Case No. IP-2018-000014

79.Linpac’s application to amend the Linpac Patent pursuant to s.75 of the Patents Act 1977 (‘the 1977 Act’) is refused because the amended patent would still lack inventive step. 80.Quinn also argued that the amended claims do not comply with s.76(3), which provides: (3) No amendment of the specification of a patent shall be allowed under section … 75 if it – (a) results in the specification disclosing additional matter, or (b) extends the protection conferred by the patent. Extended protection 81.To explain the argument on extended protection I here set out amended claim 6 marked up to show the proposed deletion and the proposed addition in italics: A container according to any preceding claim, further comprising at least one denesting recess, free of adhesive, adjacent a corner of the container at least one denesting recess located in a denesting area, wherein the denesting area is relieved relative to the upper surface of the peripheral flange so that the distance between the upper surface of the relieved area and the base of the tray is shorter than the distance between the upper surface of the flange and the base, and the denesting area is devoid of adhesive. 82.Quinn argued that the deletion of the words ‘adjacent a corner of the container’ would mean that the amended claim would newly cover embodiments with a denesting recess located otherwise than adjacent a corner of the container. The amendment therefore does not comply with s.76(3)(b). 83.I am not convinced by this argument. Although the effect of the amendment to claim 6 is undoubtedly to extend its scope to cover denesting areas which are not adjacent a corner of the container, what matters is whether the amendment would extend the protection conferred by the patent. 84.Claim 7 marked up to show the amendments is as follows: A container according to any preceding claim 6, further comprising a denesting area, free of adhesive, which extends partially or completely along the inner periphery of the flange. wherein the relieved denesting area is located at the corners of the tray. 85.Claim 7 as granted covers a denesting area which extends partially or completely along the inner periphery of the flange. Quinn’s argument works only if it is possible to have a denesting area which is neither adjacent a corner of the container nor extends partially or completely along the inner periphery of the flange. I think that the answer is found in the specification of the Linpac Patent at page 9, lines 19-24: “… the tray of the present invention may comprise at least one denesting recess located in a denesting area, whereby the denesting area is relieved relative to the upper surface of the flange, i.e. set lower than the flange level by a distance of preferably 1mm. The relieved area extends partially (for example as crescents adjacent the corners of the tray) or completely (i.e. both adjacent the corners of the tray and along the sides of the tray) along the inner periphery of the flange …” 86.The integer ‘partially or completely along the inner periphery of the flange’ as found in the claims is not limiting but permissive. The denesting area may either lie completely along the inner periphery of the flange or alternatively along part of it, such as adjacent the corners of the tray. That freedom of location is possible in the claims as granted and in the proposed amended claims. Moreover, ‘along the inner periphery of the flange’ does not imply that the denesting area is level with the flange. It is clear from both the specification and the claims that it may lie at any lower level. 87.Linpac barely sought to defend the amendment to claim 6. The point made was that the proposed amendment to claim 7 reintroduces the limitation deleted from claim 6, so amended claim 7 complies with the statute and amended claim 6 can be abandoned. But as I have said, the so-called limitation is not a limitation at all. I do not accept Quinn’s first argument on extended protection.88.Quinn had a second argument. It was that amended claims 6 and 7 would newly cover a denesting area which is not free of adhesive. I think that Quinn is right to this extent: on a literal construction of the claims, the protection conferred by the patent would be extended by amendment to encompass a container with a denesting area covered in adhesive. On the other hand, it may be that the skilled person would read into the claim the limitation that a denesting area must be free of adhesive for obvious practical reasons. 89.If the permissibility of the amendments had turned solely on this point I would have allowed further submissions on whether there is support for a simple further amendment to cure the difficulty. Additional matter 90. Quinn’s argument on added matter depended on the integer ‘which extends partially or completely along the inner periphery of the flange’ being a limitation. The argument falls away.