IN THE MATTER OF AN APPLICATION TO REVOKE JAMES GIBBONS LD.'S PATENT

155 [1957.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.6 L. Barnett's Application for a Patent 698092. and consistent with the invention described) was of more limited scope, than the principal Claim 1. Summing up therefore I take the view that Claim 6 is a narrower form of Claim 1 and that in consequence' having regard to the interim decision, Claim 6 5 must take the date of filing the complete specification. That being the case, Claim 6 must be regarded as invalid. by reason of the admission of prior user by the Applicant. 1 therefore decide to refuse to allow the application to proceed to the grant of a patent. 10 Before THE ASSISTANT-COMPTROLLER (iPATENTS). 3rd I>ecember, 1956. IN THE MATTER OF AN ApPLICATION TO REVOKE JAMES GIBBONS Ln.'s PATENT. Patent-Application to Comptroller for revocation-Prior user-New manu[acture-i-Practice-e-Preliminary hearing-Particulars ordered-Patents Act, 1949, 15 Sees. 14 (1) (e) and (f) and 33. S.S. Ld. filed an application for an order revoking a 'Patent in the name of J.G. Ld. and another giving as grounds, inter alia, those in Sec. 14 (1) (e) "that " the alleged invention . . . is obvious and clearly does not involve any inventive "step having regard to . . . what was used in the United Kingdom before the 20 "priority dates . . .", and in Sec. 14 (1) (f), (not an invention). The statement under Rule 97 did not deal with either of these two allegations. Held, at a preliminary hearing, the statement must be amended to include particulars or the grounds would be struck out. In his decision, the Assistant-Comptroller referred to Official Ruling i929 (B) 46 25 R.P.C. Appendix iii. Patent No. 730,751 related to "Improvements in Floor springs for Doors ". The subject-matter of the invention is not further relevant to this report. For the previous course of the revocation proceedings and of the concurrent amendment proceedings under Sec. 29, see pp. 158 et seq. '15-6 No.6] REPORTS OF PATENT, DESIGN, AND TRADE MARK' CASES {1957.] In the Matteroi an Application to Revoke James Gibbons Ld.'s Patent. cOn 3rd December, 1956, a preliminary hearing ex parte took place before the Assistant Comptroller, Mr. H. S. Gilham, acting for the Comptroller-General. R. Lochner appeared for the Applicants for revocation, Stanmore Springs Ld., whileS. Gratwick,Counsel for the Patentees, James Gibbons Ld. and P. E. Gibbons, was present as amicus curiae. The arguments of Counsel at the hearing appear sufficiently from the decision of the Assistant-Comptroller, dated 22nd January, 1957, which was as follows : The grounds for the application for an order revoking the patent are recited on Form 39 as follows : - 5 1. that the alleged invention claimed in the claims and each of them of the 10 complete specification, has been published in the United Kingdom, before the priority dates of the said claims in the specifications of United States Patents No., 1,120,544 and No. 2,544,252; 2. that the alleged invention claimed in the claims and each of them of the complete specification is obvious and clearly does not involve any inventive step 15 having regard to matters published in the specifications of United States Patents No. 1,120,544 and No. 2,544,252, or having regard to what was used in the United Kingdom before the priority dates of the said claims ; 3. that the subject of the claims and each of them of the complete specification is not an invention within the meaning of this Act; 20 4.. that the complete specification does not sufficiently and fairly describe the alleged invention or the method by which it is to be performed. The Office made three preliminary objections to the statement of case which accompanied the Form 39. These objeotions were, that the statement (a) does not deal with the allegation of prior use in 'Ground 2, (b) does not deal with 25 Ground 3, i.e.. that the subject of the claims is not an invention within the meaning of the Act, and (c) is at fault in referring to a proposal, in other proceedings, to amend the. sp~ci1iFati?n in suit. The Applicants for revocation, hereinafter referred to as the Opponents, contested the objections. A hearing to decide these preliminary questions was held 30 on the 3rd December, 1956, when Mr. Robert Lochner appeared as Counsel for the Opponents. I decided that objection (c) need not be maintained. again. I need not refer to it As regards the other objections, I must make an initial observation about pro- 35 cedure and practice. in the, Patent Office in opposition and revocation proceedings. I feel no doubt that Sees. 14 and 33 are intended to provide the means for ~x~ditious and .relatively inexpensive attack upon a patent at an early stage in Its life.. Accordingly, procedures be~ore the Comptroller should be kept as simple as possible and be adapted and appII~d so as to ensure that both parties are made 40 aware, as clearly an~ as s~o.n as. possible, ?f the full scope of the case which they ha ve to meet. ThIS posltI?n. ~~ dealt wl~th very ~learly in the Official Ruling 1929 (B), 46 R.P.C. Appendix 111, see particularly Iines 1 to 16 and 44 to 52· on p. iv and lines 1 and 2 on p. v. an Turning to objection (a), Form 39 alleges that the Patentees' invention is obvious 45 ha~In~ regard to what was used before the priority date of the Patentees' claim. ThIS LS an allegation at larg~ of some prior use which affects the validity of the patent, It JS ~ot supported In the Opponents' statement: of case by any reference whatever to prior use. 157 [1957.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No.6 In the Matter of an Application to Revoke James Gibbons Ld.'s Patent. It is the practice, and I think a proper practice, of the Office where prior publication is alleged to require the anticipating documents to be cited on the notice of opposition or application for revocation. Particulars. of alleged prior use may be more voluminous, in character; it may be more convenient to give particulars 5 of the alleged use in the statement of case which accompanies the notice or application. But in my view it is essential that the prior use should be particularised, If an opponent knows of instances of prior use upon which he intends to rely, he must be able, and ought, to give details in his statement, Unless he does so, the patentee is left completely in the dark as to the line of an attack 10 which may be fatal to the patent. I must refuse to allow the application for revocation to proceed unless the alleged prior use is particularised or, alternatively, the reference to prior use is cancelled from Form 39. In connection 'with this objection, Mr. Lochner argued that the reference to prior use in Sec. 14 (1) (e) covers not only specific instances of prior use, such 15 as would be dealt with under Sec. 14 (1) (d), but also common general knowledge of that which was used. That being so, he said, it would not be reasonable to ask an opponent to particularise common general knowled (...truncated)