Syngenta is the proprietor of European patent EP 90300779 filed on 25 January 1990 and issued March 23, 1994. Syngenta filed on September 28, 2009 a request to limit the scope of claim 8 of the French part of this patent to add to claim 8 the indication that the claimed composition further comprises a second active compound selected from a large list of compounds of various nature and functions.
The Director General of INPI ruled that this request does not constitute a limitation of the patent claims, but focuses on a different product that does not fall within the scope of previous claims.
The judgment of the Court of Appeal of Paris on 7 September 2011 rejected the appeal by Syngenta on the grounds that the decision of the Director General of INPI was justified because the limitation to a list of possible combinations did not precise composition as mentioned in the initial claim 8, but had the effect, on the contrary, to add a new active ingredient selected from a large list, offering in reality a considerable scope for new combinations.
The Court of Cassation quashed the judgment on March 19, 2013. Referring to Article 69 EPC and Article L.613-24 of the Code of Intellectual Property, the Court held that the Court of Appeal did not check “if the subject-matter of the amended claim was not directly and unambiguously disclosed in the description of the patent as granted. “
However, the Supreme Court has not ruled on the question of whether the addition of this feature was a limitation or extension.
However in that case the Supreme Court suggests that for SPC, it will be possible to obtain an SPC for a combination of active ingredients with reference to a basic patent wherein said combination is only described but not claimed.