European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192 (19 March 2008)

European Central Bank v Document Security Systems Incorporated [2008] EWCA Civ 192 (19 March 2008)

The Court held that the features of claim 1 relating to overlaying a grid pattern on the original image (features D1 and D2) were not disclosed, either expressly or implicitly, in the application as filed. The application described incorporating lines, dots, or swirls into the image itself, not overlaying a separate grid. The skilled person would not derive the claimed method from the application without adding to the disclosure. Therefore, the patent as granted contained added matter contrary to Article 123(2) EPC and s.72(1)(d) Patents Act 1977.

Citation
[2008] EWCA Civ 192
Parties
Claimant/respondent: European Central Bank; Defendant/appellant: Document Security Systems Incorporated
Jurisdiction
England and Wales
Judgment Date
19 March 2008
Procedural Posture
Patent Revocation Appeal / Court of Appeal Judgment
Outcome
Appeal dismissed; revocation of the patent upheld
Legal Topics
Added Matter, Patent Revocation, Patent Validity, European Patent Convention Article 123(2), UK Patents Act 1977 S.72(1)(d)
Intellectual Property Patents Added Matter Patent Revocation Patent Validity European Patent Convention Article 123(2) UK Patents Act 1977 S.72(1)(d)

Case Brief

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Parties

European Central Bank

Claimant/respondent

Document Security Systems Incorporated

Defendant/appellant

Procedural Posture

Patent Revocation Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether claim 1 of the granted patent contains added matter contrary to Article 123(2) EPC and s.72(1)(d) Patents Act 1977
  2. 2 Whether the patent as granted extends beyond the content of the application as filed

Ratio Decidendi

The Court held that the features of claim 1 relating to overlaying a grid pattern on the original image (features D1 and D2) were not disclosed, either expressly or implicitly, in the application as filed. The application described incorporating lines, dots, or swirls into the image itself, not overlaying a separate grid. The skilled person would not derive the claimed method from the application without adding to the disclosure. Therefore, the patent as granted contained added matter contrary to Article 123(2) EPC and s.72(1)(d) Patents Act 1977.

Court Disposition

Appeal dismissed; revocation of the patent upheld

Orders

  • Patent EP UK 0 455 750 remains revoked
  • No need to consider cross-appeal on obviousness or anticipation