Patent decision

BL number

O/062/03

Concerning rights in

EP (UK) 0578711

Hearing Officer

Mr S N Dennehey

Decision date

3 March 2003

Person(s) or Company(s) involved

Calix Technology Limited and Crown Cork and Seal Technologies Corporation

Provisions discussed

PA 1977 ss 2, 3, 27

Keywords

Amendment, Inventive step

Related Decisions

None

Summary

Calix had applied to amend their EP patent in order to more clearly distinguish the claims from the disclosure of an earlier German application. Crown Cork and Seal opposed the application on the grounds that Calix had (i) acted in bad faith and had delayed unduly in seeking the amendment; and (ii) the proposed amendments would not in any case cure the defect.

On discretion, the applicants argued at the hearing that although they and their patent agent had been aware of the existence of the German application since 1995, they had always proceeded on the basis that the main claim of their EP patent was clearly distinguished from all the prior art that they were aware of. In January 1999 Calix were given a Counsels opinion which indicated that claim 1 of the EP patent as it stood was invalid in view of the disclosure of the German application. At that stage, on their patent agents advice, they sought an opinion from their own Leading Counsel who advised them that it was likely that claim 1 was indeed invalid in view of the German application. Calix immediately applied to amend the EP patent. Referring to the judgement in Instance & anr v CCL Label Inc [2002] FSR 27, the HO concluded that, on the balance of probabilities, there had been no culpable delay on the part of Calix, and that the application should not be refused as a matter of discretion.

In determining whether the proposed amendments were such as to cure the defect, the HO found the proposed amended claim 1 novel over the German application. On the question of inventive step, Calix argued that the issue should be considered on the basis the German application alone, and that the HO should not consider the prior art submitted by CCS ( a series of technical abstracts). Following the judgements in Great Lakes Carbon Corporations Patent [1971] RPC 117 and Minister of Agricultures Patent [1990] RPC 61, the HO agreed that he could not allow the proceedings to develop into a roving enquiry into the validity of the EP patent. Having considered the amended claim 1 in light of the German application alone, and what would have been common general knowledge in the packaging industry at the time, the HO found the amended claim to be inventive.