This was the experience of AP Racing when it went to the UK courts to assert its UK patent for a brake caliper ‘in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan.’ AP Racing had previously added this ‘feature 6’ to the main claim of the patent application during the examination process before the UK IP Office.
According to the court, AP Racing ‘accepted that the text
of feature 6 is not to be found in the [original] application document’ but
noted that ‘AP Racing also relies on the point that it can be seen simply by
looking at the figures [of the original application document] that the
peripheral stiffening bands are asymmetrical’.
However, the court did not agree with this point, concluding that it did
‘not believe anyone reading the [original] application would have
derived from the application a concept at the same level of generality as
feature 6’ and declaring the claim
invalid on the grounds that extra subject-matter had been added to the
application in the course of the examination process.
More detail on the challenges in protecting
optimised designs of brake calipers can be found in Tirović, M. and Hartwell, I.P. (2013) ‘Design optimisation – challenges
in protecting intellectual property’, Int. J. Intellectual Property
Management, Vol. 6, No. 3, pp.159–177.
This is but one of many ways of using
intellectual property in engineering business. You should of course seek
professional advice on your own particular circumstances.
