Patent decision

BL number

O/484/14

Concerning rights in

GB2432573

Hearing Officer

Mr H Jones

Decision date

12 November 2014

Person(s) or Company(s) involved

Ability International Limited v Monkey Tower Limited

Provisions discussed

Section 75

Keywords

Striking out

Related Decisions

O/334/13

Summary

The patent relates to a platform for allowing overhead access in an office environment. In earlier revocation proceedings, the hearing officer found that the patent was invalid but considered that saving amendments could be made. The patentee was given six weeks to submit amendments under section 75 or else the patent would be revoked. This decision was appealed and upheld by the High Court. The patentee submitted amendments under section 75 and the original applicant for revocation opposed with new attacks on the validity of the claims. The patentee requested that parts of the opposition should be struck out as an abuse of process in that they sought to re-litigate the patent and were not directed to an assessment of whether the amendments overcame the defects identified in the revocation proceedings. The opponents argued that they were within their rights to raise new ground of opposition since the amended claims were not before them in the original proceedings.

The hearing officer was bound by the guidance laid down by the Court of Appeal in preventing re-litigation of cases under section 75. In cases where permission to submit amendments had already been allowed, i.e. where the court or comptroller did not anticipate new issues being raised, the hearing officer found that section 74(2) had the effect of limiting the opponents ability to raise validity in proceedings under section 75. In the alternative, he considered that section 75(5) limited opposition proceedings to an assessment of whether the amendments overcome the specific defects identified in the initial validity proceedings and meet the requirements of section 76. The hearing officer decided to strike out large parts of the opponents’ case on the basis that it strayed beyond this narrow enquiry and was an abuse of the opposition process.