Amendment

The rules ease?

In Boston Scientific Limited v Palmaz the particular issue related to a patent, Palmaz 1, for Stents to be used in coronary angioplasty. Palmaz 1 was applied for in the EPO in 1986; granted in 1991; revoked on opposition in 1993; on appeal subsequently revoked by the Opposition Division in 1998; and again appealed by the patentee so that the order for revocation did not take effect. A Technical Board of Appeal then set aside the order of the Opposition Division and granted the patent according to revised claims and “a description to be adapted thereto”.

In proceedings brought in the English Court, the Court took the view that it was quite wrong that the form of the description should still be unclear nearly two years after the Opposition was dismissed on the basis of the amended claims. The Court took the view that it was at least strongly arguable that the Technical Board of Appeal had to decide on the form of the specification itself, and not remit it to the Opposition Division as they had done.
The Court also concluded that since claim 1 in its unamended form was invalid as it stood, it must be amended in the English proceedings if it is not to be revoked. The Court considered that the delays, 11 years, since November 1996 when Palmaz 1 was applied for, leaving the Courts of the Contracting States in the unenviable position of having to decide the position of the parties to litigation while proceedings in the EPO slowly advanced, does the present system of examination and opposition no credit.

In addressing the question of amendment, the Judge took the view that it would be wrong for the English jurisdiction to impose requirements on Patentees seeking to amend which are substantially different in principle from those which are imposed by the EPO on patentees seeking to amend in the course of Opposition proceedings. Such an approach would lead to capricious results depending on whether the EPO or the UK Court disposed of the revocation proceedings and the associated application to amend first. The Judge felt that he should consider the amendments and should only refuse them if they resulted in a specification which was invalid or if the amendments offended against Section 76 (added matter).

The Judge was therefore prepared to allow the amendment subject to it producing a valid patent. He took the view that the amendments did not achieve that result; and refused the amendments.