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 PDF document108Kb