Patent decision
- BL number
- O/531/16
- Concerning rights in
- GB2503963
- Hearing Officer
- Mr H Jones
- Decision date
- 15 November 2016
- Person(s) or Company(s) involved
- MWUK Ltd v Fashion at Work Ltd
- Provisions discussed
- Section 27
- Keywords
- Amendment, Oppositions, Striking out
- Related Decisions
- None
Summary
The Opponent sought to oppose the Patentee’s application to amend post grant based on prior art not advanced by the Patentee. The Hearing Officer found that case law established a clear principle that an opponent can question whether the proposed amendment has the effect of curing the defect as specified by the patentee but cannot advance arguments which challenge the validity of the patent in any way beyond that suggested by the patentee. While it is possible for an examiner to rely on the prior art cited in the course of pre-grant proceedings and on his own background knowledge in deciding whether to exercise comptroller’s discretion to amend the patent, it was not open for the Opponent to raise arguments based on such documents or to advance a separate view of the common general knowledge. The Opponent was given a period of time to amend his statement of grounds to remove any attack based on prior art not mentioned by the Patentee.
Full decision O/531/16 108Kb