EPLAW Patent Blog

UK - Brigade v. Amber Valley

Brigade (BBS-Tek) Limited v. Amber Valley Limited, Patents County Court, HH Judge Birss QC, 19 April 2013, London, UK, Case No. [2013] EWPCC 16

In this judgment, HH Judge Birss QC has found the Claimant’s (“Brigade”) UK Patent No. 2,318,662 (“the Patent”) partially valid and infringed by the Defendant’s (“Amber Valley”) vehicle reversing alarm product called Ecolarm.

The Patent relates to an alarm (or other device) that enables an individual to locate a given object and take appropriate action, and the use of such an alarm as a locating device, the core idea of the invention being an alarm in which the sound emitted is broad band noise (e.g. white noise). Tonal sounds, even complex tonal sounds, were deemed not to be broad band noise, as construed in the context of the Patent.

In the course of the proceedings, Brigade unconditionally applied to amend the Patent effectively limiting the claimed devices (and claimed use thereof) to “indicating” devices or vehicle sirens. There was no dispute as to the allowability of the amendments. Amber Valley challenged the validity of the Patent (as amended) on the grounds of added matter, anticipation and obviousness.

EPO - The inescapable trap enlarged

EPO, Technical Board of Appeal  3.2.04, 28 September 2009, Decision No. T 567/08 – Unilever v. Plasticos and Colgate-Palmolive

As to the problem of added subject-matter, EPO practice exhibits a specific feature which is dangerous for the patentee in opposition proceedings. If the EPO considers a limiting amendment, made and allowed in grant proceedings, to have added new matter, the patentee falls into the inescapable trap created by the Enlarged Board of Appeal in decision G 1/93: The amendment cannot remain in the claim because of the prohibition of adding new matter in and it cannot be removed from the claim because of the prohibition of extending the scope of protection after grant.