PATENTEE CAN'T AMEND DEAD PATENT BACK TO LIFE AGAIN

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.

* 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.

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.

Nikken Kosakusho here
Pioneer Trading here