Rival electronics company Pace Micro took the case against
Philips to the Patent Office, where a Hearing Officer ruled largely
against Philips. The company has six weeks in which to submit a new
set of amendments.
The dispute arose when Pace Micro and Philips were negotiating
over use of technology Philips had patented. Its system allowed a
television viewer to see thumbnails of available channels and let
the viewer select a channel from the mosaic of moving pictures on
the screen.
"We found an invention of an earlier date," said Richard Clack,
Legal Counsel for Pace Micro. "It wasn't our patent, but we thought
it showed that Philips's was not novel."
Philips proposed amendments to its own patent, and Pace Micro
objected to those. The dispute ended up before Hearing Officer R C
Kennell of the Patent Office.
"Pace have argued that, because the wording of the proposed
claim is broader than that of the description, it should not be
allowed in a post-grant amendment," wrote Kennell in the judgment.
"The patentees reject this argument as unsustainable."
"I find that the proposed amendments, whilst resulting in claims
that are novel over the prior art, introduce matter in
contravention of section 76(3). For that reason I refuse to allow
the amendment in its present form," wrote Kennell.
Section 76(3) of the Patent Act says: "No amendment of the
specification of a patent shall be allowed … if it (a) results in
the specification disclosing additional matter, or (b) extends the
protection conferred by the patent."
"The Patent Office effectively said that the amendments would
introduce added matter not contained in the original patent, and
that is not allowed," said Clack. "This is a good result for
us."
Philips is now permitted to lodge alternative amendments which
are not as broad in scope. "It seems to me that there may well be
alternative amendments which would cure the lack of novelty in the
independent claims whilst avoiding the addition of matter," wrote
Kennell. "No ground of bad faith or covetousness having been made
out, I am prepared to allow Philips an opportunity to submit fresh
amendments."
Philips has six weeks in which to submit new changes to its
patent. Clack said that Pace Micro would assess any new proposals
and object to those if it felt they were not appropriate.
