The scope of a patent is to be interpreted according to Art. 69 EPC and the Protocol. If the literal text is limiting, the question is how the skilled person would understand this limitation. If the limiting wording is due to a technical consideration, the limitation may be considered differently from when the limitation can be deemed to be without a purpose. In principle, the consequences of a lack of clarity on the scope of the claim shall be for the patentee.

In the present case, it appeared from the prosecution file that the limitation had been introduced with a purpose, and the patentee had accepted the limiting examiner’s amendments. Taken together with the fact that the patentee could be considered a professional party with sufficient knowledge in the field of patents, this means that the scope of the claim was determined more by the literal interpretation of the claim than by the concept of the invention behind it.

Case date: 19 June 2019
Case number: C/09/54 1424 / HA ZA 17-1097
Court: District Court of The Hague

A full summary of this case has been published on Kluwer IP Law.


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One comment

  1. File wrapper estoppel is not a notion liked in Europe. But when one sees how Eli Lilly behaved during examination, the decisions in which the competitors were considered infringing is a first class premium to slap dash drafting, and nevertheless to be rewarded for it.

    Contrary to what Lord Neuberger thought, the examiner had no choice but to raise an objection under Art 123(2). The whole original description was purely speculative and the only examples given in the application related to pemetrexed disodium. The applicant wanted a patent as quickly as possible. He did not even attempt to defend the generalisation to pemetrexed ions. He could have filed further experimental data, or even a divisional application. Nothing of this kind was even suggested in his replies. A quick grant was its only aim.

    The examiner accepted a generalising statement and did not request a description effectively limited to pemetrexed disodium. This was the lever Eli Lilly used later.

    The various decisions, especially the one from the UK Supreme court, did certainly not improve decisions on FTO.

    One can only approve the position taken by the District Court of the Hague. Let’s hope the Appeal Court sticks to this view.

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