Monsanto & Ors v. Merk & Co Inc & Anor [2000] EWHC Patents 154 (4th February 2000)

Monsanto & Ors v. Merk & Co Inc & Anor [2000] EWHC Patents 154 (4th February 2000)

The patent specification presents a class of compounds as anti-inflammatory agents with fewer and less drastic side effects, the reduction in side effects being due to COX-II selectivity. The amendment sought is a legitimate limitation to a sub-class already disclosed and does not add matter. However, the patent as proposed to be amended still discloses matter not in the application as filed and is invalid for this reason.

Citation
[2000] EWHC Patents 154
Parties
Patentee: Claimants; Alleged Infringer: Defendants
Jurisdiction
England and Wales
Procedural Posture
Patent Infringement and Validity / First Instance Judgment
Outcome
Patent as proposed to be amended is invalid for added matter; amendment not allowable in law.
Legal Topics
Patent Infringement, Patent Validity, Anticipation, Obviousness, Insufficiency, Added Matter, Amendment of Patent Claims
Intellectual Property Patents Patent Infringement Patent Validity Anticipation Obviousness Insufficiency Added Matter +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 2 Authorities cited 4 Party arguments 2
Sign in to unlock

Parties

Claimants

Patentee

Defendants

Alleged Infringer

Procedural Posture

Patent Infringement and Validity / First Instance Judgment

Legal Issues

  1. 1 Whether the defendants' product (MK-966/Vioxx/rofecoxib) infringes European Patent (UK) 0 697 157
  2. 2 Whether the patent is invalid for anticipation, obviousness, insufficiency, or added matter
  3. 3 Whether the proposed amendment to the patent is allowable or introduces added matter

Ratio Decidendi

The patent specification presents a class of compounds as anti-inflammatory agents with fewer and less drastic side effects, the reduction in side effects being due to COX-II selectivity. The amendment sought is a legitimate limitation to a sub-class already disclosed and does not add matter. However, the patent as proposed to be amended still discloses matter not in the application as filed and is invalid for this reason.

Court Disposition

Patent as proposed to be amended is invalid for added matter; amendment not allowable in law.

Orders

  • Amendment to patent claims refused on grounds of added matter
  • Patent declared invalid for added matter