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T 2130/11 or how to escape the added matter – clarity trap for disclaimers

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.

Boost for Unitary Patent Package: CJEU dismisses Spanish challenge

The European Court of Justice (CJEU) has just rejected Spain’s challenge of the Regulations No 1260/2012 and No 1257/2012.

The eagerly awaited decision in the cases C-146/13 and C-147/13, implementing enhanced cooperation in the area of the creation of unitary patent protection, means an important obstacle for the creation of the Unified Patent Court and the Unitary Patent has been removed.

According to the CJEU’s press release, in Case C-146/13, Regulation (EU) No 1257/2012 ‘Spain contests (inter alia) the legality, in the light of EU law, of the administrative procedure preceding the grant of a European patent. It argues that that procedure is not subject to judicial review to ensu [...]

UK: Actavis Group PTC EHF v. Pharmacia LLC, High Court of England and Wales, Chancery Division, Patents Court, HP14A01503, 11 July 2014

The English High Court (Arnold J.) has granted an application for a stay of the UK High Court proceedings to revoke the UK designation of an EP patent pending the outcome of opposition proceedings at the EPO. The decision is unusual as Arnold J had previously refused to stay the validity proceedings in this case on several grounds including the lengthy duration of the EPO proceedings. Following Arnold’s first decision dated 11 July 2014, Pharmacia offered two additional undertakings, which led Arnold J. to tip the balance in favour of a stay.

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

EPO: T236/12, European Patent Office (EPO), Board of Appeal, 05291183.1, 14 November 2014

During examination poor quality drawings had been replaced by drawings that made more details visible. The opponent argued that replacement of these drawings by the original drawings, to overcome Article 123(2) objections, extended the scope of protection (Article 123(3)). The board concluded that the skilled person remained clearly able to determine what was protected, because the technical features of the claims had been discussed extensively and with sufficient detail in relation tothe drawings as filed with the application.

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


EPO: T1938/09, European Patent Office (EPO), Board of Appeal, ECLI:EP:BA:2014:T193809.20141002, 2 November 2014

A panel of the Enlarged Board of Appeal (EBA) of the EPO rejected a request to replace the EBA chairman for suspected partiality. The reasons for allowing such a request in decision R19/12 had since been removed because the chairman had discontinued all his managerial activities in the senior management committees of the EPO. Under the new circumstances it remained for the chairman to judge in each individual case to preserve a balance between his potentially conflicting judicial duties and his duties as vice-president of the EPO. Until proven otherwise, the chairman was presumed thus to avoid partiality.

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


Fordham Conference 2015 – Governments and IP

Lord Hoffman (former Court of Appeal judge and presently at Queen Mary University) spoke about what can be done to harmonise the law. He said that the governments of most jurisdictions accept that judges have some choice in how the law is developed. There is then a range of views of how much regard should be had of foreign decisions. Lord Hoffman stated that, although he thinks taking account of foreign judgments smacks of showing off, there are practical (and commercial) advantages in making English IP law the same as other jurisdictions (although he was less keen on this in constitutional or commercial law). In Europe there is advantage in the fact that the same text falls to be interprete [...]

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