December 20, 2022
The Manual of Patent Practice has been updated to reflect developments in case law.
Section 2: Novelty, has been updated at paragraph 2.08.1 on prior disclosure in the light of Zebra Technologies Corporation (BLO/653/22). Paragraph 2.08.1 states that care should be taken when relying on dimensions derived from drawings. It was held by the EPO Board of Appeal in Decision T204/83 (OJEPO 10/85) that although features shown solely in a drawing form part of the state of the art when a skilled person could derive a technical teaching from them without further description, it is not generally possible to derive a technical teaching by measuring dimensions in a diagrammatic representation; and that dimensions obtained under these circumstances do not therefore form part of the state of the art. In Zebra Technologies the Hearing Officer clarified that there is a distinction between: (i) reading specific dimensions from a drawing where no dimensions are given and attempting to use that information to derive a technical teaching; and (ii) deriving general information from drawings about components and their shape, function etc. The former is unlikely to be appropriate as per T204/83, whereas there is nothing wrong in principle with the skilled person doing the latter.
Section 13: Mention of inventor, has been updated at 13.12 in light of Thaler’s Application (BLO/447/22) (where it was held that an AI machine could not be named as inventor) to set out when the requirements of s 13(2) of the Patents Act 1977 will be considered has having been met in the case of converted European applications and international applications that enter the UK national phase. Section 89B: Adaptation of provisions in relation to international application has also been updated in light of Thaler’s Application to provide that a preliminary examiner is permitted to determine, during the national phase, whether the requirements of s 13(2) have been met.
Paragraph SPM 3.03.1 relating to the Medicinal Regulation (469/2009/EC) in the “Supplementary Protection Certificates for Medicinal and Plant Protection Products” section of the Manual has also been updated. SPM 3.03.1, which discusses Article 3(b) of the Regulation (which provides that a valid authorisation to place a product on the market as a medicinal product must have been granted in order to obtain a patent certificate), now includes reference to Roche Glycart AG BL O/711/22, in which the marketing authorisation used to support an SPC application for a so called “loose combination” was found not to comply with Article 3(b). Where the marketing authorisation stipulated that obinutuzumab was to be used in combination with the anti-neoplastic agent bendamustine, the hearing officer found that restrictions had been placed on the marketing of obinutuzumab, and the marketing authorisation did not constitute placing bendamustine on the market. The marketing authorisation provided was therefore found to relate to the antibody obinutuzumab alone.
To access the updated Manual, click here.