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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> Smith International Inc. v Specialised Petroleum Services Group (Patent) [2004] UKIntelP o35204 (1 December 2004) URL: http://www.bailii.org/uk/cases/UKIntelP/2004/o35204.html Cite as: [2004] UKIntelP o35204 |
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For the whole decision click here: o35204
Summary
It was held that claim 1 to a downhole tool for cleaning well fluid lacked novelty, but that claim 23 to a method of cleaning well fluid was novel, in relation to a prior art disclosure. Claim 1 which specified a downhole tool having a filter for removing debris from well fluid was held to be anticipated by a prior art downhole sand-trap which was intended for a different purpose but nevertheless was suitable for the functions specified in claim 1. However, an alternative argument that, if claim 1 was novel, then it would be obvious from the prior art and common general knowledge, was rejected. Claim 23 was not anticipated because the prior art did not disclose cleaning well fluid whilst circulating the well fluid, as required by the claim.
A proposed new claim relying on proportions shown in the drawings for support was not allowable because the drawing was not one which the skilled reader would assume was accurately to scale in this respect.
The claimant argued that for consistency with court practice, the defendant should only be allowed to make claim-deleting amendments. The hearing officer rejected this, ruling that it would be reasonable and not inconsistent with court practice to consider post-decision claim-validating amendments in revocation actions. However, they would have to be considered in relation to the tests in Smith Kline and the overriding objective of Tribunal Practice Notice 1/2000, and the hearing officer could not do this until they had been filed.