Patent decision

BL number

O/279/04

Concerning rights in

GB9512841.9

Hearing Officer

Mr S Probert

Decision date

17 September 2004

Person(s) or Company(s) involved

Kimberley-Clark Worldwide Inc

Provisions discussed

PA 1977 Section 73(2); section 18(5)

Keywords

Revocation

Related Decisions

None

Summary

The issue was whether a UK patent and a EP(UK) patent had been granted for the same invention. There were two main features identified, referred to as A and B. The patentee argued that A and B were both inventions in their own right. The examiner considered that B was a trivial feature, and that only one invention was present in both patents.

Initially both patents had been granted with some claims to A, and some claims to A+B. During opposition proceedings at the EPO, the claims to A were deleted from the EP(UK) patent. The UK patent was subsequently amended to delete the claims to A+B. The Hearing Officer had no way of knowing for certain whether B was an invention, although he recognised that this was likely to be a critical factor in this particular case. In the event, he considered that the outcome of the EPO opposition suggested that there was a difference of substance between the two patents as now amended. With the balance of probabilities lying in the patentees favour, the Hearing Officer would not order revocation of a patent from the register while there was doubt as to the justification for so doing.