Patent decision

BL number

O/318/06

Concerning rights in

GB 2371653

Hearing Officer

Mr R Walker

Decision date

8 November 2006

Person(s) or Company(s) involved

M-Systems Flask Disk Pioneers Ltd and Trek Technology (Singapore) Pte Ltd

Provisions discussed

PA 1977 section 72

Keywords

Added subject matter, Inventive step, Novelty, Revocation

Related Decisions

[2005] UKIntelP o04505, [2004] UKIntelP o29604, [2004] UKIntelP o09304

Summary

The patent in suit relates to a portable data storage device which can be connected to the USB port of a computer. The Claimant (M-Systems) sought revocation of the patent on the grounds that the patent as granted included matter extending beyond that originally disclosed, was not novel or did not involve an inventive step and was insufficient for lack of clarity. The Defendant (Trek) sought to amend the patent unconditionally under s.75, in part by disclaimer, when it filed an amended counter statement, and by further amendment requested during a lengthy adjournment brought about by the unavailability of an expert witness.

The hearing officer found that the application as originally filed taught that the plug of the USB device was capable of being directly and physically plugged into the USB port of a computer but that the generality of the language used meant that the application imposed no restriction on how the plug was coupled to the rest of the device or how the other components of the device were coupled to one another. He also found the application imposed no restriction on the size of the device other than it must be compact and portable and no restriction on the memory capacity of the device (although users expected to be able to use it as an alternative to conventional storage means like CD-Rom or magnetic disk) and that the device could be read/write or read only. In construing the application the hearing officer drew a distinction between the teaching of the application and a contemporary product (the ThumbDrive) Trek had developed.

Having construed the application in this way the hearing officer found that amendments made to claim 1 pre-grant such that the data storage device could be “directly plugged into a USB socket of a computer”, was “operative to function as an alternative to a magnetic disk or CD-ROM” and was “capable of storing software for installation to the computer or of receiving and storing user’s data present in the computer” did not add matter. Furthermore, he found claim 1 as granted to be clear and thus the insufficiency point failed.

The first request for post grant amendment of claim 1 sought to disclaim the subject matter of a piece of s.2(3) prior art as well as introduce some textual amendments. Following the decision of the Enlarged Board of Appeal of the EPO in G1/03 and G2/03 [2004] EPOR 33 the hearing officer found that a disclaimer was allowable to distinguish a claimed invention from such prior art. However, he observed that the disclaimer would add matter and thus would not be allowable if it also excluded section 2(2) prior art (other than an accidental anticipation) which would otherwise destroy the novelty or inventiveness of the claimed invention. Furthermore, he noted that the mere possibility that a disclaimer might give rise to added matter if relevant section 2(2) prior was unearthed at some later date was not a barrier to allowing the disclaimer in the first place.

Nevertheless, the hearing officer refused to exercise discretion to allow the amendment because Trek had failed to provide a full disclosure of all the relevant facts and thus had not discharged the onus on it to establish that the amendment should be allowed.

Even if he had exercised discretion to allow the amendment, the hearing officer found it not to be permitted under the Act because changing the wording “directly plugged into” to “directly introducible into” added matter contrary to section 76(3)(a). Alternatively, if it did not alter the meaning of the claim, discretion to make the amendment would be refused. Furthermore, he found claims 1, 3, 4 and 6 to be anticipated and claims 2 and 5 to be obvious

As for the second request for amendment, the hearing officer found that there was no legal bar to considering an amendment requested during the course of proceedings, even when the request was made between the presentation of evidence and summing up. However, as with the first request, he found that Trek had not discharged the onus on it to establish that the second request for amendment should be allowed.

The amendments requested under section 75 were refused and the patent revoked.