Amendments

Amendments to a patent (application) are bound to strict rules under the European Patent Convention (EPC). According to Art. 123(2) of the 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).

Added matter, Amendments, Case Law, Infringement, Litigation, Patents, Pharma, Pharmaceutical patent, Plausibility, Revocation, Sufficiency of disclosure, United Kingdom, Validity

, , (Bristows)/

On 21 March 2023, Meade J gave a bumper judgment in the revocation action brought by Gilead in respect of two of NuCana’s patents from the same family (EP (UK) 2 955 190 and EP (UK) 3 904 365, the “Patents”), which relate to nucleoside analogues.   Filling 102 pages, the judgment raises a number of…

Amendments, Case Law, Patents, United Kingdom

(Bristows)/

Michael Tappin QC (sitting as a deputy judge of the High Court) It is common in English patent litigation for patentees to make an application to amend a patent post grant and in the course of litigation pursuant to section 75 of the Patents Act 1977 – for example in order to delete invalid claims…

Amendments, Case Law, Competition, Generics, Kluwer Patent Cases, Litigation, Patents, Pharma, Pharmaceutical patent, Procedure, Revocation, United Kingdom, Validity

(Bristows)/

On 15 to 17 December 2021 a three-day trial took place to determine preliminary issues in a second action brought by Neurim against Mylan in relation to patents protecting the product Circadin (“Neurim v Mylan 2021”).  Meade J’s judgment (Neurim Pharmaceutical (1991) Limited and Anor v Generics (UK) Limited t/a Viatris and Anor [2022] EWHC…

Amendments, Equivalents, Extent of Protection, Infringement, Litigation, Novelty, Patents, Pharma, Pharmaceutical patent, Prior art, Revocation, United Kingdom, Validity

(Bristows)/

On 15 October 2020 Meade J. handed down his first ever written judgment in his new role as a Judge of the High Court in MSD v Wyeth. The neutral citation for the case is [2020] EWHC 2636 (Pat) and a link to the judgment is found here. The Judge had heard the case back…

Amendments, EPC, EPO Decision, Patents

(Hoffmann Eitle)/ /1 Comment

by Sabine Möhle, Klemens Stratmann and Thorsten Bausch Decision T 1621/16 of Technical Board of Appeal 3.3.06 deals with a patent concerning a liquid hand dishwashing detergent composition. In a broader context, T 1621/16 will be of interest for practitioners struggling with the allowability of amendments under Article 123(2) EPC based on multiple selections from…

Amendments, Infringement, Italy, Patents, Procedure, Validity

(Trevisan & Cuonzo)/

In another post (here) I have discussed the procedure for seeking post grant limitation in the framework of Italian court proceedings, and the closing line of that post mentioned that another interesting point of discussion would be when such post-grant limitation should take effect vis-à-vis infringers. In fact, a few decisions have touched this issue…

Amendments, Case Law, EPC, EPO, EPO Decision, Opposition, Procedure

(GJE Intellectual Property)/ /11 Comments

T0969/14 is the latest in a long line of decisions which make it clear that the EPO Boards of appeal will not accept late filed requests which could have been filed in first instance proceedings, whether or not the submission of such requests might be perceived as a procedural abuse. One of the consequences of…

Amendments, China, Enforcement, Inventive step, Novelty, Pharmaceutical patent, Prior art, Scope of protection

(Baker & McKenzie), (Zy Partners), and (ZY Partners)/

A Markush claim is a type of claim commonly used in chemical and pharmaceutical fields. On December 20, 2017, in Beijing Winsunny Harmony Science & Technology Co., Ltd. v. Daiichi Sankyo Co., Ltd, (“Daiichi Sankyo Case”), the Supreme People’s Court (“SPC”) resolved a long standing-split among Chinese courts regarding the interpretation and amendment of Markush…

Amendments, Case Law, Italy, Procedure, Validity

(Trevisan & Cuonzo)/

After post grant limitations in court were introduced in Italy by the 2010 reform of the IP Code (IPC), there is hardly a patent validity case in which the patent holder does not play the card of limitation to counter the objections raised by the other party. Even before the reform of 2010, Italian patent…

(Indirect) infringement, Added matter, Amendments, Electrical Engineering, United Kingdom

(Bristows)/

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…