Fosroc International Ltd v WR Grace & Co - Conn [2010] EWHC 1702 (Pat) (12 July 2010)

Fosroc International Ltd v WR Grace & Co - Conn [2010] EWHC 1702 (Pat) (12 July 2010)

The proposed amendments do not add matter because the combination of TIPA and TEA is disclosed in the application as filed and the specification; no new subject matter is introduced. The amended claims are not obvious over the cited prior art because the skilled person at the priority date would have had no technical motivation to investigate TIPA as an alternative to TEA, nor to combine TIPA and TEA, and the prior art did not teach or suggest the claimed combination or its effects. The failure of the art to arrive at the invention over many years supports non-obviousness. The amendments are allowable and the patent as amended is valid.

Citation
[2010] EWHC 1702 (Pat)
Parties
Claimant: Fosroc International Limited; Defendant: W. R. Grace & Co.-Conn.
Jurisdiction
England and Wales
Judgment Date
12 July 2010
Procedural Posture
Patent Revocation and Amendment Proceedings / First Instance Judgment
Outcome
Amendment application allowed; patent as amended held valid; revocation refused.
Legal Topics
Patent Amendment, Added Matter, Inventive Step, Obviousness, Non Infringement
Intellectual Property Patents Patent Amendment Added Matter Inventive Step Obviousness Non Infringement

Case Brief

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Parties

Fosroc International Limited

Claimant

W. R. Grace & Co.-Conn.

Defendant

Procedural Posture

Patent Revocation and Amendment Proceedings / First Instance Judgment

Legal Issues

  1. 1 Whether the proposed amendments to the patent add matter contrary to section 76 of the Patents Act 1977 and Article 123(2) EPC
  2. 2 Whether the amended claims lack inventive step (are obvious) over the prior art
  3. 3 Whether the patent as amended is insufficient

Ratio Decidendi

The proposed amendments do not add matter because the combination of TIPA and TEA is disclosed in the application as filed and the specification; no new subject matter is introduced. The amended claims are not obvious over the cited prior art because the skilled person at the priority date would have had no technical motivation to investigate TIPA as an alternative to TEA, nor to combine TIPA and TEA, and the prior art did not teach or suggest the claimed combination or its effects. The failure of the art to arrive at the invention over many years supports non-obviousness. The amendments are allowable and the patent as amended is valid.

Court Disposition

Amendment application allowed; patent as amended held valid; revocation refused.

Orders

  • Amendment of claims as proposed by Grace allowed.
  • Patent to proceed as amended.