Vector Corporation v Glatt Air Techniques Inc.
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob,Lord Justice Wall,Lady Justice Smith |
| Judgment Date | 19 October 2007 |
| Neutral Citation | [2007] EWCA Civ 805 |
| Docket Number | Case No: A3/2006/1658 |
| Court | Court of Appeal (Civil Division) |
| Date | 19 October 2007 |
[2007] EWCA Civ 805
the Rt Hon Lady Justice Smith
the Rt Hon Lord Justice Jacob and
the Rt Hon Lord Justice Wall
Case No: A3/2006/1658
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Lewison
HC 05 C02523
Royal Courts of Justice
Strand, London, WC2A 2LL
Richard Arnold QC and Richard Davis (instructed by Withers & Rogers LLP) for the Appellant
Simon Thorley QC (Douglas Campbell was present at the 31 July hearing only) (instructed by Cripps Harries Hall LLP) for the Respondent
Hearing dates: 3 and 31 July 2007
Judgement
Lord Justice Jacob
This is my final judgment on this appeal. It supersedes earlier drafts and an oral judgment given following argument on 31 st July 2007 about the consequences of the first draft judgment. We indicated then that the appeal would be allowed and that a final single judgment would be handed down in due course.
Article 123(2) of the European Patent Convention provides:
A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
So far as is relevant here, the Patents Act 1977 provides:
76(3) No amendment of the specification of a patent shall be allowed … if it—
(a) results in the specification disclosing additional matter…
The wording is not quite the same (e.g. “matter” for “subject-matter”) but no one doubts that the meaning of s.76(3)(a) is exactly the same as that of Art 123(2). I so held in Merrell Dow v HH Norton 1 st October 1996. Since the case is unreported, I set out my reasons again:
Section 76 must be given a purposive construction. Its purpose is to stop patentees inserting information after filing which enables them to support their claims. The addition of information irrelevant to claims as sought to be amended is a mere explanation which harms no one and assists the public. There is apparently no direct authority in the United Kingdom relating to amendments of a patent specification by way of an additional acknowledgement of prior art.
However, there is a more general principle stated by Aldous J in Bonzel v Intervention (No 3) [1991] RPC 553 at 574. He stated the test for examining whether amendment involved the adding of subject matter to be as follows:
(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
It will be noted that Aldous J used the expression “subject matter” whereas s 76 does not use that expression; it merely uses the expression “matter”. Is there a difference? Article 123 of the European Patent Convention provides [I set it out].
It might be suggested that our draftsman in s 76 was intending to do something different from that in art 123 and more especially so because s 76 is not one of those sections which by s 130(7) of the Patents Act 1977 is expressly stated to be intended to have as near as is practicable the same effect as the corresponding article of the European Patent Convention. However, I have come to the firm conclusion that s 76 is not intended to have a different effect from art 123.
Mr Thorley points out that any such construction could lead to a perfectly absurd result. An amendment could be effected in the European Patent office to a patent application or, in the case of opposition proceedings, a granted patent which would be perfectly in accordance with the European Patent Convention but which, if there was a difference of meaning between s 76 and art 123, could result in invalidity here. That is too absurd for words. I think s 76 in this respect has exactly the same meaning as art 123.
In Richardson-Vicks' Patent [1995] RPC 568 at 576 I summarised the rule in a single sentence:
“I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.”
I went on to quote Aldous J in Bonzel. His formulation is helpful and has stood the test of time.
The reason for the rule was explained by the Enlarged Board of Appeal of the EPO in G1/93ADVANCED SEMICONDUCTOR PRODUCTS/Limiting feature [1995] EPOR 97 at [Reasons 9]:
“With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application.”
Mr Richard Arnold QC provided a clear articulation as to how the legal security of third parties would be affected if this were not the rule:
The applicant or patentee could gain an unwarranted advantage in two ways if subject-matter could be added: first, he could circumvent the “first-to-file” rule, namely that the first person to apply to patent an invention is entitled to the resulting patent; and secondly, he could gain a different monopoly to that which the originally filed subject-matter justified.
Kitchin J has recently helpfully elaborated upon the Bonzel formulation in European Central Bank v Document Security Systems [2007] EWHC 600 (Pat), 26 th March 2007:
[97] A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s.130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed.
[98] Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge.
[99] Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed.
[100] Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV's Patent [2001] R.P.C. 25 at [195]–[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application.
[101] Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties.
[102] Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.
When amendment of a granted patent is being considered, the comparison to be made is between the application for the patent, as opposed to the granted patent, and the proposed amendment (see the definition of “additional matter” in s.76(1)(b)). It follows that by and large the form of the granted patent itself does not come into the comparison. This case was to some extent overcomplicated by looking at the granted patent, particularly the granted claim 1.
A particular, and sometimes subtle, form of extended subject matter (what our Act calls “additional matter”) is what goes by the jargon term “intermediate generalisation”. Pumfrey J described this in Palmaz's European Patents [1999] RPC 47, 71 as follows:
“If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not...
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