European Patent Examiner Prevents Inadvertent Estoppel

In Tap Pharmaceutical Prods. v. Owl Pharmaceuticals (Fed. Cir. August 18, 2005), a patent examiner inadvertently saved TAP's European counsel from creating a signifcant estoppel against the corresponding U.S. patent. In this case, TAP had stated to the European examiner that the invention did not include a polymer made from lactide or glycolide:

"As the district court explained, however, while the applicant for the European patent characterized the claims in that manner, the European patent examiner rejected that characterization, stating that the applicant "does not appear to be correct in saying that the polymer of the present application is different from polymerized glycolide and/or lactide." In light of the European examiner’s rejection, it is reasonable to conclude that TAP receded from that characterization of its claims, which it did not repeat in the course of the prosecution of its U.S. patents. It was therefore proper for the district court to attribute little weight to the statements made to the European examiner."