Patent decision

BL number

O/188/00

Concerning rights in

GB9522134.7

Hearing Officer

Mr D L Wood

Decision date

30 May 2000

Person(s) or Company(s) involved

Colin Rooney

Provisions discussed

PA 1977 sections 1(1)(a) & 2

Keywords

Evidence, Novelty

Related Decisions

None

Summary

During pre-grant prosecution of the application third party observations had been filed. The examiner had used these to demonstrate that the claims of the application lacked novelty. After considerable correspondence it remained the examiners view that the applicant had failed to file adequate sworn evidence to show that the compositions claimed had not been made available to the public before the earliest date of the application. A hearing on the papers was requested and the Hearing Officer issued a decision on the last day of the extended section 20 period and followed it subsequently with a statement of reasons.

The third party observations drew attention to a case before the High Court where Vincent Rooney (father of the applicant) in sworn written evidence, had referred to the marketing of the now claimed compositions before the earliest date of the application. Vincent Rooney claimed that he had been confused when making this statement because of a previous serious car accident. The examiner had asked for a sworn statement to this effect as, otherwise, he had to take the statement before the Court as true. In addition, the third party observations drew attention to various pieces of prima facie evidence showing the availability of the compositions before the earliest date of the application. Again, it was deemed necessary for the applicant to file a sworn statement showing that the marketing of the compositions had taken place in a manner and over a timescale different to that suggested by the evidence. The applicant had not filed the necessary statements or any other convincing evidence by the time of the extended section 20 period and therefore the Hearing Officer had no option but to refuse the application.