The patent was filed for in 2000 and described a product which
could act as an alternative to storage media such as magnetic and
optical disks.
M-Systems objected to the patent in 2003, though, claiming that
the invention was neither new nor inventive, and that the patent
did not describe the invention clearly enough.
Trek then filed amendments to the patent which it hoped would
provide enough clarity to save its patent, but a Hearing Officer of
the Intellectual Property Office (UKIPO) rejected those amendments
and revoked the patent.
Mr Justice Kitchin of the High Court has ruled that the UKIPO
was correct in its revocation of the patent.
In order to avoid the patent becoming invalid because of a
previously filed patent, Trek filed an amendment to its patent
claiming that it had intended it to make clear that its drives
connected directly into computers and not via a cable.
The Hearing Officer said that the original claim had not limited
the patent to non-cable devices, and Mr Justice Kitchin agreed.
There were two proposed amendments to the patent. The first was
accepted, and did not exclude cabled devices. The second was not
accepted and it did specifically exclude cabled devices.
Mr Justice Kitchin said that this changed the patent materially,
and that the Hearing Officer was right to refuse to allow it.
"As to claim 1 as proposed to be amended, this does involve a
specific disclosure of and limitation to devices which have no
cable," wrote Mr Justice Kitchin in his ruling. "Although the
invention described in the application as filed no doubt included
such devices, they were not clearly and unambiguously disclosed.
The Hearing Officer was right to conclude that the proposed
amendment was therefore inadmissible because it would result in the
specification disclosing additional matter."
The High Court also dealt with a further aspect of the case,
which was the listing of previous patents dealing with similar
devices, or prior art, in a Trek submission.
The Hearing Officer of the UKIPO said that had other factors not
acted against the allowing of the second amendment he might have
been able to allow it at his discretion. But, he said, the
information supplied by Trek was too poor to give him the basis for
doing so.
"As the Hearing Officer explained, his difficulty was that Trek
put forward no facts at all; nor did it claim privilege in any
particular communication. Instead it took its stand that, as a
matter of principle, it was not required to disclose anything,"
wrote Mr Justice Kitchin.
"As a result, the Hearing Officer was given nothing upon which
to exercise his discretion. In these circumstances I do not think
he can be criticised for reaching the conclusion he did and for
refusing to allow the amendments to claim 1," he wrote.
The High Court agreed with the UKIPO hearing officer and
dismissed the appeal.
