Added Matter And Omnibus Claims: A UK Perspective

Environmental Recycling Technologies Plc v Upcycle Holdings Ltd [2013] EWPCC 4 - 5 February 2013.

Summary

This decision of the UK Patents County Court provides insight into the differences between UK and EPO practice. It demonstrates a possibly more lenient approach to amendments based solely on the drawings and confirms that omnibus claims are allowable in the UK, although their clarity was questioned.

Background

In June 2010, the claimant (ERT) commenced invalidity proceedings against the defendant (Upcycle) in respect of UK Patent 2460838 entitled "Process for moulding plastic articles". During the course of the proceedings the defendant applied to amend the patent so that it comprised a single independent claim 1 and a single omnibus claim 2.

Amended claim 1 was directed to a process. It generally corresponded to a combination of the features of claims 1, 2, 4, 5, 9 and 12 as granted. The claimant argued that this added matter over the application as filed because inter alia it defined use of a machine with a reinforcing structure but not an insulating jacket, whereas, they argued, use of such a machine with a reinforcing structure but without an insulating jacket was not disclosed in the application as filed. The defendant submitted that figure 4 of the patent showed a machine with reinforcing ribs and an insulating jacket which could be removed without changing the reinforcement structure. This was supported by evidence given at the trial by their expert witness.

The claimant also argued that amended claim 2 should be refused on discretionary grounds. The UK Patents Act 1977 states in s75(5) that: "in considering whether or not to allow an amendment...the court ... shall have regard to any relevant principles under the European Patent Convention". The claimant contended that, since the EPO only allows omnibus claims in exceptional circumstances and the defendant did not show any such circumstances, amended claim 2 should be refused as a matter of discretion.

Decision

HHJ Birss QC ruled in favour of the defendant and held the patent valid as amended.

Regarding claim 1, it was held that taking the application as filed as a whole and, in particular, keeping in mind what was disclosed by the drawings as supported by the expert evidence, the...