The Dutch District Court of The Hague has construed its power as a national court under the EPC 2000 on the issue of partial revocation (article 138 EPC). In Boston Scientific v Expandable Grafts Partnership the court held that, if the patent owner submits patentable limited claims, the material grounds to refuse those claims are limited to new matter or extension of protection.
Partial revocation in the Netherlands
Partial revocation in the Netherlands involves conditions unknown in many other jurisdictions. In its decision Spiro Research v Flamco (1996) the Dutch Supreme Court (Hoge raad) decided that limitation of claims in court proceedings is not possible unless, in view of the patent and the prior art, it is beforehand obvious to the skilled person that the patent should only have been granted according to the limitation. The limitation should not in fact lead to another patent.
This provides legal certainty to third parties that want to practise invalid claims of a patent, arguably filling a void in the Dutch patent act. But the decision has been criticized as too harsh on patent owners. Complete and lasting invalidation of the patent may be inescapable even if the description contains a solution to distinguish it from late-found prior art, when that solution is not objectively unique.
Enter the EPC 2000
European limitation according to the EPC 2000 undercuts the additional national conditions on limitation from Spiro Research v Flamco. The text of old article 138(2) EPC that arguably allowed the additional conditions during court proceedings is not present in the EPC 2000. The District Court concluded from legislative history that the legislator had the purpose to harmonise revocation, which meant that the new article 138(3) precluded material grounds for refusing limitation beyond new matter and extension of protection. It is yet to be seen whether the additional conditions will remain in place for Dutch patents granted outside the European system.
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| Lars de Haas |