M-Systems v Trek 2000: USB sticks get stuck

Another judgment from the Honourable Mr Justice Kitchin has just appeared, this time being available in full from BAILII (unlike the one from a couple of days back). The case relates to revocation and (among other things) to whether a patentee should be allowed to amend their patent under section 75.

The patent in question related to high-capacity USB memory sticks, which may now be very familiar to most computer users but which, when the patent was applied for in 2000, were not particularly well known, at least not in the form they are nowadays (above right: a 4GB USB stick available from eBuyer). The granted patent claimed:

A portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device.

In earlier proceedings before the Comptroller, M-Systems had been successful in their application to revoke Trek's GB patent, citing various prior art disclosures describing plug-in memory devices. Trek then claimed that their devices were actually much smaller, had higher capacity, were limited to USB devices that replaced CD-ROMs and could be plugged directly into a serial socket rather than requiring a cable. They consequently submitted amendments to work around the prior art in an attempt to maintain their patent in some form. The Hearing Officer did not, however, allow them to amend because their proposed amendments did not address the issues, added subject matter and in any case should not be permitted because Trek had failed to establish why the Comptroller should allow them. The issue of discretion to amend revolved around an unresolved argument as to exactly when Trek had become aware of certain prior art disclosures, and whether as a result they should be given discretion to amend, under the provisions then in force. Trek even tried to argue that to be forced to disclose when they knew about relevant prior art would be contrary to the Human Rights Act 1998 [this is the point where the IPKat's credulity in Trek's arguments started to crumble].

After reconsidering the several issues raised during Patent Office proceedings, Kitchin J found that the Hearing Officer had been correct on every single point. On the issue of discretion to amend, however, Kitchin had something else to say that unfortunately (at least for Trek) could have no bearing on the case in point, but will certainly be relevant in the future:

"I have found the proposed amendment is not allowable because it would result in the specification disclosing additional matter. However, the Hearing Officer also rejected it for a further reason, namely that he had not been provided sufficient information to permit him to allow the amendment in the exercise of his discretion. On 13 December 2007, after the conclusion of the appeal hearing before me, the Patents Act 2004 came into force. Section 2(5) amends section 75 of the 1977 Act and reads:

'(5) In section 75 of that Act (amendment in infringement or revocation proceedings), after subsection (4) there is inserted-

"(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention."

Section 75(5) applies to all patents (whether UK patents or European patents (UK)) and whether granted before or after 13 December 2007 and it undoubtedly radically alters the approach to be adopted to amendment applications. However, this is an appeal by way of review and not rehearing. Accordingly, it cannot possibly have any impact upon the outcome of this appeal unless I conclude that, under the old law, the Hearing Officer wrongly exercised his discretion so that the exercise of that discretion must be set aside."

This radical altering of the approach to be adopted could only mean that the provisions of Article 105a and associated rules of EPC2000 should now be used when considering post-grant amendments under sections 27 and 75. There is no provision in EPC2000 to allow the EPO to exercise discretion to amend, provided the basic formal requirements are met. The new form of sections 27 and 75 would therefore effectively remove all discretion from the courts and Patent Office hearing officers to disallow amendments on the grounds that the patentee knew about prior art and did nothing about it. Could this, the IPKat wonders, allow patentees with 'dirty hands' to get away with a bit more in future?