||All England Reporter
|| All ER (D) 150 (Jun)
|| EWHC 1367 (Pat)
||Chancery Division (Patents Court)
||Guy Burkill QC and Thomas Hinchliffe (instructed by Ashurst) for the claimant.
||Michael Silverleaf QC and Mark Vanhegan (instructed by HGF Law, Leeds) for the defendants.
||15 June 2007
Patent - Specification - Amendment of specification with leave of court - Substantial material contained within application as filed being excised from patent as granted to claimant - Claimant applying to amend specification - Whether comparison to be made with specification prior to amendment or application as filed - Whether application as filed disclosing proposed amendment - , s 76.
Patent Specification. The application of the claimant, who had been granted a European patent in respect of a power transfer unit, to amend the patent, alleging that, as amended, it was both valid and infringed, would be refused. Substantial material contained within the application for the patent as filed had been excised from the patent as granted. Given that the provisions of art123 of the European Patent Convention applied during opposition proceedings which took place after grant and in respect of a patent, the specification of which might have been amended during prosecution, it would be an unjustifiable departure from the overall scheme of European patent law if s76(3)(a) of the required the necessary comparison to be made with the specification prior to the amendment rather than with the application as filed. In the instant case, the necessary comparison had to be performed with the application as filed. However, the amendment claimed a new combination not described either in the application as filed or in the text of the patent as granted.
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