Intellectual Property: Patents – Drafting with Reasonable Care and Skill

By Rosanna Cooper

In the case of Unilin Beheer BV v Berry Floor NV & Ors, Information Management Consultancy Ltd, B&Q plc (2005), the courts ruled that the faulty drafting of a patent application did not amount to lack of reasonable care and skill.

Unilin, the claimant, applied for a patent for a floor covering and the application succeeded. Unilin then became aware of prior art which made it necessary for it to amend the patent application by reducing the scope of the main claim. Unilin also amended the body of the specification so that the text and drawings conformed to the main claim.

After grant of the patent, Unilin sued three defendants for patent infringement. The defendants counterclaimed, arguing that a piece of prior art (Yoichi) had not been cited against the patent.

On 26 September 2003, the court held that Claims 1-19 of the patent were invalid in respect of the prior art Yoichi but Claims 20 and 21 were valid and infringed by the defendant. Unilin claimed damages for past infringements and costs.

The defendants contended that Unilin could not claim damages by way of s.63 (2) of the Patents Act 1977 whereby a court cannot grant any relief if a patent is only partially valid unless it is proven that the patent was framed in good faith and with reasonable care and skill. The defendants argued that Unilin did not frame the patent with reasonable care and skill.

Unilin’s patent contained a limitation that the floor covering panels substantially consist of HDF or MDF board and that there should be a snap together connection. These limitations were not essential when the patent was first applied for, so the amendments that Unilin made were to make MDF/HDF and snap-fit essential. Unilin also amended the description so it conformed to the amended claim. The defendants said that Unilin failed to exercise reasonable care and skill in amending the description.

The Court of Appeal held that:

▪ the specification as a whole was drafted with reasonable care and skill;

▪ if there was some irrelevant but harmless information in the specification this did not mean it was not drafted without reasonable care and skill; and

▪ the specifications were not misleading.

The appeal was therefore dismissed and Unilin and it was ruled that would be paid damages and costs.

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