Smith & Nephew Plc v Convatec Technologies Inc

Smith & Nephew Plc v Convatec Technologies Inc

The amendments to claim 1 do not constitute added matter as the application as filed disclosed the use of gel forming fibres generally, not limited to sodium CMC, and the cumulative combination of features in the amended claim. The invention as claimed is not obvious over Gibbins or Kreidl, as the skilled person would not be led by the prior art to the claimed invention without hindsight. The patent is sufficiently clear and enabled for the skilled person to perform the invention.

Parties
Claimant: Smith & Nephew Plc; Defendant: Convatec Technologies Inc.
Jurisdiction
England and Wales
Judgment Date
13 June 2012
Procedural Posture
Patent Revocation Action / Judgment After Trial
Outcome
Amendment allowed; patent as amended held valid.
Legal Topics
Patent Amendment, Obviousness, Added Matter, Insufficiency, Construction of Claims
Intellectual Property Patents Patent Amendment Obviousness Added Matter Insufficiency Construction of Claims

Case Brief

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Parties

Smith & Nephew Plc

Claimant

Convatec Technologies Inc.

Defendant

Procedural Posture

Patent Revocation Action / Judgment After Trial

Legal Issues

  1. 1 Whether the proposed amendment to claim 1 constitutes added matter under s76(3) of the Patents Act 1977
  2. 2 Whether amended claim 1 is obvious over Gibbins or Kreidl prior art
  3. 3 Whether the patent is insufficient for lack of clarity or enablement

Ratio Decidendi

The amendments to claim 1 do not constitute added matter as the application as filed disclosed the use of gel forming fibres generally, not limited to sodium CMC, and the cumulative combination of features in the amended claim. The invention as claimed is not obvious over Gibbins or Kreidl, as the skilled person would not be led by the prior art to the claimed invention without hindsight. The patent is sufficiently clear and enabled for the skilled person to perform the invention.

Court Disposition

Amendment allowed; patent as amended held valid.

Orders

  • Amendment to claim 1 allowed under s75 of the Patents Act 1977
  • Patent as amended is valid