Curt G. Joa, Inc v Fameccanica Data SpA

An amendment to a patent specification is impermissible if it discloses matter additional to the application as filed. Patent claims must be construed according to their natural meaning, read in the context of the specification. Reference numerals may help identify illustrated features, but cannot be used to restrict or alter the claim’s meaning.

Where a patent describes breathable bonded layers, the court may infer the structure of the claimed vent from the specification as a whole. An amendment expressly requiring a different structure can therefore add matter. Claims also lack clarity where the skilled person cannot understand how their technical requirements operate together. The proposed amendments were consequently refused.

The claimant sought revocation of the defendant’s European patent for disposable absorbent garments. The defendant made unconditional and conditional applications to amend the patent, and the parties agreed that the amendment applications and the patent’s validity would stand or fall by reference to the conditional amended claims.

The claimant relied on European Patent Application No. 0685586 (Coslett), alleging added matter, lack of clarity, lack of novelty and lack of inventive step. The central issues were the construction of the claimed bonded vent sites, whether the amendments added matter beyond the application as filed, whether the claims were clear, and, if the amendments were lawful, whether they were novel and inventive.

1. Construction. The natural meaning of the specification supported the claimant’s construction: ultrasonic bonding created holes in the inner, outer and stretchable layers, producing breathable vent sites. “Bond site” and “vent site” were used interchangeably. Reference numerals could permissibly identify the illustrated feature marked “100”, but could not themselves determine the scope of the claims, applying Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062 and Jarden Consumer Solutions (Europe) Ltd v SEB SA [2014] EWCA Civ 1629.
2. Added matter. The prohibition in section 76(3)(a) of the Patents Act 1977 concerns matter additional to the application as filed, rather than merely additional to the patent specification being amended. The application as filed disclosed vent sites with holes in all three layers. It did not disclose sites with no holes in the inner and outer layers. The proposed claims therefore disclosed additional matter.
3. Clarity. The proposed claims were unclear because the skilled person could not understand how the inner and outer layers could bond through the aperture in the stretchable layer while leaving a breathable vent, on the defendant’s proposed construction. The requirement that the aperture be larger than the bond site was otherwise sufficiently clear.
4. Novelty and inventive step. Had the amendments been lawful, amended claim 9 would have been novel over Coslett because Coslett disclosed neither the claimed absence of apertures in the inner and outer layers nor annular vents. The amended claims would also have involved an inventive step because the skilled person would not have derived annular vents from Coslett.
5. Disposition. Both amendment applications were dismissed. The patent stood to be revoked.