Smith & Nephew Plc v Convatec Technologies Inc [2012] EWHC 1602 (Pat) (13 June 2012)

Smith & Nephew Plc v Convatec Technologies Inc [2012] EWHC 1602 (Pat) (13 June 2012)

The amendment to claim 1 does not add matter because the application as filed, when read through the eyes of the skilled person with common general knowledge, discloses the use of gel forming fibres generally and not just sodium CMC gel forming fibres. The combination of features in the amended claim is supported by the application as filed. The change in phrasing does not introduce new subject matter. The amendments are therefore allowable under s76(3) of the Patents Act 1977.

Citation
[2012] EWHC 1602 (Pat)
Parties
Claimant: Smith & Nephew Plc; Defendant: Convatec Technologies Inc.
Jurisdiction
England and Wales
Judgment Date
13 June 2012
Procedural Posture
Patent Revocation and Amendment Proceedings / First Instance Judgment
Outcome
Amendment allowed; added matter attack rejected
Legal Topics
Patent Amendment, Added Matter, Obviousness, Sufficiency, Construction of Claims
Intellectual Property Patent Law Patent Amendment Added Matter Obviousness Sufficiency Construction of Claims

Case Brief

Summary, issues, holding and outcome

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Parties

Smith & Nephew Plc

Claimant

Convatec Technologies Inc.

Defendant

Procedural Posture

Patent Revocation and Amendment Proceedings / First Instance Judgment

Legal Issues

  1. 1 Whether the proposed amendment to claim 1 of the patent adds matter contrary to s76(3) of the Patents Act 1977
  2. 2 Whether claim 1 as amended is obvious over the prior art (Gibbins and Kreidl)
  3. 3 Whether claim 1 as amended is insufficient

Ratio Decidendi

The amendment to claim 1 does not add matter because the application as filed, when read through the eyes of the skilled person with common general knowledge, discloses the use of gel forming fibres generally and not just sodium CMC gel forming fibres. The combination of features in the amended claim is supported by the application as filed. The change in phrasing does not introduce new subject matter. The amendments are therefore allowable under s76(3) of the Patents Act 1977.

Court Disposition

Amendment allowed; added matter attack rejected

Orders

  • Claim 1 as amended is allowable; amendments permitted
  • No added matter found under s76(3) Patents Act 1977