Philips loses right to amend TV menu patent

Philips has lost a case to amend a patent for its television menu technology. The electronics giant had attempted to change its existing patent, but the alterations were ruled to be too wide ranging.

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.

See: The ruling (12-page / 55KB PDF)

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