InternationalUSRemember you can easily switch between MIP US and MIP International at any time

Europe: Restrictions on the right to amend patent claims




In its decision HIGH POINT SARL v KPN BV, the Dutch Supreme Court held that the right of the patentee to limit a European patent before the national courts, as defined by the European convention (EPC) article 137(3), may be restricted by national procedural conditions. Accordingly, the Dutch courts may refuse to consider limited claims that give rise to a new debate about patent validity after filing the grounds of appeal.

The extent of the right to limit the claims was a matter of interpretation of the EPC. The Supreme Court found that the plain text of article 137(3) EPC did not exclude imposing national procedural conditions on the right to limit the patent. The legislative history did not show an intention to harmonise procedural law in this respect. The legislator introduced article 137(3) EPC only because the right to limit the patent claims was not, or insufficiently, guaranteed in some of the contracting states. Furthermore, the court noted that use of procedural conditions was accepted in other states.

The Supreme Court upheld the criteria used by the court of appeal for denying the right to limit the patent. The court of appeal's reason for denying this right was that the limitation would give rise to a new debate about validity after filing the grounds of appeal. The court of appeal was allowed to find this based on the fact that the added limitation was not used for an elaboration or more accurate definition of an earlier argument, and that it introduced a wholly new element in the proceedings.

Lars de Haas

V.O.
Carnegieplein 5, 2517 KJ
The Hague
The Netherlands
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99


Comments






profile

Managing IP

ManagingIP

ManagingIP profile

Mexico amends its trade mark opposition system https://t.co/FOWV5GmVo6 Legislation that amends Mexico’s trade mark… https://t.co/X6imNoP8dL

Apr 20 2018 02:41 ·  reply ·  retweet ·  favourite
ManagingIP profile

Lijun Kong and Quan Kang of DEQI analyse a number of cases in which the courts have considered supplementary experi… https://t.co/av6fDpHQNy

Apr 20 2018 01:00 ·  reply ·  retweet ·  favourite
ManagingIP profile

Tina Tai and Guo Yu of China Patent Agent examine the difficulty of having supplementary experimental data consider… https://t.co/Ovz2zcbPOl

Apr 20 2018 08:00 ·  reply ·  retweet ·  favourite
More from the Managing IP blog


null null null

null null null

April 2018

Special Report: Will blockchain revolutionise IP?

In this special report, Managing IP looks at how blockchain technology will change intellectual property. Ellie Mertens analyses the issues and opportunities it presents for patents, trade mark and copyright



Most read articles

Supplements