European Central Bank v Document Security Systems Incorporated

An amendment adds matter unless the subject matter is clearly and unambiguously disclosed, expressly or implicitly, in the application as filed when read through the eyes of the skilled addressee. Implicit disclosure covers what that reader would take for granted. It does not extend to matter which the reader could devise or would regard as obvious.

The assessment must avoid hindsight. The reader must approach the original application without knowledge of the amended patent. An unclear or puzzling document should not be strained to disclose a feature which its express teaching does not contain. Generalising from a particular disclosed example may itself add matter.

The European Central Bank applied to revoke a patent concerning security documents designed to produce visible interference when copied. Kitchin J held in [2007] EWHC 600 (Pat) that the granted patent contained added matter and ordered its revocation. He rejected challenges based on anticipation and obviousness.

The proprietor appealed the added-matter finding. The Bank advanced contingent challenges concerning obviousness and anticipation, but the Court of Appeal found it unnecessary to decide them. The central issue was whether the original application implicitly disclosed the granted claim's method of overlaying a slightly mismatching grid on an original image.

1. The appeal was dismissed. The granted claim contained added matter contrary to Article 123(2) of the European Patent Convention, as transposed by section 72(1)(d) of the Patents Act 1977. The contingent challenges concerning obviousness and anticipation did not require determination.

2. The added-matter inquiry requires the court to ascertain, through the eyes of the skilled addressee, the disclosures of the application as filed and the granted patent, and then compare them. The comparison is strict. Relevant matter has been added unless it was clearly and unambiguously disclosed in the application, expressly or implicitly. The claims form part of the disclosure under section 130(3) of the Patents Act 1977, although the application does not necessarily disclose everything falling within their scope.

3. Implicit disclosure includes matter which the skilled reader would take for granted. It does not include an amendment merely because the added feature would have been obvious from the application. The assessment must also avoid hindsight. The original application must be read without knowledge of the amended specification or of the feature for which support is being sought.

4. The application did not expressly disclose the overlaying of a grid on an original image. Nor was that feature necessarily implicit. Its detailed description instead taught the formation of image-defining lines, dots or swirls at a pitch mismatched to the copier's scanning mechanism. The grid shown in the figures represented the copying device's scanning protocol, rather than a grid superimposed on the document's artwork.

5. The description of distortion in a second-generation photocopy disclosed only the copying of an unprotected original. It did not disclose the full generality of the granted method. Extending that example to the overlaying of a mismatching grid would itself add matter. The evidence that a skilled person could devise such a method established, at most, an available or obvious implementation. It did not establish clear and unambiguous implicit disclosure. The application was confusing and should not be strained to supply teaching which it lacked.

1. Court of Appeal (Civil Division): In [2008] EWCA Civ 192, the court dismissed the proprietor's appeal and upheld the revocation for added matter. It found it unnecessary to determine the contingent challenges concerning obviousness and anticipation.

2. High Court, Chancery Division (Patents Court): Kitchin J held in [2007] EWHC 600 (Pat) that the patent was invalid for added matter and ordered its revocation. He rejected the attacks based on anticipation and obviousness.