Fosroc International Ltd v WR Grace & Co - Conn

Fosroc International Ltd v WR Grace & Co - Conn

The amendment does not add matter; the combination of TIPA and TEA was disclosed in the unamended specification. The amended claims are not obvious in light of the prior art, as the skilled person would have no technical motivation to investigate other compounds or combine TIPA and TEA. The patent is not insufficient.

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 / Judgment After Hearing
Outcome
Amendment allowed; amended claims valid.
Legal Topics
Patent Amendment, Obviousness, Added Matter, Inventive Step, Insufficiency
Intellectual Property Patent Law Patent Amendment Obviousness Added Matter Inventive Step Insufficiency

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Parties

Fosroc International Limited

Claimant

W. R. Grace & Co.-Conn.

Defendant

Procedural Posture

Patent Revocation and Amendment / Judgment After Hearing

Legal Issues

  1. 1 Whether the proposed amendment to the patent adds matter contrary to section 76 of the Patents Act 1977 and Article 123(2) EPC
  2. 2 Whether the amended claims lack inventive step (obviousness)
  3. 3 Whether the patent is insufficient

Ratio Decidendi

The amendment does not add matter; the combination of TIPA and TEA was disclosed in the unamended specification. The amended claims are not obvious in light of the prior art, as the skilled person would have no technical motivation to investigate other compounds or combine TIPA and TEA. The patent is not insufficient.

Court Disposition

Amendment allowed; amended claims valid.

Orders

  • Amendment to claims allowed, subject to directions regarding specification alignment.
  • Declaration of validity of amended claims.