Amending patent claims

(Instance & Anr v CCL Label Inc; High Court; 10 October 2001)

The applicants in the present action had been claimants in an action against F in respect of a European Patent (United Kingdom). The patent related to adhesive labels. On 8 December 2000, in the course of those proceedings, the applicants had sought to amend one of the claims of the particular patent on the basis that it had been anticipated by another of its patents.

That application has been opposed by CCL, but the proceedings were settled. In the present proceedings, CCL maintained its opposition, arguing that the applicants knew, or ought to have known, that the particular claim was invalid since allegations of anticipation had been made on a regular basis. In any case, on 16 August 1999, the applicants had been advised, and had accepted, that the claim was invalid through anticipation, but had still gone ahead and relied on the patent in claims made in this country and the Netherlands. Given those circumstances, so the argument ran, and in consideration of the delay between the date of knowledge regarding anticipation and the date of application for the claim to be amended, the court ought not to exercise its discretion to allow the amendment.

Agreeing with this argument, the court said that the authorities distinguished between the culpable delay of a party who had been aware of the need to amend but had not done so, and one who "had never thought or should have thought that amendment was the right course". Failure in each case was against the public interest, but in the latter case, the patentee could be excused as having acted reasonably.

The instant case showed no culpable delay, and the period of delay had been short, there was still no satisfactory explanation for the delay following the knowledge of the applicants that the particular claim had been anticipated. They had failed to advise the defendants in the UK and Dutch proceedings that the particular claim was invalid and that an amendment had been sought. No explanation had been tendered for such failure.

It was the case that no detriment to those defendants had been demonstrated, and that, in the past, refusal of a delayed application for amendment had been based on detriment to the public. Although the reasoning behind such an approach was not entirely satisfactory, the court felt that support could be founded on the basis that the width of a claim normally determined its economic value. Where, as here, the invalid claim was one of the independent claims of the specification, it could well be much more useful than a narrower, but valid, claim. The claim in the case was a broad product claim which had to be viewed as a free-standing monopoly, and was to be judged as if it had formed claim 1 of a separate patent, whereas here it was claim 8. In any allegation of infringement, it would have been difficult for a defendant to design round it given its breadth.

"Intellectual Property Newsletter" November 2001