Abbott v Sibio & anor (UPC_CoA_382/2024)
Decision date:
14 February 2025
Osborne Clarke summary
- Abbott made an application for provisional measures against Sibio, alleging infringement of a patent relating to an on-body device for sensing glucose levels in vivo. The application was denied at first instance by The Hague LD holding that the patent would more likely than not be held invalid due to an unallowable intermediate generalisation.
- Claim 1 of the patent was amended by Abbott during prosecution to include features from an exemplary embodiment of the invention in the description. At first instance, the Hague LD decided that omission of a feature from the description that specified the presence of an "elastomeric sealing member" in the device resulted in added matter. The Court of Appeal disagreed and overturned the decision.
- When deciding whether there is added matter, the Court of Appeal explained that the court must "first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content. Where, as here, the patent is a divisional application, this requirement applies to each earlier application." This test applied by the UPC is very similar to the EPO's gold standard test, but with arguably a greater emphasis on implicit disclosure.
- When applying this standard, the Court of Appeal decided that it was not more likely than not that the patent contained added matter and therefore it was not more likely than not that the patent would be held invalid in the main proceedings. The Court of Appeal noted that although several embodiments in the application made use of elastomeric or elastic materials for sealing, the original application also generally disclosed other ways to achieve sealing.
- When deciding whether it amounted to an intermediate generalisation, the court decided that the skilled person would understand that the exact method of sealing did not contribute to, and was not relevant to, the technical teaching of the invention as disclosed in the original application. The skilled person would understand that the object of the invention was to provide an on body device that was part of an applicator system, configured to handle insertion of an in vivo analyte monitoring system, that is easy-to-use, reliable and minimises both user inconvenience and pain. Therefore, the omission of an elastomeric sealing member did not amount to an unallowable intermediate generalisation.
Issue
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