EPLAW Patent Blog

European Patent Office - Practice to correct text of granted patents has to cease

EPO, Enlarged Board of Appeal, decision of July 23, 2012 in case G 1/10, to be published in OJ EPO – Request to correct patent/FISHER-ROSEMOUNT

In the case underlying the referral of a point of law to the Enlarged Board of Appeal (EBA), the patent had been opposed on the grounds that a feature in claim 1 of the granted patent had not been disclosed in the application as filed. The proprietor of the patent argued that this resulted from a typographical error made when amending this claim during grant proceedings and that the word “position” in this feature should read “portion”.

On his request, the opposition division took the interlocutory decision to stay opposition proceedings and to remit the case to the examining division for a decision on the proprietor’s request for correction of the decision to grant under Rule 140 EPC. On the opponent’s appeal, the Board of Appeal considered that there was a fundamental point of law and referred the questions to the EBA whether a request for correction of the grant decision filed after the initiation of opposition proceedings is admissible and, if yes, whether the examining division’s decision is binding upon the opposition division.

The EBA answered the questions as follows:

1. Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor’s request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings.

2. In view of the answer to the first referred question, the second referred question requires no answer.

In the reasons for the decision, the EBA emphasizes the need for legal certainty and the protection of third parties and notes that the proprietor has adequate remedies available to ensure that the text of the granted patent is correct.

 

NL - Ratiopharm v. Eli Lilly / Olanzapine patent invalid

Ratiopharm GmbH, Ratiopharm Nederland B.V., Ratiopharm B.V. v. Eli Lilly and Co Ltd., District Court The Hague, The Netherlands, 24 March 2010, Case No. 2008/2126, including the English translation, with thanks to Chantal Morel & Moïra Truijens, Klos Morel Vos & Schaap

Now including the English translation and a summary/comments in English

The Dutch part of Eli Lilly's patent and SPC re olanzapine was found to be invalid since the  substance olanzapine was  already directly and unambiguously disclosed in the earlier Schauzu publication. The error in Schauzu will, according to the court in The Hague, immediately be recognized by the man skilled in the art. The way this error can be corrected can also directly be derived from Schauzu. There is no trigger for the man skilled in the art to consult an other document.

The court further states that it realizes that its decision deviates from earlier decisions in the United States, China, The Czech Republic, Slovakia, Romania, Ukraine, Russia, Germany, United Kingdom, Austria and Spain. The patent was also invalidated in Canada, but based on a different argument (not a valid selection patent).

Read the decision (in Dutch) here.
Read the decsion (in English) here.

Read a summary in English and comments (provided by András Kupecz and Peter Meyer) here.

FR - Johnson&Johnson v. Novartis

Johnson&Johnson c.s. v. Novartis, infringement and invalidity proceedings, Tribunal de Grande Instance, Paris, France, 25 March 2009, Docket No. 07/13504, with thanks to Pierre Véron, Véron & Associés

This action is part of the wider (ophthalmic lens) dispute between the same parties in the US, Australia and various European countries (Germany, Britain and Italy).

Although the translation into French replaces a neologism with a periphrasis, this does not lead to the modification of the scope of the patent as claimed in the original version thereof.

The contradiction between the two formulae given in the specification has no impact on the sufficiency of disclosure.

An insufficiency of result does not affect the validity of the patent. At best, this  is insufficient support of the claim by the specification.

The invention in question does not, for the skilled person, appear to derive in an obvious manner from the prior art and must therefore be considered to involve an inventive step. The injunction and destruction measures sought under the conditions set forth in the enacting part of the present decision are confirmed.

Read the judgment (in French) here.

Read the judgment (in English) here.