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Photo of UK High Court aligns with EPO approach on amendments from different embodiments

UK High Court aligns with EPO approach on amendments from different embodiments

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His Honour Judge Hacon handed down a UK High Court decision on 25 October that you could have been fooled into thinking had been decided by the EPO.  Typically, the UK courts are more lenient on added-subject matter than the EPO.  However, in the Philip Morris v. British American Tobacco (PMI v. BAT) decision, the judge found that amendments arising from different embodiments disclosed in the description were not allowable.

In more detail

The case involves EP3367830 and amendments proposed by the proprietor (BAT) during court proceedings.  EP’830 relates to so-called “heat not burn” products, in which tobacco is heated to release an aerosol including nicotine (amongst other chemicals) rather than burning the tobacco and producing smoke.  Thus, the user avoids the damage of smoke inhalation.

EP’830 as granted includes claims to a method, a product and to a system.  Importantly, they are drafted to cover a complete apparatus that is suitable to heat a smokable material and includes a heater.  The description describes this apparatus in detail and also discloses a different embodiment in which the heater could be incorporated in a consumable cartridge (i.e. the smokeable material including the heater that is then inserted into the apparatus for use).  This second embodiment was not claimed.

The proprietor sought, amongst other amendments, to specify that “A system, comprising…Apparatus (100) for heating smokable material comprising tobacco to volatilise at least one component of the smokable material, and…a heater (115)… wherein the heater extends to opposite longitudinal ends of the mass of smokable material…”. 

In other words, the apparatus with a heater now specifically outlines that the heater extends to the end of the smokeable material.  While the heater extending in this manner was disclosed explicitly in the application, it was only disclosed in the context of the heater being incorporated into the consumable cartridge with the smokeable material.  The description only ever mentions the heater having this form when part of the smokeable material (i.e. the consumable) – there is no disclosure of this feature in the wider context of the apparatus with a heater.

It was argued by the proprietor that the “application teaches that it is beneficial for the heater to extend to opposite longitudinal ends of the mass of smokable material because that can help provide more uniform heating of the smokable material”.  In other words, the skilled person would understand that the benefit of the extending heater applies whether it was in the consumable cartridge or the apparatus.  PMI argued that while the skilled person would have understood the advantage in the context of the consumable cartridge embodiment, it was not disclosed in relation to the apparatus embodiment.

The judge agreed with PMI and found that the amendment was “not clearly and unambiguously disclosed in the application either explicitly or implicitly” and, as such, was not allowable in the proposed amended claims.

Final comments

This stance may have wider implications than just the UK court alignment with the EPO.  Differing drafting styles can often cause issues in prosecution in different jurisdictions.  Optional additional features are often preferable before the EPO, due to its incredibly strict application of added-subject matter rules.  However, US style drafting often resists indicating preferable features of inventions to avoid unhelpful claim construction in the US.  Thus, there are good reasons to draft in a certain way for different jurisdictions – a successful multi-jurisdiction patent strategy requires a careful approach to patent drafting with an appreciation of how wording could be interpreted differently in different territories.

The full decision can be found here.

Dr Emma Palmer