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Thursday, 21 July 2005

DRILL PATENTS INVALID FOR INSUFFICIENCY



The IPKat found this on Butterworths' All England Direct service; it's not yet available on BAILII or elsewhere. It's a decision in the Patents Court by Mr Justice Pumfrey in Halliburton Energy Services Inc v Smith International (North Sea) Ltd and another [2005] EWHC 1623 (Pat).

Halliburton owned two patents for the design and use of drill bits for drilling in rock. The first was for ‘roller cone bits, systems, drilling methods and design methods with optimisation of tooth orientation’, while the second related was for ‘roller cone drill bit, method of designing the same and rotary drilling system’. Halliburton sued Smith for infringement.Smith denied infringement and said Halliburton's patents were invalid because they had insufficiently disclosed the subject-matter of their respective inventions.

Dismissing Halliburton's claims, Pumfrey J felt that the allegations of insufficiency had been well made. Sufficiency of a specification, being a question of fact, necessarily depended upon the nature of the invention and the attributes of the hypothtical person skilled in the art to whom it was addressed. In striking a balance between the interest of the public in being informed and the interest of the patent owner in disclosing only what was necessary, the court should not in principle impose too high a standard of disclosure just because the subject matter was inherently complex. On the evidence, however, Smith's objections of insufficiency were made out, because the skilled person would have been unable to have performed the inventions with the information provided in the patents.

The IPKat is glad that the court considered the policy issue underlining insufficiency as a ground of revocation. When drafting a patent, a professional adviser can become so close to the invention that he loses track of the gap that must be bridged between the invention itself and those most likely to be interested in it. Also, with translation fees to consider, a policy of "less is best" has its attractions when deciding how much to put into a patent specification. But there comes a point beyond which the patentee simply can't be given the benefit of the doubt and, in the learned judge's opinion, this was one such casee.

Earlier litigation between the same parties here and here

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