Added matter or added subject-matter concerns the possibility to amend a patent (application). According to Art. 123(2) of the European Patent Convention (EPC), a European patent (application) may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. Adding subject-matter which is not disclosed would give an applicant an unwarranted advantage and could be damaging to the legal security of third parties. (G 1/93, OJ 1994, 541) The ‘gold standard’ of the European Patent Office’s Board of Appeal is that “any amendment can only be made within the limits of what a 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 documents as filed” (G 3/89, OJ 1993,117; G 11/91, OJ 1993, 125).
On 13 April 2018, the Barcelona Court of Appeal (Section 15) wrote a decision highly illustrative of the challenges that an “added matter” objection may raise in Spain, particularly in the context of preliminary injunction proceedings. The decision confirmed a ruling of 18 July 2017 from Barcelona Commercial Court number 4, which had lifted a…
In its judgment of 7 November 2017, X ZR 63/15 – Digitales Buch, the German FCJ (Bundesgerichtshof) took the opportunity to complete its Kommunikationskanal case law on the admissibility of a generalisation of a teaching in patent claims by the omission of specific features that have been taught in the examples of the patent application….
by Naomi Hazenberg and Olivia Henry The Court of Appeal has handed down judgment in IPCom v HTC ([2017] EWCA Civ 90), the latest instalment of the long running UK litigation on European Patent (UK) 1 841 268. Floyd LJ, writing the leading judgment, allowed IPCom’s appeal and dismissed HTC’s cross-appeal finding the patent (as…
The German Federal Court of Justice (FCJ) recently issued a second decision in a nullity lawsuit revolving around a windscreen for vehicles (Fahrzeugscheibe II, X ZR 41/14). While the first decision dealt with interesting questions regarding the transferability of the right to priority, the second one treads more conventional paths, yet it still contains a…
by Rachel Mumby Bexsero, the Meningitis B vaccine marketed by GSK, has been the subject of many newspaper headlines in the UK over the last year, with parents seeking to persuade the UK Government to offer the vaccine to all children under the age of 11 as a matter of routine. Few will have been…
Some Late Summer Thoughts about Molten Polymers and two Decisions by the German Federal Court of Justice Now that the unusual heat of this summer in central Europe finally seems to have ended, it might be a good point in time to activate our cerebral bio-polymers again. So let us muse about the melting of…
In T 2130/11 the Board held that a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03 if it was required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims.
On 24 March, 2015, the Enlarged Board of Appeal of the EPO, the final judicial arbiter of the interpretation of the European Patent Convention, issued Decision G 3/14 addressing the question of when, and to what extent, clarity objections could be raised by a party challenging the validity of a patent through the EPO’s Opposition…
The judgement “Schleifprodukt” rendered by the German Federal Court of Justice on 25 November 2014 could be seen as a step towards harmonisation with the EPO because the court carried out the test for the admissibility of claim amendments by assessing whether the feature combination of the amended claim in its entirety represents a technical teaching which is identifiable from the original application as being suitable for achieving the effects of the invention.
To the extent that summer 2014 existed at all in central Europe, experts agree that it is now definitely over. There is some controversy whether we ever had summer in Germany this year, but at least it was proven that life without air conditioning is possible. Meanwhile, the Munich IP Community is busily preparing for…
