Wednesday Whiskers

Miracles do happen, it seems. Despite several hurdles and a legislative calendar that was drowning in debt-related issues, the long-awaited US patent reform legislation passed the Senate vote on Monday. The Leahy-Smith America Invents Act (AIA) was passed unamended by the US Senate with a 89-9 vote (see previous AmeriKat and IPKat posts here). Once signed into law by President Obama, the bill will introduce several changes to the US patent system including harmonizing its first-to-invent system to a first-to-file system and ending fee diversion. AIA has been criticized by many as being overly burdensome to small independent inventors, will increase the number of provisional applications being made to the USPTO and would allow the Appropriations Committee to unduly control the fees generated by the USPTO. USPTO Director David Kappos heralded the passage of the bill, claiming that it will "...drive down the backlog of patent applications, and expedite the issuance of high quality patents - all without adding a dime to the deficit." Director Kappos proceeded to then walk on water.... Joking aside, the AmeriKat is excited about this new act and will be back on Sunday to report on the fall-out and commentary surrounding its passage.



The Rolls Building is nearing its opening day. For those IP litigators, like this Kat, the new £300 million Rolls Building will soon become a home-away-from-home as the Patents Court moves from the resplendent Royal Courts of Justice to its new home. You needn't spend long in the RCJ chambers and filing offices to hear comments about the new building - a mixture of views mostly punctuated by comments of how small the court rooms are, how some are being dragged across to Fetter Lane kicking and screaming and how no one will know where anything is [cue wandering judges and barristers looking for their lost court rooms, Merpel remarks cattily]. Then there is the elevator problem - only 3 public lifts (i.e. fitting only one clerk with the first set of disclosure bundles for your standard Chancery case - promises of e-filing be damned). The AmeriKat is more worried that, as with many new buildings, the air conditioning system will be out of control and set on a level that only pacing barristers can endure. There are rumors floating around about who will be the first IP case to grace the Rolls Building, but no concrete word until the doors first open this fall. The IPKat says that whoever gets there first should give the rest of us tips about managing the new building - flaws, free wi-fi, and all!


8+3 =11 big problems for HathiTurst, a partnership of research libraries and universities, including the University of Michigan . On Monday, the 11 strong contingent of authors' groups and individual authors including the Authors Guild filed a copyright infringement suit in the Southern District of New York against the libraries and universities claiming that their initiative to digitize millions of books without authorization constituted copyright infringement and posting the books online. The claim also objects to the partnership self-designating works as "orphan works" and thus self-permitting the digitization and use of those works. So far 9.5 million books and journals have already been digitized with around 30% of those works being in the public domain. The twist in the story is that the executive director of the partnership, John Wilkin, stated that the digitized works were provided by Google. IPKat readers will remember that last March, Judge Denny Chin rejected the proposed settlement in the Google Books litigation (more here) in a similar dispute. A hearing is schedule for tomorrow in the Google Books case.


On Tuesday, IPR2, better known as the EU-China Project for the Protection of Intellectual Property Rights, between the European Commission, EPO, OHIM and the Ambassador of the People's Republic of China to the EU formally came to a close. The closing ceremony of IPR2 comes at the end of a four-year 16 million Euro joint project. Under IPR2 European and Chinese officials, judges, legislators, experts and academics implemented technical assistance and training activities across China. The parties have agreed to continue their cooperation [what else would you expect?, says Merpel] Would you like to see the what 4 years and 16 million Euros can get you? Well you can't, at least not yet... But while the database is being built, there is a collection of a hodge-podge of documents from the project here.

Many of the IPKat's beloved readers will be in or journeying to Baveno, Italy for this year's annual MARQUES conference (Kat Jeremy is currently stalking the Italian venue.) Today's MARQUES conference agenda, for those Kats and readers who are not so lucky to travel to Italy this week, is premised on "Reality Checks" - reality check on costs, reality check on trends and reality checks on function. The last check is a topic being discussed after lunch entitled "Reality Function" and is promoted as an "update on legal analysis on the trade mark function." For those attendees whose brain activity does not decrescendo following a hearty pasta and foccacia lunch, please let the Kat know what panel suggest is "the trade mark function" in European trade mark law.

No ope for folding ladder infringer

Mr Peter Prescott QC, sitting as deputy judge in the Patents Court, issued his judgment earlier this week in the matter of Folding Attic Stairs Limited v The Loft Stairs Company Limited. The names of the imaginatively-titled companies involved may give the reader a little clue as to what the case was about (see picture, right, an example of folding stairs available from Memphis Folding Stairs).

A dispute between the parties arose after the defendant (LSC) fell out with the claimant (FAS) over money, and started to make and sell loft stairs themselves, rather than buying them from the manufacturer. FAS then brought their patent, GB2319051, into play, claiming that LSC were infringing it.

The patent covered a small but significant development in how folding stairs for loft access were constructed. LSC argued that the patent was either anticipated by FAS's own disclosures as a result of a prototype being shown to visitors before the priority date of the patent, or was obvious over this disclosure. There was also an issue to be determined about what some of the wording in the claimed invention actually meant, namely whether the words "predetermined" and "preset" meant anything at all and, if so, whether they could be a limitation on the claimed invention. The matter of infringement was not really an issue at all, presumably because LSC were making stairs to FAS's own design (design right was also briefly mentioned, but did not feature). The judge put the issues as follows:

"Two points of difficulty are these. What happens if a manufacturer allows selected members of the public onto his premises, not on terms of confidence, where they can see a product that is still under development, but they are not experts and do not understand its significance – could that invalidate a patent afterwards applied for? And what are we to make of the phrase "spaced a preset distance" in the patent claim – are words of intentionality allowed?"

The patent covered a manufacturing process for the folding stairs in question, rather than the stairs themselves, a key feature of the invention being that a part of the construction process involved allowed for a difference between the width of the stair portion and a width of a frame made to fit an existing opening in a ceiling (termed an 'ope' in the patent, hence the appalling pun above). Because it was impractical to make stairs of various widths to fit a known range of sizes of ope, a single width stair was used with a modification to how the folding metal arms were connected to the frame, made during manufacture of each set of stairs. The feature allowing this involved the use of an inner frame positioned a "preset distance" inwardly from the outer frame, which was made to fit the available size of ope. This implied some intention on the part of the person performing the invention, which gave the judge some difficulties in construing the claimed invention.

"I must say I have seen 'predetermined' and 'preset' in granted patent claims on occasions too numerous to recall, and the experience of Jacob LJ in patent cases is a fortiori. Therefore I do not believe his stricture applies to the word "predetermined" as such. I do not have a convenient means of searching the claims of granted European patents, but as an exercise I have looked at the online database of the United States Patent Office, where the text of claims granted since 1975 is searchable electronically. I expected to find many patents with the word 'predetermined' in one or more claims. Even so, I was astonished. There are more than 658,000 such patents.

While I have not been able to perform a similar exercise for the European Patent Office, I have no doubt that it is accepted EPO practice to allow it to be used, provided the criterion that enables it to be understood is sufficiently clear. There are numerous decisions of the Boards of Appeal where the word 'predetermined' was used in the claims and no objection was taken to it, provided the purpose was clear. (There are too many to read through, but see e.g. decisions T 1241/04 and T 0463/01). Indeed in the 2007 edition of the Guide for Applicants, Annex III, available on the EPO website, there is a model patent application – as if to say, "Now, let us show you the right way to do it" – with the word 'predetermined' in claim 1. The usage can also be found in guidance to candidates for the European Qualifying Examination in the form of acceptable examination answers, also published on that website.

I am unable to accept a contention that, in the context of this patent, 'predetermined' or 'preset' is meaningless and of no effect. A reader skilled in the art would think the patentee was using it in order to try to tell him something; and he would work out the purpose by reading the patent as a whole."

The judge then found that the correct meaning of the claimed invention could be found, the key to this involving noticing that the claim was for a process for manufacturing folding stairways on a repeat basis, and that the purpose of setting the inner frame a certain distance away from the outer frame had to be taken into account. The scope of the claimed invention, although narrow, could therefore be determined.

On the matter of validity, the arguments raised by the defendent involved a prior disclosure of a prototype on the manufacturer's premises. The manufacturer had allowed members of the public, including an Irish minister and a press photographer, on to their premises before the patent was applied for. A prototype of their folding stairs was seen and photographed, and a picture appeared in the Irish press, showing the managing director of the company with the prototype in the background. The question was then whether the undoubted disclosure of the prototype was in fact an enabling disclosure of the invention to the public. The judge said:

"It is clear law that, if this test unit had been in a public place e.g. a street, where anyone might have stopped to examine it, its design would be considered to have been made available to the public. In Lux Traffic Controls Ltd v. Pike Signals Ltd [1993] RPC 107, 132-135 prototype traffic lights were given field trials. It was not proved that any member of the public – much less an expert in traffic lights – stopped to deduce the novel modus operandi. Even so it was held that the new idea was made available to the public. The principle is the same as the obscure book on the shelves of a public library that nobody consulted in fact. The law must draw the line somewhere, as I have said, and it does so by adopting the rule that inasmuch as the public had a right to be there, they are deemed to have had the right to access the information. In the same way, if it is proven that all sorts of members of the public could enter private factory premises, no obligation as to confidentiality being imposed, the law will consider that whatever could be seen there has become part of the state of the art. In those circumstances the law cannot start speculating about who did or did not see the thing.

In our case, however, the test unit was not in a public place at all and it was available for viewing by a small and defined class: the Minister and the photographer. They were not persons skilled in the art; and there is no evidence that they were interested in manufacturing folding attic stairs – it seems unlikely – nor that they manifested any interest in the test unit (which was not in the main part of the factory). Even so, urges Mr Davis for the Defendants, they were free to examine the unit if so minded, they were free impart to anyone in the world whatever recollection they had of it, and so its construction must be considered to have been made available to the public."

The judge in the end came down on the side of the claimants, finding that the claimed invention was not disclosed to the public, in part because, on the balance of probabilities "if some officious person had stopped them on the way out and asked them to describe the test unit, it is unlikely that they would have been able to describe the presence of an inner frame with side beams spaced from the sides of the ladder" (para 89). There was no reason why a normal human being, not interested in the manufacture of folding ladders, could care less. Even if he was wrong on this point, the judge considered that the claimed invention, because it was a process for manufacture, was also not obvious in light of such a disclosure. The patent was then found to be valid and infringed.

The IPKat thanks Mr Prescott for yet another well-written and clear judgment, which has made him think a bit more about what words should and should not go into a patent claim. Just because a word such as 'predetermined' is used in lots of granted claims, and is apparently approved by the EPO, does not mean that it is ideal or clear in all circumstances. As with the dreaded word 'means', some words can be used as lazy shortcuts to avoid describing what the invention actually is, or at least leaving a claim sufficiently vague that things other than what were being thought of at the time of drafting might possibly be covered. This does not, however, make things easy (or cheap) once a patent has been granted. The IPKat thinks that it is still preferable, wherever possible, to use words that have a straightforward meaning in themselves and which do not need the skilled person's motivation to be brought in to give them meaning. This does not mean that the claims need to be narrow, just that the drafter should perhaps think a bit more about the invention before setting out what it is.

AT&T, CVON - more UK patentability appeals

The IPKat has been kindly sent by Richard Davis a copy of a judgment issued this morning by Mr Justice Lewison in the Patents Court, in the matter of two UK patent applications in the names of CVON Innovations Limited and AT&T Knowledge Ventures LP. Both applications were refused last year by the UK-IPO in separate decisions (O/240/08 and O/190/08, respectively).

Both AT&T and CVON had their applications refused on the grounds that the claimed inventions were not patentable under section 1(2) of the Patents Act 1977.  The judgment, as might be expected, goes over the familiar Court of Appeal judgments in this area, and the corresponding developing line of case law by the EPO boards of appeal, from Vicom to Duns. The outcome will be familiar to anyone who has been following the s1(2) decisions coming out of the UK-IPO over the past couple of years, in that both appeals were dismissed.

This Kat has not been able to distil any particular points to note from the judgment, mainly because he is concentrating more on other things. His interest was, however, piqued by the following statement early on:

"If I may venture two comments at this stage: first, asking what the inventor has added to human knowledge necessarily means that the questioner has some notion of the state of the art. In other words, patentability cannot be put into a watertight compartment completely separate from novelty. Second, in Aerotel the court did not elucidate what it meant by 'technical'"(para 8).

As regular readers will know, these two points are, in the IPKat's view, the key to the whole problem of whether certain inventions are patentable or not.  The IPKat would like to leave it to any commenters willing to delve more into the details of the case (a copy of which is available on the Kat's Google Groups website here) to determine whether we do in fact get any clarification of these tricky areas, or if perhaps we will have to wait for another day and another court judgment.

Two recent hearty judgments

In the past few days two substantial, and clearly commerically important, judgments have issued from the Patents Court, one relating to a way of stopping heart attacks before they happen, the other relating to a way of fixing hearts when they go wrong.  

The first one, Corevalve v Edwards Lifesciences [2009] EWHC 6 (Pat), related to a type of valve covered by EP0592410, owned by Edwards. Corevalve, a competitor to Edwards in the field of artificial heart valves, applied to revoke the patent on the grounds of anticipation, obviousness and insufficiency. In return, Edwards counter-claimed that Corevalve were infringing the patent.

The claimed valve was in the form of a collapsible stent, enclosing a flexible membrane-type of valve, developed by its Danish inventor back in 1990 using heart valves retrieved from pigs. The patent claimed that the stent was deliverable by catheter, i.e. was able to be collapsed to a small enough diameter that it could be inserted via an artery (usually the femoral artery), put in place at the right position next to the patient's heart and allowed to expand to its normal diameter.  The patent said very little, however, about how this would be done in practice.  

Mr Peter Prescott QC, sitting as deputy judge of the High Court, heard much expert testimony relating to how difficult such a procedure actually was in practice, but determined that the validity of the patent was not really affected by the fact that it was clearly insufficient in this regard, particularly because it did not claim the method of installing the valve (which would, of course, be unpatentable anyway).  It was enough that the patent described the valve in terms sufficient for the skilled person to go ahead and make it.  As for Corevalve's claims for the patent being anticipated and obvious, these claims were dismissed because there were apparently no enabling disclosures around at the time the invention was made that disclosed or suggested to the skilled person a stent-type artificial valve that could be implanted by catheterisation.  The patent was held to be valid, but not infringed. 

The other judgment, Actavis v Novartis [2009] EWHC 41 (Ch), related to another European patent, EP0948320, which claimed a formulation for a drug intended to prevent heart attacks caused by high cholesterol.  The drug, fluvastatin, was one of a family of drugs together known as statins, used to lower levels of LDL cholesterol in the body by affecting its synthesis in the liver.  One alleged problem at the time the patent was applied for was that of maintaining the correct level of drug in the body, for which the patent provided a solution in the form of a 'sustained release' composition, i.e. a formulation that allowed the drug to be slowly released over time through being bound together with a material that slowed its dissolution when passing through the body.  

A huge amount of expert testimony was heard by the judge, Mr Justice Warren (presumably a result of there being a huge amount of money at stake), but in the end the judgment was one that could probably be predicted from a quick look at the claims and from two facts: i) fluvastatin was known for a long time before the patent was applied for; and ii) sustained release formulations were well known at the time.  Since the skilled person, in the form of a research team, would know of these facts, it would be an obvious step to combine them.  The patent was consequently found to be invalid for being obvious.  

More about heart valves here, here and here. 

How to spot evergreening here.

Korean patent court officials get ethical

The IPKat is ever so impressed with the Korean Patent Court. He has just read, courtesy of the JoonAng Daily, that the court has just issued a code of ethics as a part of measures to become a corruption-free agency. According to the article, in relevant part:

"The Patent Court posted the six tenets on its official website on Wednesday, after the court’s 17 judges and 50 employees held meetings on the subject on Dec. 29 last year.

Judge Kang Kyeong-tae said the idea of a declaration emerged as the court officials shared opinions on reducing corruption and irregularities in the agency in order to restore public trust.

“The public’s confidence in the judiciary is still low, despite the fact that it marked the 60th anniversary of its foundation last year [Non-sequitur here? Why should the 60th anniversary induce public confidence?]. Without the people’s trust, the very existence of the judiciary is at stake,” Kang said.

...

The Patent Court’s statement ... was significant for the detail it went into on the measures that would be taken to heighten the agency’s ethical standards.

For one, the officials pledged that they would not financially exploit court property for personal gain [selling the furniture on eBay, perhaps?].

They also declared that their family members share some responsibility in maintaining the organization’s moral integrity, adding that “spouses and other family members should not receive money, gifts or real estate” ... [did this really happen? If so, no wonder that public confidence wasn't running high].

The statement also said officials should not act on a supervisor’s request when they think it would provide anyone with an unfair advantage [what happens if all the officials refuse to carry out the request? Does this mean that the supervisor has to do the dastardly deed himself?].

Officials should also avoid taking on tasks they would find difficult to perform fairly because they deal with someone related to them, the statement said.

They also agreed not to give special favors to people who share regional, academic or blood relations in carrying out their duties [Academic relations? Hypothetical aunts?].

“We believe it is vital to tell the public of our intentions. We will strictly implement what’s on the statement,” said Park Guk-soo, the chief judge of the court.

“We will inform the officials about the declaration during the regular monthly meeting. We will also offer regular ethics education sessions for new judges and workers.”

The IPKat welcomes every move towards the adoption of an improved standard of ethics.  Merpel, however, wonders why the word "bribe" doesn't seem to appear anywhere ...

Cats and corruption here and here

Professor Branestawm wins a temporary reprieve

The IPKat reported earlier this year (here and here) on two decisions made at the UK-IPO relating to patent applications made in the name of Blacklight Power, Inc.  The later of these decisions resulted in refusal of two of Blacklight's applications on the grounds that the claimed inventions relied on an unproven, and probably wrong, scientific hypothesis [the IPKat is very reluctant to use the word 'theory' here, which in his view has quite a different meaning], and did not therefore comply with sections 1(1)(c) (industrial applicability) and 14(3) (sufficiency).

Blacklight appealed the decision to the Patents Court.  The judgment of Mr Justice Floyd was handed down earlier today, and has found its way into the IPKat's paws thanks to a friendly barrister (update: the judgment is now available from BAILII here).   

The appeal centred on whether the Comptroller should refuse applications where there is doubt regarding an issue of fact.  Usually this would be about establishing an inventive step, which often relies on determining what the hypothetical skilled person would know and do.  In some circumstances, where there is a doubt, the applicant should be shown the benefit of this doubt, particularly in cases where a full fact-finding exercise, not necessarily available to a patent examiner, would be required.  Floyd J put it as follows:

"It is not the law that any doubt, however small, on an issue of fact would force the Comptroller to allow the application to proceed to grant. Rather he should examine the material before him and attempt to come to a conclusion on the balance of probabilities. If he considers that there is a substantial doubt about an issue of fact which could lead to patentability at that stage, he should consider whether there is a reasonable prospect that matters will turn out differently if the matter is fully investigated at a trial. If so he should allow the application to proceed.

I think this approach to the consideration of objections to patentability is in accordance with the statutory framework. The examiner will first raise an objection and put it to the applicant. The applicant then has an opportunity of persuading the Comptroller that his basis for considering that the objection applies is not sound. If the applicant does not persuade him to withdraw the objection he may refuse the application (section 18(3)). But at that stage he should consider whether, because there is a substantial doubt about an issue of fact, there is a reasonable prospect that matters may turn out differently at a trial, when there will be a full exploration of the matter with the benefit of expert evidence. If there is such a reasonable prospect he should allow the matter to proceed to grant. It goes without saying that mere optimism and a reasonable prospect of matters turning out differently are not the same thing. The reasonable prospect must be based on credible material before the Office. Macawberism [sic; see here for a helpful definition], here as elsewhere, does not provide any basis for supposing that anything helpful will turn up. Moreover the greater has been the opportunity for the applicant to produce such material at the application stage, the smaller scope there is for supposing that giving him the benefit of the doubt will lead to a different conclusion." (paragraphs 34-35)

This conclusion was apparently also supported by section 3.69 of the Office's work manual, which states: "If expert evidence would be required for him to judge whether the applicant's reply to an objection establishes that there is invention, only then must the applicant be given the benefit of the doubt".  

In this case, the hearing officer was not provided with expert opinion as such, but with a mass of material from the applicant.  This was in the form of 116 scientific papers relating to experiments on the so-called "Grand Unifying Theory of Classical Quantum Mechanics" (or GUTCQM for short), mostly written by Blacklight's founder and chief boffin, 'Dr' Randell L. Mills.  The applicant (represented by Mr Henry Ward) argued that this meant the 'balance of probabilities' test the hearing officer used was not right:

"Mr Ward’s principal argument on this appeal for Blacklight was that the Hearing Officer had simply tested the evidence before him on the balance of probabilities. As I have already indicated, it was no part of Blacklight’s case on the appeal to argue that, applying that standard of proof, the Hearing Officer was not entitled to arrive at the conclusion which he did. Rather, Blacklight’s case was that the Hearing Officer applied the wrong standard. He ought to have considered whether the invention was clearly contrary to established physical laws. The proper test, so Mr Ward submitted, was whether there was no reasonable prospect of Blacklight showing that the GUTCQM was correct." (paragraph 41)

This argument seemed to do the trick, as Floyd J then stated:

"I accept the first limb of Mr Ward’s submission, namely that the Hearing Officer did fail to consider whether the evidence adduced by Blacklight gave rise to any reasonable prospect that the applicants’ theory might turn out to be correct. The Hearing Officer did not, at least on the face of his decision, turn his mind to the question of whether the applicant should be given the benefit of any substantial doubt." (paragraph 44)

Floyd J therefore proposed that the applications were remitted to the hearing officer "for consideration of the following question, namely whether there is a reasonable prospect that on a full investigation with the benefit of expert evidence GUTCQM will turn out to be a valid theory."  Regular readers will know that the IPKat thinks this possibility is about as likely as the existence of the Flying Spaghetti Monster or Bertrand Russell's celestial teapot but, as with all unproveable theories, you can never know for sure.  The IPKat looks forward to seeing what the hearing officer makes of these applications the second time round.  

Postscript: To see how these applications are now faring in parallel proceedings at the EPO, the latest examination report, and reply, can be viewed on epoline here (the other application has not yet been examined).  For yet more entertainment, a final rejection has very recently issued on one of Blacklight's corresponding US applications, US 10/552,585; go to the USPTO's PAIR site to see it. 

Armour v LeisureTech

On Friday 14 November, Mr Justice Arnold delivered his judgment in Armour Group Plc v Leisuretech Electronics Pty Ltd [2008] EWHC 2797 (now available from BAILII here). The case related to Leisuretech's European patent EP1004222 (not EP1004221 as stated in the judgment) for a distributed stereo system. Leisuretech claimed that Armour were infringing their patent, and Armour in turn sought revocation of the patent on the ground that the claimed invention was obvious.

The claimed invention covered a distributed stereo audio system in which a particular type of signal cable known as 'Cat5' (no feline connotations) was used for both audio and power connections. In the distributed audio system (as shown in the figure, right), a cable (11) was used to connect both a signal source (5) and power supply (10) to an amplifier (4), different pairs of the cable being used for left and right audio signals and for a DC power supply from the power supply to the amplifier.

Much detail regarding the state of the art at the 1997 priority date of the patent was gone into, helped by expert witnesses from both sides. Through this, it was established that Cat5 cables were fairly commonplace in the field at the time. They were generally used for transmission of audio and control signals, but not usually for supplying DC power, largely due to the resistive losses inherent in such cables.

It was, however, well known that Cat5 cables could carry small amounts of power, and there were certain integrated circuit (IC) amplifiers widely available at the time that would at least work with these power levels. Even though these would not be regarded as 'hi-fi' amplifiers, Arnold J considered that relevant segments of the market did not necessarily require more than "basic hi-fi quality" (an oxymoron?).

Arnold J found that it was obvious to arrive at the invention from any one of three starting points: i) starting with the known amplifiers, Cat5 cables would be an obvious choice to use for supplying power; ii) starting with the cable, IC amplifiers would be an obvious choice given the low power capability; or iii) starting with the known system architecture, an IC amplifier and Cat5 cables would be obvious choices to make. The patent was therefore found to be invalid and ordered to be revoked.

(below: cat 5 is special)

The IPKat notes that this case proved to be quite a test for the Windsurfing/Pozzoli approach on inventive step, which has to be applied quite carefully for alleged inventions having a combination of features that might or might not be arrived at through a combination of apparently obvious steps. He wonders if it might have been more straightforward to use the EPO problem-solution approach instead, which might have made easier work of assessing the different non-inventive steps taken to arrive at the claimed invention by simply seeing each of them as small problems with clearly obvious solutions. Could this have been done, or would it have been sacreligious?

M-Systems v Trek 2000: USB sticks get stuck

Another judgment from the Honourable Mr Justice Kitchin has just appeared, this time being available in full from BAILII (unlike the one from a couple of days back). The case relates to revocation and (among other things) to whether a patentee should be allowed to amend their patent under section 75.

The patent in question related to high-capacity USB memory sticks, which may now be very familiar to most computer users but which, when the patent was applied for in 2000, were not particularly well known, at least not in the form they are nowadays (above right: a 4GB USB stick available from eBuyer). The granted patent claimed:

A portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device.

In earlier proceedings before the Comptroller, M-Systems had been successful in their application to revoke Trek's GB patent, citing various prior art disclosures describing plug-in memory devices. Trek then claimed that their devices were actually much smaller, had higher capacity, were limited to USB devices that replaced CD-ROMs and could be plugged directly into a serial socket rather than requiring a cable. They consequently submitted amendments to work around the prior art in an attempt to maintain their patent in some form. The Hearing Officer did not, however, allow them to amend because their proposed amendments did not address the issues, added subject matter and in any case should not be permitted because Trek had failed to establish why the Comptroller should allow them. The issue of discretion to amend revolved around an unresolved argument as to exactly when Trek had become aware of certain prior art disclosures, and whether as a result they should be given discretion to amend, under the provisions then in force. Trek even tried to argue that to be forced to disclose when they knew about relevant prior art would be contrary to the Human Rights Act 1998 [this is the point where the IPKat's credulity in Trek's arguments started to crumble].

After reconsidering the several issues raised during Patent Office proceedings, Kitchin J found that the Hearing Officer had been correct on every single point. On the issue of discretion to amend, however, Kitchin had something else to say that unfortunately (at least for Trek) could have no bearing on the case in point, but will certainly be relevant in the future:

"I have found the proposed amendment is not allowable because it would result in the specification disclosing additional matter. However, the Hearing Officer also rejected it for a further reason, namely that he had not been provided sufficient information to permit him to allow the amendment in the exercise of his discretion. On 13 December 2007, after the conclusion of the appeal hearing before me, the Patents Act 2004 came into force. Section 2(5) amends section 75 of the 1977 Act and reads:

'(5) In section 75 of that Act (amendment in infringement or revocation proceedings), after subsection (4) there is inserted-

"(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention."

Section 75(5) applies to all patents (whether UK patents or European patents (UK)) and whether granted before or after 13 December 2007 and it undoubtedly radically alters the approach to be adopted to amendment applications. However, this is an appeal by way of review and not rehearing. Accordingly, it cannot possibly have any impact upon the outcome of this appeal unless I conclude that, under the old law, the Hearing Officer wrongly exercised his discretion so that the exercise of that discretion must be set aside."

This radical altering of the approach to be adopted could only mean that the provisions of Article 105a and associated rules of EPC2000 should now be used when considering post-grant amendments under sections 27 and 75. There is no provision in EPC2000 to allow the EPO to exercise discretion to amend, provided the basic formal requirements are met. The new form of sections 27 and 75 would therefore effectively remove all discretion from the courts and Patent Office hearing officers to disallow amendments on the grounds that the patentee knew about prior art and did nothing about it. Could this, the IPKat wonders, allow patentees with 'dirty hands' to get away with a bit more in future?