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).
Last April we reported the case of Gedeon Richter plc v Bayer Schering Pharma AG [2011] EWHC 583 (Pat), concerning immediate release formulations of a combination contraceptive product containing the steroidal hormones drospirenone and ethinylestradiol. We can now report the decision of the Court of Appeal in this case (handed down on 7 March 2012)…
Litigation and EPO Oppositions/Appeals surrounding a controlled-release dosage form of the drug oxycodone, a morphine-like opioid analgesic developed in 1918, has kept Europe’s Pharma IP Lawyers busy for a couple of years. One of the key EP patents in this battle has been EP 722 730, and almost everything about this patent is out of…
The Court held that Pfizer’s Norwegian patent for use of sildenafil (a PDE 5 inhibitor) for treatment of erectile dysfunction was inventive. Although the court did not consider it inventive to test PDE V inhibitors for the treatment of erectile dysfunction as such, it held that the skilled person in so testing was confronted with…
On August 30, 2011 the Enlarged Board of Appeal rendered its decision on the admissibility of a disclaimer whose subject-matter is disclosed as an embodiment of the invention in the application as filed. It can be expected that the EPO will change its current restrictive practice in view of this decision, again allowing disclaimers for disclosed subject-matter under certain conditions. However, the Enlarged Board of Appeal did not endorse the view that disclaiming disclosed subject-matter is always allowable. Hence, until further Board of Appeal decisions will bring more clarity as to the specific situations in which such disclaimers are allowable, there will remain a degree of uncertainty.
The Borgarting Court of Appeal overturned the district court decision which revoked the patents in suit for lack of inventive step. The Court held that even if oxycodone had been known and used to treat pain as an alternative to morphine, the skilled person could not have predicted that a controlled release formulation with oxycodone…
In Denmark, a patentee may opt to apply for a utility model registration in addition to a patent, provided that the conditions for the grant of both rights are fulfilled. One of the strategic advantages of applying for both rights in Denmark is that the utility model registration is not subject to as thorough a…
Yesterday the Dutch Court of Appeal closed ranks with six out of nine jurisdictions in which the European Central Bank (ECB) started nullity actions against Document Security Systems’ (DSS) patent related to anti-forgery measures (EP 455 750). The Dutch Court of Appeal revoked the patent for added matter over the application as originally filed. The…
Following decision G 1/03, the Board concluded that a disclaimer that is used to remove subject-matter falling under the prohibition of Article 53(a) EPC in combination with Rule 28(c) EPC, is allowable. The full summary of this case has been published on Kluwer IP Law.
The Federal Court of Justice confirmed the legal reasoning of the Federal Patent Court that a company that continued the business of another company, while it was founded independently from the continued company and does not take over the trade name under which it conducted business, is not bound by a non-contest clause between the…
The selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) subrange, is not contestable under Article 123 (2) EPC when the ranges belong to the same list. However, the combination of an individual range from this list with another individual range from a second list that relates to…
