The IPKat picked this decision up off the Butterworths All England Direct subscription-only series: Nikken Kosakusho Works and another v Pioneer Trading Co and another, a Court of Appeal (Waller, Chadwick and Jacob LJJ) ruling from Wednesday 29 June.At trial, Mr Justice Mann held that claim 1 of a patent, relating to the design of milling chucks, had been anticipated by a prior patent. Kosakusho applied to stay the revocation and to amend claim 1 of the patent so as to specify that the ‘predetermined depth’ of a groove formed in the chuck sleeve was to be 3-5mm. Pioneer objected: Kosakusho should have applied to amend the patent during the trial and should not be allowed to do so at such a late stage. Mann J held it would be oppressive to Pioneer to allow an amendment which should have been raised at trial and which, if allowed, would result in further litigation.
Kosakusho appealed, complaining that to disallow the amendment would result in it losing an asset, whereas Pioneer could be sufficiently compensated in costs.
The Court of Appeal dismissed Kosakusho's appeal and said as follows:
* there was a general requirement under the Civil Procedure Rules that litigants should present their entire case prior to trial. This principle applied just as strongly to patent cases as elsewhere.The IPKat thinks is exactly correct. Allowing a patent owner to amend his patent after he has already failed in litigation to prove its validity is a nightmare scenario, particularly for any smaller company taking on a stronger, larger patent owner.
* it would be improper to allow amendments after trial which could have been made beforehand. It was no answer to state that Kosakusho would lose a valuable asset whereas Pioneer could be compensated in costs; this was potentially so in every case to which the Henderson v Henderson (1843) 3 Hare 100 principle applied.
Nikken Kosakusho here
Pioneer Trading here
PATENTEE CAN'T AMEND DEAD PATENT BACK TO LIFE AGAIN
![PATENTEE CAN'T AMEND DEAD PATENT BACK TO LIFE AGAIN]()
Reviewed by Jeremy
on
Wednesday, June 29, 2005
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] EUIPO Second Board of Appeal refers case to Grand Board of Appeal following earlier refusal to register a photograph of a man’s head/face as an EU trade mark](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiUj9v-k3DYaSVMR4lsmKDLHVB5nIoINuvZNbH2TQCelrfaAE9qmGSAQs-plzQ7HnZ7Svk_gRdrIODp0Nat5vpWajduit3xkArNhK76AHhX770RIJ62thfCVI5fnvcXU-5zH4NkUSfPY9FjRMFiK7OKJ7m7YSo2FzhyPSoA8ZWCsxaOXb0bBCoPQA/s72-c/Picture%201.png)
![[Guest post] Benelux Office rules on opposition proceedings prepared by ChatGPT](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEi29VY0rNNP1Hqyz8RgB47r4q7fhqQfYHxsEbX_RKmT4KU5Y_vg7vB6dsAW91CidjMfJ38klTvD4mMtZb3QmwFPAHaGF88BPttWSbfYvo7UUg7MpFRTNtEjThmG0QaX2qZFFHSnN71i3YQZSBFC0SL7PgkAlme-XH8cSNWRFbOAOuLr_LMOGcImLQ/s72-c/Screenshot%202024-12-04%20at%2020.45.58.png)
Posts
No comments:
All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.
It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.
Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html