Legal Updates

Intellectual Property: Patent Revocation - Lack of Novelty

In Nikken Kosakusho Works and another v Pioneer Trading and another [2005], the claimant brought injunctive proceedings against Pioneer in mid 2003, for patent infringement, copyright and trade mark infringement as well as passing off in respect of milling chucks manufactured by Pioneer. Nikken claimed that Pioneer's chucks infringed their patented groove. The chucks contained a groove to improve gripping tension. Mr Justice Jacob in August that year, refused to grant Nikken an injunction. He ruled that Nikken had failed to show a seriously arguable case without even considering the balance of convenience. Mr Justice Jacobs awarded Pioneer its costs of the injunction application which he assessed on a summary basis to be paid within 14 days by Nikken. It should be noted that the payment of costs in this way, is very much an unprecedented step by the courts.

The first claimant was the proprietor of a patent relating to the design of chucks, used in high speed precision cutting or drilling. The second claimant was the first claimant's United Kingdom subsidiary. The claimants commenced proceedings for patent infringement against the defendants, a Japanese company and its German subsidiary, which traded in engineering tools.



The defendants issued a counter-claim for a declaration of non-infringement and for revocation of the patent on the grounds of lack of novelty and obviousness. The claimants subsequently abandoned its claim for infringement, leaving only the issue of revocation for determination by the court. The defendants alleged that claim 1 of the patent had been anticipated by a prior patent which related to a drill chuck with a similar purpose to the chuck produced by the claimants. They argued, further, that claim 8 of the patent contained no inventive step and was therefore an obvious invention.

'(1) In any proceedings before the court or the comptroller in which the validity of a patent is put in issue the court or, as the case may be, the comptroller may, ..., allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the court or comptroller thinks fit.'

Section 76 provides: '(3) No amendment of the specification of a patent shall be allowed under ... s 75 if it (a) results in the specification disclosing additional matter ... '

The court allowed the counter-claim of the defendants and ruled that:-

• On the evidence, claim 1 of the patent had been anticipated by the prior patent and was void for Lack of novelty;
• Claim 8 was invalid for obviousness or lack of novelty;

 All other claims in the patent were dependant on one or other of the two invalid claims and accordingly the patent would be revoked.

The first claimant (the patentee) then applied to stay the revocation and to amend claim 1 of the patent to specify that the 'predetermined depth' of the groove formed in the chuck sleeve was to be 3-5mm. The defendants argued that the patentee should have applied to amend the patent during the trial and should not be allowed to amend at such a late stage. It further alleged that the proposed amendment fell foul of s 76(3) of the Patents Act 1977. The court had to decide:-

• The extent to which the proposed amendment raised a point which required a fresh trial and whether or not the amendment might be allowed, and
• Whether the proposed amendment would result in the patent disclosing additional matter, contrary to s 76 of the Patents Act 1977.

The application was dismissed. The court ruled.-

• On the facts of the instant case, it would be oppressive to the defendants to allow an amendment which should have been raised at trial and which, if allowed, would result in further litigation; and
• It was clear that the skilled man would learn something from the amended patent which he would not have learnt from the unamended patent. Therefore, the patentee sought by the proposed amendment to include additional matter within the meaning of section 76 of the Patents Act 1977. The court refused leave to appeal. However, Nikken have now sought leave from the Court of Appeal.

Comment: The proposed amendment was rejected on the grounds that far from limiting the claims, the proposed amendments contained new teaching and therefore disclosed additional matter which should have been raised before the trial.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.