Patent decision

BL number

O/045/05

Concerning rights in

GB 2371653

Hearing Officer

Mr D J Barford

Decision date

1 March 2005

Person(s) or Company(s) involved

M-Systems Flash Disk Pioneers Ltd v Trek Technology (Singapore) Pte Ltd

Provisions discussed

PA.1977 sections 72, 75

Keywords

Amendment, Disclosure, Novelty, Revocation

Related Decisions

[2004] UKIntelP o09304, [2004] UKIntelP o29604

Summary

At a preliminary hearing in revocation and amendment proceedings, the defendant (Trek) requested that the substantive hearing be postponed in view of deficiencies in the claimant’s (M-Systems) statement of case, namely that:

a) the pleadings were in general in a mess, and

b) PCT application WO 00/42491 had not been properly pleaded against novelty

The hearing officer refused to postpone the substantive hearing acknowledging that

a) although the pleadings were unfocussed, the defendant knew the case that it had to answer; and

b) although the document in question had not been explicitly pleaded against novelty from the outset, the defendant should have been well aware of its importance, and in any case had addressed the issue of its relevance to novelty in the counterstatement

Other issues addressed:

· a request by the claimant for documents obtained by disclosure in related proceedings in Singapore with withdrawn at the hearing

· the defendant’s submission that, through an irregularity in procedure by the Patent Office, it had not been given an opportunity to address the novelty issue regarding WO 00/42491, was held - even if valid - not to have materially prejudiced its case in the circumstances.