Vienna Higher Regional Court: Subject-matter not originally disclosed

Marc Keschmann obtained a complete declaration of invalidity of the patent in suit for our client before the Nullity Division and was also successful in the appeal proceedings before the Vienna Higher Regional Court.

The petitioner applied for a declaration of invalidity of the patent in suit on the grounds of lack of novelty, inventive step and because the subject matter of the patent in suit went beyond the content of the application as originally filed. The patent in suit was declared invalid by the Nullity Division due to extending beyond the original disclosure. The patent in suit relates to an intraocular lens insertion cartridge. According to the contested decision, the feature "the at least one peripheral projection (22) is spaced proximally from the plane of the opening" was not disclosed in the original application. 

In the grant proceedings, the claims were amended so that the granted claim 1 contains as a characterizing feature of the intraocular lens insertion cartridge not only, as originally, the at least one peripheral projection extending laterally from the outer wall of the nozzle proximal to the opening, but also the feature that this peripheral projection is spaced proximally from the plane of the opening in order to provide a limitation of the insertion depth and to prevent the complete insertion of the cartridge tip in use. The Patent Office's assessment is based on the interpretation that the newly added feature is to be understood as meaning that this protrusion must be proximally spaced from the plane of the opening as a whole, i.e. that the protrusion does not intersect or touch the plane of the opening at any point. 

The Court of Appeal agrees with this interpretation of the Nullity Division of the Austrian Patent Office. The feature contained in the claim that the projection is proximally spaced leaves no room for the patentee's interpretation that the projection does not have to maintain a proximal distance from the plane of the opening in its entirety, i.e. not over its entire length. This interpretation would mean that the projection could partially reach the plane of the opening or even intersect it; in this case, however, there is no distance. The patent in suit therefore has the feature that the peripheral projection as a whole must be spaced proximally from the plane of the opening. In the figures of the original application, however, only a projection at an angle to the plane of the opening can be seen which, although it is spaced from the plane of the opening in the lower, narrower area, approaches the plane of the opening in its distal course and finally intersects it or is flush with it. Even the functional identification of this feature in the main claim as granted cannot change the inadmissible extending beyond the original disclosure (OLG Wien 30.11.2023, 33 R 78/23t).