Court of Appeal Adjourns Appeal for EPO Central Limitation Procedure

In Samsung vs. Apple at the English High Court, Samsung’s European patents EP1005726 and EP1714404 were revoked after it was found that neither patent was entitled to its priority date and that each was invalid due to intervening prior art. Samsung was given leave to appeal the High Court’s judgment provided that it prosecuted the appeal with due diligence. Samsung filed an appeal and subsequently submitted requests to the European Patent Office (EPO) to amend the claims in each of the patents using the EPO’s central limitation procedure. Any amendment made during central limitation at the EPO is examined to determine whether it complies with Article 123 EPC (added matter) and Article 84 EPC (clarity). The EPO does not examine the claims during the central imitation procedure to determine whether, for example, the subject-matter of the claims is novel or involves an inventive step. If an amendment is made to a patent post-grant, the amendment is deemed to have had effect from the date of grant of the patent (Articles 64 and 68 EPC). The amendments requested by Samsung do not correspond with any of the amendments made at trial. After filing the requests for central amendment at the EPO, Samsung requested adjournment of its appeal until the central limitation procedure had run its course at the EPO. In England, appeal before the Court of Appeal is a review of a prior decision rather than a re-hearing. Apple argued that in making the amendments at the EPO, Samsung was effectively seeking a re-hearing rather than a review of the previous decision. It submitted that Samsung should either: i) proceed with the appeal on the basis of the claims considered by the judge in the original trial and take no further steps with its request for central amendment at the EPO, or ii) abandon its appeal. The Court decided that the central limitation sought by Samsung did not constitute an abuse of process. The Court believed that there was a real possibility that the central limitation procedure would be finalised before the final conclusion of the appeal. In view of this, the Court decided to adjourn the appeal until the outcome of the central limitation procedure is known. The decision is available here.

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