Scientific Limited, [1998] EWHC Patents 350 (26th June, 1998)

Scientific Limited, [1998] EWHC Patents 350 (26th June, 1998)

The proposed amendment to the claim introduces a feature (second bars extending on the circumference of a circle perpendicular to the longitudinal axis) that is not disclosed in the original application except in a specific context. Incorporating this feature into the claim as a general limitation constitutes added matter contrary to section 76 of the Patents Act 1977 and Article 123 EPC. Therefore, the amendment cannot be allowed. Since the unamended claim is conceded to be invalid, and amendment is refused, the patent must be revoked.

Citation
[1998] EWHC Patents 350
Parties
Plaintiff/petitioner/alleged Infringer: Boston; Defendant/respondent/patentee: Dr Julio Palmaz; Defendant/respondent/patentee: Expandable Grafts Partnership
Jurisdiction
England and Wales
Procedural Posture
Patent Revocation and Infringement / Trial Judgment on Amendment and Validity
Outcome
Patent revoked
Legal Topics
Patent Amendment, Patent Revocation, Patent Infringement, Discretion to Amend, Added Matter, European Patent Convention Procedures
Intellectual Property Patent Law Patent Amendment Patent Revocation Patent Infringement Discretion to Amend Added Matter European Patent Convention Procedures

Case Brief

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Parties

Boston

Plaintiff/petitioner/alleged Infringer

Dr Julio Palmaz

Defendant/respondent/patentee

Expandable Grafts Partnership

Defendant/respondent/patentee

Procedural Posture

Patent Revocation and Infringement / Trial Judgment on Amendment and Validity

Legal Issues

  1. 1 Whether the patent specification and claims of Palmaz I can be amended under UK law in light of concurrent EPO proceedings
  2. 2 Whether the proposed amendments add matter contrary to section 76 of the Patents Act 1977 and Article 123 EPC
  3. 3 Whether the court should exercise its discretion to allow amendment given the patentee's conduct and the EPO's approach

Ratio Decidendi

The proposed amendment to the claim introduces a feature (second bars extending on the circumference of a circle perpendicular to the longitudinal axis) that is not disclosed in the original application except in a specific context. Incorporating this feature into the claim as a general limitation constitutes added matter contrary to section 76 of the Patents Act 1977 and Article 123 EPC. Therefore, the amendment cannot be allowed. Since the unamended claim is conceded to be invalid, and amendment is refused, the patent must be revoked.

Court Disposition

Patent revoked

Orders

  • Application to amend refused
  • Patent EP (UK) 0 221 570 (Palmaz I) revoked