Memory stick inventor loses patent

The inventor of an early USB memory stick has lost its appeal against the revocation of its patent. The company, Trek 2000, failed to win permission to amend its patent in order to keep it active.

The patent was filed for in 2000 and described a product which could act as an alternative to storage media such as magnetic and optical disks.

M-Systems objected to the patent in 2003, though, claiming that the invention was neither new nor inventive, and that the patent did not describe the invention clearly enough.

Trek then filed amendments to the patent which it hoped would provide enough clarity to save its patent, but a Hearing Officer of the Intellectual Property Office (UKIPO) rejected those amendments and revoked the patent.

Mr Justice Kitchin of the High Court has ruled that the UKIPO was correct in its revocation of the patent.

In order to avoid the patent becoming invalid because of a previously filed patent, Trek filed an amendment to its patent claiming that it had intended it to make clear that its drives connected directly into computers and not via a cable.

The Hearing Officer said that the original claim had not limited the patent to non-cable devices, and Mr Justice Kitchin agreed.

There were two proposed amendments to the patent. The first was accepted, and did not exclude cabled devices. The second was not accepted and it did specifically exclude cabled devices.

Mr Justice Kitchin said that this changed the patent materially, and that the Hearing Officer was right to refuse to allow it.

"As to claim 1 as proposed to be amended, this does involve a specific disclosure of and limitation to devices which have no cable," wrote Mr Justice Kitchin in his ruling.

"Although the invention described in the application as filed no doubt included such devices, they were not clearly and unambiguously disclosed.

The Hearing Officer was right to conclude that the proposed amendment was therefore inadmissible because it would result in the specification disclosing additional matter."

The High Court also dealt with a further aspect of the case, which was the listing of previous patents dealing with similar devices, or prior art, in a Trek submission.

The Hearing Officer of the UKIPO said that had other factors not acted against the allowing of the second amendment he might have been able to allow it at his discretion. But, he said, the information supplied by Trek was too poor to give him the basis for doing so.

"As the Hearing Officer explained, his difficulty was that Trek put forward no facts at all; nor did it claim privilege in any particular communication. Instead it took its stand that, as a matter of principle, it was not required to disclose anything," wrote Mr Justice Kitchin.

"As a result, the Hearing Officer was given nothing upon which to exercise his discretion. In these circumstances I do not think he can be criticised for reaching the conclusion he did and for refusing to allow the amendments to claim 1," he wrote.

The High Court agreed with the UKIPO hearing officer and dismissed the appeal.