Novelty Flashcards
Hill v Evans (1862)
ENABLING DISCLOSURE
Person skilled in the art… …would at once perceive, understand and be able to apply the discovery without the necessity for further experiments.
General Tire&Rubber
v
Firestone Tyre&Rubber(1992)
BACKGROUND OF THE DISCLOSURE
Must take into account the circumstances in which the anticipating invention was made (the earlier publication must be interpreted at the date of its publication)
Also in this case: Common general knowledge of the person skilled in the art is different from public knowledge.
Folding Attic Stairs Limited
v
Loft Stairs Company (2009)
DISCLOSURE
A photographer and a government Minister were invited into a factory to see a prototype of a folding loft stair. They were not under any obligation of confidence.
The High Court found that there was no evidence that the photographer or Minister had inspected the prototype, nor that either of them were persons skilled in the art. It was therefore ruled the prototype was not in the public domain or made accessible to the public to become part of the prior art.
Lux Traffic Controls Ltd
v
Pike Signals Ltd (1993)
NOVELTY: AVAILABLE TO THE PUBLIC
Facts: It was claimed that a temporary traffic light was not “new” because it had been made available to the public in a paper, by oral disclosure and by the use of a prototype which had been tested in public in Somerset. It did not matter whether anyone observed the particular feature claimed by the patentee.
Legal principle: A prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented; a signpost will not suffice. Where prior use is concerned, there is no need for a skilled person actually to examine the invention as long as they were free in law and equity to do so, and if a skilled person had seen it they would have been able to understand what the inventive concept was.
Synthon BV
v
SmithKline Beecham (2006)
DIFFERING ROLES OF THE SKILLED PERSON IN DISCLOSURE AND ENABLEMENT
Facts: This was an appeal to the House of Lords by Synthon to revoke SmithKline’s patent for an anti-depression drug. The application was based on the disclosure of Synthon’s own flawed earlier patent application. SmithKline’s patent was found to be invalid for lack of novelty based on section 2(3) of the Patents Act 1977.
Legal Principle: What is regarded as part of the state of the art includes things disclosed to a skilled person which, if performed, must infringe the patent. To decide whether there was an enabling disclosure it is assumed that the skilled person would be willing to conduct trial and error experiments to get the invention to work. In other words, trial and error experiments are relevant to whether what has been disclosed is enabled. Trial and error experiments are not relevant, however, to the question of disclosure. Enablement and disclosure are two different concepts.
Unpublished patent applications: Section 2 (3) is applicable only to the issue of novelty and not to inventive step/obviousness. Disclosure: infringement test (if the prior art was set later in time than the patent, would it infringe the patent?)
Merrell Dow v HN Norton (1996)
DISCLOSURE: EQUIVALENT TEACHING
(The metabolite case)
Facts: the claimant isolated, identified and patented a metabolite that was created naturally in the body of patients taking terfenadine. Then the claimant brought an action against Norton claiming that by supplying terfenadine the defendant was facilitating the making of the patented metabolite. While the patented metabolite was inevitably produced in the body of the volunteers when they took terfenadine, this working of the invention was not as a result of information that had been made available to the public.
Legal principle: when deciding novelty the starting point is whether there had been an enabling disclosure of the claimed invention. While an invention might have been in existence before the priority date through a secret or onherent use this was not sufficient in itself to destroy novelty. On the basis that the use of terfenadine conveyed no information that would have enabled anyone to work the invention, the House of Lords held that the prior use was not anticipatory.
Van der Lely v Bamfords (1963)
TRIAL AND ERROR IN ENABLEMENT
The disclosure does not need to be so totally enabling as to avoid “the ordinary methods of trial and error which involve no inventive step and generally are necessary in applying any discovery to producing a practical result”
Von Heyden v Neustadt (1880)
MOSAICING
For determining novelty each document must be interpreted on its own and so not allowed to piece together prior documents to destroy novelty.
SEE Sharpne and Dohme v Boots Pure Drug (1927)
Sharpne and Dohme v Boots Pure Drug (1927)
NOVELTY: MOSAICING ALLOWED IF…
“where a series of paper refer to each other so that a person (uninventive skilled worker) reading one can find each of the others, this is not an impermissible mosaic and can be used to atack novelty.”
Darcy v Allein (1602)
THE MONOPOLIES CASE
Plaintiff received from the Queen a licence to import and sell playing cards in the UK. The defendant tried to make and sell his own cards and was sued. Court ruled that the Queen’s grant of a monopoly was invalid:
- monopolies promote idleness because they prevent a PSA to practice their trade
- monopolies con only be used for the private gain of the monopolist.
Asahi’s Application (1991)
ENABLING DISCLOSURE
Held: on the assumed facts that there had been a prior disclosure of the same invention neither the disclosed information nor the CGK (common general knowledge) would have enabled the PSA to make it. The argument that the purpose of a 2(3) was to prevent double patenting, was rejected.
Key Rule: A novelty destroying disclosure must be enabling.
Technograph
v
Mills & Rockley (1972) RPC 346, 355
MOSAICING ALLOWED IN INVENTIVE STEP
“When dealing with obviousness, unlike novelty, it is permissible to make a ‘mosaic’ out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man no inventive capacity”
OBVIOUSNESS “the familiar ‘step by step’ course…I do not find it persuasive. Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention.
MedImmune Ltd
v
Novartis Pharmaceuticals Ltd (2012)
STEP 4 WINDSURFING POZZOLI
Obvious to try
The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.’
Ultimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim….”
Asahi Medical v Macopharma (2002)
A decision as to whether a patent a patent was invalid for obviousness did not require a conclusion as to whether or not the PSA would have been moderately or particularly interested in any document. No enabling disclosure in the prior art may be disregarded because of its obscurity, as any person can enter a library an exploit what he finds there.
