly understood by the skilled person were taken into account.
Nor was it admissible under Art. 123(2) EPC to amend a claim by adding a technical feature taken in isolation from its context, i.e. from the description of a specific embodiment of the invention, if the skilled person could not derive, without the slightest doubt, from the application as filed that the subject-matter of the claim thus amended entirely solved a technical problem unambiguously recognisable from the application.
Similarly inadmissible under Art. 123(2) EPC was the introduction of an amendment to replace a disclosed specific feature with a more general term and thus to insert equivalents not disclosed in the application as filed. Thus, if the description described only one particular embodiment, it was inadmissible to remove terms or a feature from the description in order to make them more general, because there was nothing in the description to indicate that they could be generalised (rule against generalisations).
In the case at issue, Occhio had not extended its original patent by adding three elements to the claims.
DE – Germany
Federal Court of Justice of 21 June 2011 (X ZR 43/09) – Integration element
Keyword: amendment – inadmissible extension – revocation action
The claimant had sought revocation of the patent primarily on the ground that it went beyond the content of the application as filed (inadmissible extension). The defendant had countered the action by limiting the patent. The Federal Patent Court had revoked the patent as inadmissibly extended. The Federal Court of Justice upheld its decision.
According to the Court's case law, a patent did not necessarily have to be revoked under § 21(1) No. 4 and 22 German Patent Act where its subject-matter extended beyond the content of the application as filed. If this ground for revocation affected only part of the patent, it could instead be maintained under § 21(2) in a form limiting that part. Revocation on the ground of inadmissible generalisation could therefore be averted by limitation (Federal Court of Justice of 21 October 2010 – Angle measuring device; similarly G 1/93). The same applied where the insertion of a feature not disclosed in the application as filed merely limited the scope of the claimed subject-matter (Federal Court of Justice of 5 October 2000 – Time string; Angle measuring device).
By contrast, revocation was unavoidable in the case of an "aliud", i.e. different subject-matter. It was the Court's practice to apply § 21(1) No. 4 German Patent Act to amendments extending the subject-matter beyond the content of the original application so as to give rise to such an aliud (established case law; see e.g. Federal Court of Justice of 14 May 2009 – Heater; and of 8 July 2010 – Non-replicable document). An aliud resulted not only where the subject-matter of the patented invention and that originally disclosed were mutually exclusive but even where the added matter related to a technical aspect which could not be derived from the original application – be it in the same specific or at least abstract form – as forming part of the invention (see, in relation to opposition proceedings, Angle measuring device).
DE – Germany
Federal Court of Justice of 9 April 2013 (X ZR 130/11) – Scrambling method
Keyword: amendment of claims – inadmissible extension – disclosure – divisional application
The contested divisional application (from parent EP 0 655 739) concerned a method and a device for recording and reproducing information signals. The method comprised a step of scrambling and a step of de-scrambling the data, but the parent application disclosed only the scrambling of information signals and their recording on a data carrier. All the parallel claims in the patent as granted and in the auxiliary requests covered scrambling and de-scrambling. The defendant had submitted that the skilled person would inevitably derive the symmetric de-scrambling and reproduction – so to speak, as the other side of the scrambling coin – from the disclosure of the scrambling algorithm. The Federal Patent Court had already rejected that argument and revoked the patent.
The Court dismissed the appeal and upheld the Federal Patent Court's decision to revoke the patent. It held that it could not usually be inferred from the mere fact that, from a technical perspective, implementation of a process disclosed in the application (here: scrambling) necessarily had to be followed at a later stage by another process (here: de-scrambling) if a technically and economically worthwhile overall result was to be achieved, that the other process, although not mentioned, was disclosed as forming part of the claimed invention.
This applied even if the description of the first process provided the skilled person with all the information needed to carry out, with the help of his specialist knowledge, the other process. There was an inadmissible extension if the skilled person could identify the subject-matter only by his own thought processes drawing on his specialist knowledge after reading the original application documents. Amendments modifying the subject-matter in such a way that it goes beyond the content of the application as filed and constitutes an "aliud", i.e. different subject-matter, likewise results in an inadmissible extension. An aliud is created, for instance, where the added matter relates to a technical aspect which cannot be derived from the application as filed – be it in the same specific or at least abstract form – as forming part of the invention. So, if the scrambling process according to the invention is described generally and in the embodiments, the skilled person might indeed always be aware of its importance for the de-scrambling process and reproduction, but the parent application, particularly as read from a technical perspective, described only the measures to be taken at the data-recording stage in order to solve the specific technical problem concerned. The de-scrambling process, and the way it took place, was merely a consequence of following the technical instructions on scrambling in the parent application. The mere fact that, from a technical point of view, a particular process necessarily had to be followed at a later stage by another process if a technically worthwhile overall result was to be achieved did not mean that the other process, although not mentioned, was always directly disclosed as part of that first process.
FR – France
Paris Court of Appeal of 7 June 2013 (10/15598) – Security of Documents (Sood) v European Central Bank (ECB)
Keyword: amendments – directly and unambiguously derivable – extension beyond the application as filed
Sood, the proprietor of European patent 0 818 107 for a "secure method for duplicating sensitive documents", took the view that the ECB's counterfeit deterrence system to prevent the reproduction of banknotes used its invention and sued the ECB for patent infringement. The Paris District Court had dismissed the action by decision of 15 June 2010 (RG 08/00935), and Sood had appealed.
On appeal, the ECB maintained that, having been amended during the grant procedure before the EPO, claims 1 and 2 of the above patent were invalid because their subject-matter extended beyond the content of the application as filed as a result of the deletion of universal marking (claim 1), the undue broadening of the patent's scope by adding a feature for the parallel management of archiving (claims 1 and 2) and the addition of a final printing option on execution of authorised duplication requests (claims 1 and 2).
The claims related to the determination of two new graphic elements to be placed on sensitive documents: marking and rules. The marking identified the sensitive document, whereas the rules were a graphic element with complex encoded information on the document's duplication requirements/restrictions.
On the revocation of claims 1 and 2 of the French part of European patent 0 818 107 for extension of the subject-matter beyond the content of the application as filed, the Court noted that under Art. L 614-2 of the Intellectual Property Code the French courts could revoke a European patent for any of the reasons referred to in Art. 138(1) EPC. Under Art. 138(1)(c) EPC, a European patent could be revoked with effect for a contracting state only on the grounds that the subject-matter of the European patent extended beyond the content of the application as filed. The content of the application was determined by the claims, which had to be supported by the description and drawings.
As to marking, the Court observed that the feature in European patent 0 818 107 specifying, as in the original description (PCT application), that there was marking throughout the document no longer appeared in claim 1 but was still in claim 2, so that the marking disclosed in claim 1 might appear throughout the document or just a part of it. In the original, international application, claim 1 had not specified that the marking appeared throughout the document or described the marking. It had only mentioned embodiments where the marking appeared throughout the document, and so provided exclusively for a marking throughout the document, as also set out in the proprietor's letter submitting the invention to INPI. It followed from the content of the original application that it was not directly and unambiguously derivable that the marking could be applied to only one part of the document. Thus, deleting the requirement in claim 1 of European patent 0 818 107 that the marking appear throughout the document amounted to an undue extension beyond the content of the application as filed, and claim 1 had to be revoked on that ground.
As to the parallel management of archiving, the Court found that the information on possible archiving in the application as filed related only to documents that could be authenticated. It upheld the ruling that the generalisation of a feature of a particular embodiment had extended claim 1 of European patent 0 818 107 beyond the original PCT application, rendering it invalid. As to introduction of the option of printing a final paper copy as part of the authorised duplication of a sensitive document, the Court found that this was not directly and unambiguously derivable from the content of the application as filed. This too meant that claim 1 had been inadmissibly extended and was therefore invalid.
The Court ultimately revoked the claims Sood had invoked against the ECB.
FR – France
Paris Court of Appeal of 25 October 2013 (13/06455) – Syngenta v INPI Director General
Keyword: limitation – amendment of the claim directly and unambiguously derivable
Syngenta was the proprietor of European patent 90 300 779 entitled "Fungicides" for a family of fungicides based on propenoic acid and including the compound azoxystrobin.
On 28 September 2009 Syngenta had lodged a request with the National Institute for Industrial Property (INPI) for limitation of the scope of independent claim 8 of the French part of the European patent under Art. L.614-24 of the Intellectual Property Code. This request had been refused by the INPI Director General on 6 March 2010, and Syngenta's appeal against that refusal had been dismissed by the Court by judgment of 7 September 2011. On appeal the Court of Cassation decided, by judgment of 19 March 2013, to set aside that judgment for lack of legal basis because the Court had reached its conclusion without examining whether the subject-matter of the amended claim had been disclosed directly and unambiguously in the description of the patent as granted. The case was then remitted back to the Court.
Syngenta explained that the composition of the fungicidal product comprised a first active ingredient of the formula in conjunction with another active ingredient such as those supported by the description. Claim 8 as granted was worded as follows: "fungicidal composition comprising a fungicidally effective amount of a compound according to claim 1 and a fungicidally acceptable carrier or diluent therefor". The term "comprising" was understood to mean that the claim was open to the presence of other compounds, and the fungicidal composition as mentioned in the claim was specified in the description of the patent. For the amendment made to be admissible, it was sufficient that the feature be disclosed in the description, as was the case here. Sufficiency of the description was not examined in limitation proceedings. Nor did the skilled person (a laboratory assistant) reading the description have to carry out research to understand the combination disclosed.
The INPI Director General pointed out that the monopoly conferred by a patent could be justified only in return for providing a sufficient description. The amendment sought involved adding a second active ingredient to the composition from a list of over 180 products or product families exhibiting a broad range of chemical structures and activities. A description containing the list of products suitable for combination with a compound based on propenoic acid was not sufficient in itself if it neglected to give any information on the products' activity or dosage, or provide an example. Such a list alone did not constitute a sufficient description that would enable the skilled person to carry out the invention to which the invention as amended related. The description therefore did not disclose the composition that formed the subject-matter of the amended claim directly and unambiguously, so the skilled person still had to carry out research.
The court held that the invention related to an active ingredient composed of a propenoic acid derivative as described in claim 1 and to all combinations thereof with a least one second active agent. Independent claim 8 related to a composition comprising a first active ingredient of the formula capable of being combined with a second active ingredient and a fungicidally acceptable carrier or diluent. The invention covered not only the compound which was the subject-matter of the invention, but also any combination using that active ingredient with any other substance disclosed in the patent.
The request that the composition set out in general terms in claim 8 be limited in such a way that it had to include, as a second active ingredient, a substance referred to in the description of the patent and, in particular, in a list of specific active ingredients having different biological activities was designed to limit the claim's scope without altering its subject-matter. The limitation was therefore supported directly and unambiguously in the original description (above), which had been reproduced verbatim, and hence was disclosed. It was not part of the limitation procedure to examine patentability or sufficiency of the description.
The court therefore annulled the INPI Director General's decision of 6 May 2010 to refuse the request for limitation of European patent 90 300 779.
FR – France
Paris Court of Appeal of 20 December 2013 (12/14147) – Icotex v Saertex
Keyword: amendments to patent claims – directly and unambiguously derivable – extension beyond the content of the application as filed
Icotex is the proprietor of French patent 0 500 964 directed to composite panels. The Court of First Instance revoked claims 1 and 20 of the patent for extension beyond the application as filed. Saertex (respondent) requested the patent's revocation.
After examining the scope of French patent 0 500 964, which has 13 product claims, six apparatus claims and seven process claims, the Court of Appeal went on to examine the patent's validity. Under Art. L. 613-25(c) of the Intellectual Property Code, a patent is to be revoked by court decision ... if its subject-matter extends beyond the content of the application as filed. The court held that an extension was inadmissible only if the elements added to the granted patent could not be derived by the skilled person (in this case, an engineer specialising in the design and manufacture of composite materials) directly or unambiguously from the patent application as a whole on the basis of the description, the claims and drawings and his/her common general knowledge.
After receiving the European examiner's search report, Icotex had amended claims 1 and 20. It countered the revocation request by asserting that INPI had not raised any objections to the amendments, and that the subject-matter had not been extended beyond the content of the application as filed. The claims as amended during the examination proceedings had narrowed the patent's scope vis-à-vis that of the original application. Lastly, Icotex submitted that there was no need to take into account extraneous factors such as the comments from the EPO examiner. Saertex objected to the insertion of the phrase, "the core comprises at least one element having a pre-established shape, the pre-established shape defining at least one supporting face geometrically defined by at least one of the skins", which, it maintained, could not be derived from the application as filed.
The court held that the cores mentioned in the description and consisting of "panels", "bands" and "foam slabs" in the examples illustrating the description constituted specific panel embodiments known as "pre-established shapes", i.e. panels combined with other features in the context of a specific embodiment. All the drawings depicted complex panels.
In the end, the court concluded that there was in fact nothing in the original application, which referenced complex panels, to enable the skilled person to infer the pre-established shape defining at least one supporting face geometrically defined by at least one of the skins.
The court also held that the European examiner's finding that the initial amendments extended the subject-matter of the application beyond the content of the original application as filed was a factor relevant for its own assessment of this claim's validity. It was for the courts to assess whether the subject-matter of the application had been extended so it was irrelevant that the patent in question had been granted by INPI. The court of first instance had therefore been perfectly justified in revoking claims 1 and 20.
GB – United Kingdom
Court of Appeal of 10 May 2012 – Nokia OYJ (Nokia Corporation) v IPCom GmbH &Co KG  EWCA Civ 567
Keyword: added subject-matter – claim broadening – intermediate generalisation
In respect of an objection founded on Art. 123(2) EPC the test was as stated in Bonzel v Intervention (No 3)  RPC 553. The task of the court is threefold: (1) to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application; (2) to do the same in respect of the patent; (3) to compare the two disclosures and decide whether any subject-matter relevant to the invention has been added whether by deletion or addition. Subject-matter will be added unless such matter is clearly and unambiguously disclosed in the application, explicitly or implicitly. Similarly, according to G 2/10, an amendment can only be made "within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed".
In Vector Corp v Glatt Air Techniques Ltd  EWCA Civ 805, Jacob LJ had elaborated the test to be applied, drawing together the principles from earlier cases: in Richardson-Vicks' Patent  RPC 568, he had summarised that "... the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification". The reason for the rule was as explained in G 1/93: "... the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application". This unwarranted advantage could be gained in two ways: he could circumvent the "first-to-file" rule; and he could gain a different monopoly to that which the originally filed subject-matter justified.
Jacob LJ then turned to the elaboration upon Bonzel given in European Central Bank v Document Security Systems  EWHC 600 (Pat):
1) The court was required to construe both the original application and specification to determine what they disclosed. The claims formed part of the disclosure, though clearly not everything which fell within the scope of the claims was necessarily disclosed.
2) The court had to carry out the exercise through the eyes of the skilled addressee with common general knowledge.
3) The two disclosures had to be compared (strictly) to see whether any subject-matter relevant to the invention had been added.
4) It was appropriate to consider what had been disclosed both expressly and implicitly.
5) The issue was whether subject-matter relevant to the invention had been added (citing G 1/93 – if it provides a technical contribution to the subject-matter it would give an unwarranted advantage to the patentee. If the feature merely excludes protection for part of the subject-matter of the claimed invention, the addition does give any unwarranted advantage).
6) It was important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject-matter is said to be implicitly disclosed in the original specification.
In Napp Pharmaceutical Holdings Ltd v Ratiopharm  EWCA Civ 252 it was restated that not everything falling within the scope of a claim is necessarily disclosed.
According to Kitchin LJ, these principles were enough to deal with most cases. However, this appeal focused on two points: the approach to be adopted to claim broadening, and the objection of intermediate generalisation.
As for claim broadening, T 260/85 explained that the deletion of a feature would constitute added matter if the application as originally filed contained no disclosure, express or implied, that the feature could be omitted. Then, in T 331/87 the board laid down a three-part test; the replacement or removal of a feature from a claim may not violate Art. 123(2) EPC provided the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change. This test provided a convenient structured approach to the fundamental question whether, following amendment, the skilled person is presented with information about the invention which is not derivable directly and unambiguously from the original disclosure.
A particular form of extended subject-matter was "intermediate generalisation". This occurred when a feature is taken from a specific embodiment, stripped of its context and then introduced into the claim in circumstances where it would not be apparent to the skilled person that it has any general applicability to the invention. Particular care must be taken when a claim is restricted to some but not all of the features of a preferred embodiment (see T 25/03 and T 284/94). It was not permissible to introduce into a claim a feature taken from a specific embodiment unless the skilled person would understand that the other features of the embodiment are not necessary to carry out the claimed invention, i.e. it must be apparent to the skilled person that the selected feature is generally applicable to the claimed invention absent the other features of that embodiment.
GB – United Kingdom
Court of Appeal of 28 January 2014 – AP Racing Ltd v Alcon Components Ltd  EWCA Civ 40
Keyword: added subject-matter – generalisation
AP Racing's patent related to disc brake calipers for motor vehicles, particularly racing cars, involving peripheral stiffening bands (PSBs). The patent had been revoked at first instance on the ground that feature 6 of claim 1 ("in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan") disclosed added matter (s. 72(1) Patents Act 1977). The Court of Appeal disagreed with the judge's finding and allowed the appeal.
Floyd LJ referred to the court's threefold task when determining the issue of added matter, as set out by the Court of Appeal in Bonzel v Intervention (No 3)  RPC 553 and as quoted in the preceding summary of Nokia OYJ (Nokia Corporation) v IPCom GmbH &Co KG  EWCA Civ 567. In the end the question was whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification (Richardson Vick's Patent  RPC 568, approved in Vector Corporation v Glatt Air Techniques Ltd  EWCA Civ 805). One policy reason identified in Vector for the rule against adding matter was that third parties should be able to look at the application and draw a conclusion as to the subject-matter available for supporting a claimed monopoly. If subject-matter was added subsequently, the patentee could obtain a different monopoly to that which the application originally justified.
Overall, Floyd LJ held that the application as filed was telling the skilled reader that the PSBs had a stiffening function which allowed material to be removed from other parts of the body, and it would be clear that the PSBs were, individually, asymmetric about a lateral axis of the body. There was no material difference between the technical disclosure in the application and that in the body of the granted patent. The application did contain a clear and unambiguous disclosure of a class of PSBs which would fall within claim 1 of the granted patent because they would necessarily possess all the features of that claim, including the disputed feature 6.
Floyd LJ went on to consider whether the patent was nevertheless bad for added matter because it claimed a wider class of asymmetric PSBs than were disclosed in the application. The judge at first instance had thought it did because it claimed all asymmetric PSBs and not just hockey stick-shaped ones. Whether he was right depended on an analysis of the extent to which it was legitimate to add features to a claim which describe the invention in more general terms than a specific embodiment. There was no doubt that the claims of the patent formed part of the disclosure for the purposes of assessing whether there was added matter. However they performed a different function from the disclosure in the body of the specification. Their primary function was to delimit the area of the patentee's monopoly.
Floyd LJ considered the English cases Texas Iron Works Inc's Patent  RPC 207 and A.C. Edwards Ltd v Acme Signs & Displays Ltd  RPC 131 and decision T 65/03 and found it clear from these that the law did not prohibit the addition of claim features which state in more general terms that which is described in the specification. What the law prohibited was the disclosure of new information about the invention.
In Floyd LJ's view, the judge, having correctly concluded that the description in the application of the hockey stick-shaped PSBs was of something "necessarily asymmetrical", should have gone on to ask himself whether there was any added disclosure in the granted specification. The description of the PSBs as "asymmetric" had to be read as part of the disclosure of the specification of the granted patent as a whole, taking account of the different function of the claims and the specification. When this was done the skilled person would understand that the patentee drafted his claim so that it covered asymmetric PSBs generally. However Floyd LJ was not persuaded that the specification read as a whole disclosed any configuration of PSB which was not disclosed in the application.
NO – Norway
Borgarting Court of Appeal of 6 January 2014 – StS Gruppen AS v Stillasgruppen AS and Stillastjenester
Keyword: added matter – disclosure
StS Gruppen's patent (NO 317 999 B) concerns a shutdown device for security systems for the operation of habitats on installations in which an object, which is carrying out work resulting in heat generation such as flames, sparks and suchlike, is isolated from the surroundings, and where an overpressure of air is set up in the habitat to prevent ingress of flammable gases.
According to the patent, the security system's shutdown device shuts down the supply of both air and power to the habitat. Subsequent to filing the original patent application StS Gruppen filed amended claims, adding some details in the patent description and drawings, showing a connection between the gas sensors and the shutdown device.
The Court of Appeal had to evaluate whether or not the amendments meant that the patent included added subject-matter. In the description of the patent application as originally filed, the shutdown unit is described as a mobile electrical equipment carriage with electronics necessary to make the gas detectors "deliver electrical signals to the shutdown unit so that the electricity and equipment in the housing are shut down (explosion hazard), other than special equipment such as emergency illumination and similar that must remain on." Only shutting down the electricity supply is mentioned here, not closure of the air supply.
It is clear from the definition of the ventilator which supplies air with overpressure to the habitat that the ventilator "is automatically shut down when a detector at the intake registers abnormal levels of gas". It is not stated, however, that it is the shutdown unit which initiates the shutdown and it is not clear whether the shutdown occurs directly or only as a result of the electric power supply first being interrupted.
The court thus held that there was no direct description to be found of the function that consists of the shutdown unit shutting down both the working electricity and the air supply on a signal from the gas detector in the air intake. It found that the person skilled in the art would not understand the application in any other way. The court held that the patent application as filed did not disclose directly and unambiguously for a person skilled in the art that the shutdown device on a signal from a gas detector shuts down both power and air supply as described in the patent claims. The patent was hence held invalid due to added subject-matter.
Date retrieved: 30 December 2018