Wednesday, 2 November 2011

Intellectual Property Law - Patent Infringement - Patent Law - Amendments Disallowed



The claimant in the case of LG Phillips Co Ltd v Tatung (UK) Ltd and Other people [2006], held a UK patent for mounting a flat panel display device inside a two-component housing, which could be incorporated into merchandise such as laptops or absolutely free standing laptop monitors. The patent was principally directed at LCD displays for laptops. The claimant brought proceedings against three defendants in the patent county court. It was alleged that the defendants had infringed the patent via the creation of a closed circuit television monitor. The defendants denied infringement, and really counterclaimed for the revocation of the patent in question on the grounds of anticipation, obviousness and insufficiency.

The claimant then sought to have one of the patent claims amended in order to meet portion of the defendant's case for revocation. The claimant argued that their action would fail if the courts did not permit the proposed amendments. Having said that, the defendants submitted that by permitting the amendments to take place, further matter would be added to the patent contrary to s.76 of the Patents Act 1977 ("the Act").

The first proposed amendment meant the removal of the affixation of the module to the front housing. In the original patent, there was no mention on how the module would be attached. The claimant submitted that by making this amendment no further matter would be added to the patent simply because in at least 1 incarnation of the invention, the notion that "the module should not be affixed to the front housing" had been disclosed in the item specification.

The second proposed amendment meant that the fastenings would be behind the flat panel display. This function appeared in a drawing of one of the preferred embodiments of the invention, but was otherwise unidentified. In the original patent, no mention of this feature getting inventive significance had been created.

The judge held that the amendments should really not be allowed as they constituted additional matter contrary to s.76. He hence dismissed the claim for infringement and allowed the case for revocation on the ground that the claimant had conceded that if the amendments were not created, their action would fail. The claimants then appealed to the court of appeal.

Their appeal was dismissed for the following causes:

§ If the specification disclosed distinct sub-classes of the overall inventive concept, then it must be doable to amend down to 1 of those sub-classes. Having said that, in this case the amendments which were sought had been only disclosed in a specific context and were not disclosed as having any inventive significance. Introducing them into a claim would have deprived them of that context, which means that the amendments had been not suitable to be added to the claim. This is a process called 'intermediate generalisation'. This is evidenced much more specifically in the second amendment the claimant applied for. The second amendment tried to add an otherwise unidentified function which had only been shown in a drawing. There was no suggestion that the function had any inventive significance, and the amendment did not wish to attach any other attributes displayed in that drawing. This is an wonderful example of intermediate generalisation, which is not permitted.

§ It was held that the Act was searching for to prevent the owner of a patent from amending a claim to such an extent that they were efficiently looking for to shield a unique invention to the 1 in the original application. For this reason, supplied the invention in the amended claim was disclosed in the original application when read as a complete, it would not offend s.76 of the Act. Exactly where the amendment included a disclaimer which narrowed the claim, it was held that a certain disclaimer did not 'add matter' if it was inserted into a claim to prevent an 'accidental' anticipation, but it did 'add matter' if it was inserted to stay away from a 'non-accidental' anticipation. An 'accidental' anticipation is one in which a disclosure relating to a remote technological field is produced. It can also arise where the subject matter concerned does not assist to solve the problem addressed by the patent in question. In the case in question, the very first amendment either sought to add a function to the patent which was not addressed specifically anywhere just before, or it sought to add a disclaimer for merchandise which had all the attributes of the claim save that the module was fixed to the front housing. If the first analysis was right, then the amendment would be deemed to add new inventive significance to the patent and would offend the rule on adding matter. If the second analysis was appropriate, then the amendment was efficiently a disclaimer included for the purpose of preventing the claim from extending to an item of prior art. It would be tricky to establish that the prior art was in a remote technological field.

The judge was subsequently proper to have disallowed both amendments.

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the concerns discussed nor does it constitute legal advice. It is intended only to highlight general troubles. Specialist legal guidance will need to consistently be sought in relation to specific circumstances.

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