European Central Bank v Document Security Systems Inc.

Added matter is assessed by comparing the application as filed with the patent as granted through the eyes of the skilled addressee. Subject matter is added unless clearly and unambiguously disclosed, expressly or implicitly. The test is not whether the amendment would have been obvious, and hindsight must be avoided.

A claim directed to scanning-type copying devices concerns the input scanning process, not output screening. Anticipation requires disclosure of the claimed method, or subject matter which would necessarily result in infringement. Conventional screen traps did not make a targeted scanner-pitch method obvious. The Patent was invalid for added matter, but the novelty, obviousness and insufficiency challenges failed.

The European Central Bank sought revocation of European Patent (UK) 0 455 750, which concerned a method of making security documents resistant to faithful replication by scanning-type copying devices. Document Security Systems Inc. had brought related infringement proceedings concerning Euro banknotes before the European Court of First Instance, but this claim concerned validity only.

The patent claims had been amended during proceedings before the EPO Board of Appeal, which allowed the appeal in T0933/95. The ECB alleged added matter, lack of novelty based principally on the UK 1987 Series D £10 note, obviousness over 011, Kurowski and common general knowledge, and insufficiency. The central questions were whether the amended claim added undisclosed subject matter and whether the patent was otherwise invalid.

The revocation claim succeeded. The Patent was invalid for added matter under the Patents Act 1977, section 72(1)(d). The allegations of lack of novelty, obviousness and insufficiency failed.

1. Construction and skilled team. Where a patent describes applications in different fields, the skilled addressee may be constituted by a team skilled in a particular application. For this patent, the relevant team included persons skilled in banknote design. “Scanning” bore its ordinary meaning: progressively capturing the input image in discrete lines. The scanning pitch in integer B therefore referred to the input scanner, not the printer’s output screening process.
2. Added matter. Applying the approach in Bonzel v Intervention Ltd [1991] R.P.C. 553, the application and patent had to be construed through the eyes of the skilled addressee and strictly compared. The relevant subject matter had to be clearly and unambiguously disclosed, expressly or implicitly. The claims formed part of the disclosure under section 130(3) of the Patents Act 1977, but the test was not obviousness. The application taught the integration and arrangement of lines, dots and swirls in the artwork. It did not disclose overlaying a grid on an original image to create the protected image required by integer D1. That feature was relevant to the inventive concept and the added-matter objection succeeded.
3. Novelty. Applying Synthon BV v SmithKline Beecham Plc [2005] UKHL 59, the £10 note disclosed no determination of scanner pitch, no suitably matched grid and no overlaying of that grid on an original image. Reproduction of the note would not necessarily involve the claimed method.
4. Obviousness. Using the structured approach in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59, the court found that 011 and Kurowski addressed conventional screen traps for halftone screening. They did not suggest the targeted use of a grid matched to a copying device’s scanning mechanism. Kurowski taught away from the claimed approach. The invention was not obvious.
5. Insufficiency. A specification had to enable the invention across the full width of the claim, but need not state every detail. Ordinary, non-inventive trial and error was permissible. The evidence did not establish any practical difficulty in determining scanning-line width, so this allegation failed.

The court was to hear further argument on the form of order if the parties could not agree.

This was a first-instance validity claim. The judgment records that the EPO Examining Division refused the proposed claims for obviousness and that the applicant’s appeal was allowed by the Board of Appeal after amendment of the claims: T0933/95.