Patent decision
- BL number
- O/369/19
- Concerning rights in
- Patent number GB 2 463 079
- Hearing Officer
- Dr J E Porter
- Decision date
- 1 July 2019
- Person(s) or Company(s) involved
- Balfour Beatty Plc
- Provisions discussed
- Patents Act 1977 sections 2, 3 and 27
- Keywords
- Amendment, Estoppel, Inventive step, Novelty
- Related Decisions
- O/092/17
Summary
The patent concerns a retaining wall to hold back and prevent movement of soil, rock or water. The wall comprises primary sheet piles driven into a supporting body to a first depth, and which provide the main structural support. It also comprises intermediate panels, driven to a lesser depth.
The proposed amendments made several changes to the claims, including addition of the feature that the vertical offset between the bottom of the primary piles and the intermediate panels is more than 1 metre. However, this was the only proposed feature which had not been considered in a previous, unsuccessful amendment application. All the other proposed claim amendments had been decided upon previously, in an opposed amendment application (BL O/092/17). The hearing officer in that previous decision found that the proposed claims that were before him lacked novelty in light of three pieces of prior art (D1, D6 and D8).
The proprietor argued that they were not estopped from having all the features of the proposed claims considered afresh. In particular, they argued that the previous decision was not fully reasoned and that the hearing officer had not understood the invention. They argued that, rather than go to the cost and time of appealing the previous decision, they had chosen to make a fresh amendment application - with further technical explanations and expert evidence - in order to allow the comptroller to consider the matter afresh and in light of that evidence. On that basis, the proprietor argued that the proposed claims were novel in light of D1, D6 and D8. They also argued that the proposed claims were inventive, pointing out that the previous decision had not considered inventive step, so no estoppel could arise.
Full decision O/369/19 
543Kb
