Decision in TRAVATAN® appeal relaxes rules on disclaimers

Oliver Kingsbury of Elkington+Fife won an important case for client Novartis, when he successfully defended the key patent protecting the drug TRAVATAN®, in appeal T 1872/14 at the European Patent Office.

From a legal point of view, a significant outcome was that Board 3.3.01 was persuaded not to follow Board 3.3.07’s opinion, as stated in decision T 1222/11, in respect of disclaimers. The Board in T 1222/11 had decided that a so-called "undisclosed" disclaimer could not be used to restore the right to priority and simultaneously restore novelty, where an earlier patent application by the same applicant had disclosed examples falling within the scope of the claims (thereby causing a loss of priority in respect of the examples and consequently a lack of novelty over the earlier application).

For patentees, the new decision in T 1872/14 may prove to be a useful antidote to T 1222/11 in such cases of accidental "self collision", in which a patent would otherwise be held invalid because of an earlier, more limited disclosure by the same applicant.

We will report in greater detail when the written decision is issued.