Patents: does additional matter matter?

HHJ Hacon has provided guidance on the impact of adding subject matter to a patent via his judgment in Curt G. Joa, Inc. v Fameccanica Data SpA [2017] EWHC 1251 (IPEC) (Curt).  In Curt, the patent in suit covered disposable absorbent garments, such as a diaper.

By way of background, to obtain a patent, applicants must submit a patent application detailing a description of the invention, a legal statement setting out the technical features of the invention which are to be protected by the patent and a summary of all the key technical aspects of the invention.

Applicants can amend their application or granted patent to include further information regarding the invention, providing any further information or clarification cannot be construed as 'additional matter'. Additional matter is generally considered to be information which discloses new information about the invention that was not originally contained in the patent application. If an amendment is deemed to include additional matter it can be rendered unlawful undersection 76 Patents Act 1977.

In Curt, the claimant sought revocation of the patent in suit on the basis that the invention lacked both novelty and an inventive step over the prior art. In defence, the defendant sought to amend the patent to include further information which they hoped would enable the patent to pass the novelty threshold and contain an inventive step.

Finding for the claimants, HHJ Hacon concluded that the inclusion of further information about the invention constituted disclosure of new information about the invention rather than a more general updated description, which would likely have been permitted. The patent was revoked. HHJ Hacon did go onto state that if the amendments to the patent had been lawful, the resulting patent would have been novel over the prior art and contained an inventive step.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.