An amendment of independent patent claim 1 during prosecution introduced a new feature. According to the Examining Division this led to the combinations of features of dependent claims 2-4 to extend beyond the disclosure of the application as filed (Art. 123(2) EPC). The Board of Appeal held that the focus of the Examining Division was…

The main principles applicable for assessing whether a non-disclosed disclaimer meets the requirements of Article 123(2) EPC have been laid out in the decision G 1/03 of the Enlarged Board of Appeal (EBA) of the EPO. In the recent decision G 2/10 dated September 19, 2011 a new test for assessing the allowability of non-disclosed disclaimers, the so called “Remaining Subject-Matter Test”, has been established. In applying this test, disclaimers which in the past would have been considered to be allowable in view of G 1/03 may now be (and actually have been)found to actually be in violation of Article 123(2) EPC.

The Court held that a decision by the EPO relating to the UK designation was not capable of challenge. In any event, the procedure chosen by the claimant to challenge the decision (an application to correct the UKIPO register based on Rule 50 of the Patents Rules 2007) was wrong, because it required the consent…

Liversidge v (1) Owen Mumford Limited (2) Abbott Laboratories Limited In April 2011, the claimant commenced patent infringement proceedings in the UK Patents County Court (“PCC”) against the defendants in respect of European Patent No. 2067496 entitled “Medical Injector”. The defendants denied infringement and counterclaimed invalidity. Background The claimant filed a patent application for a…

The Court cited the parallel proceedings between the parties in the United Kingdom, where the approach of the EPO Board of Appeal in T331/87 Houdaille/Removal of Feature [1991] EPOR 194 was applied, and concluded that the changes in the patent amount to added matter. Click here for the full text of this case. A summary of…

Fairly recent case law of the EPO suggests that the concept of individualized disclosure may reach further than many people think. This can have severe implications for the validity of patents and patent applications, especially in the field of chemistry and life sciences. In the following these decisions and their potential consequences are analyzed and…

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.