PO Patents – Inter Partes Decisions – In an EP patent that had been found bad for lack of novelty and obviousness (see Decision O/147/97) an opportunity for amendment was given. When the applicant tried to take advantage of this opportunity, the proposed amendments were opposed, initially by Morgan only and subsequently by both Morgan and Schmidt. At a hearing where the substantives points were heard in full, the opponents attempted to introduce evidence in case of an appeal. The HO ruled that this was impermissible (in view of a number of recent precedents which suggested that conduct of the patentee was no longer a permissible consideration in deciding discretion) but agreed that the time period for any appeal from this decision should extend beyond the date of a Court of Appeal case dealing with this point (O/334/99). At a similar date, a decision issued allowing the amendments from the point of view of substantive law (O/377/99).
Subsequently, the Court of Appeal ruled that conduct of the patentee was still a factor to be taken into account, and a further hearing was arranged to consider this point specifically. At the hearing it was decided that, although the patentee had had no reason to suppose his patent was invalid before the date of the revocation hearing in 1997, nevertheless he had attempted to assert the patent some 4 years earlier and had not disclosed this. The patent was duly revoked.
Judges:
Mr G Bridges
Citations:
[2000] UKIntelP o27900, O/279/00, EP0329959
Links:
Statutes:
Intellectual Property
Updated: 13 October 2022; Ref: scu.453904