Novelty CASES Flashcards
Priority date
The date on which the novelty of the invention is judged
Prior Art
is means something which existed in the state of the art before the priority date of the invention
Anticipated
This means some piece of prior art exists which affects the novelty of the invention
- Asahi’s Application [1991]
Prior art will anticipate an invention if it provides an enabling disclosure.
Key terms: Basic requirements
- Synthon v SmithKline [2005]
The two elements:
Disclosure; and
Enablement
Lord Hoffmann: ”the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent. That may be because the prior art discloses the same invention. In that case there will be no question that performance of the earlier invention would infringe and usually it will be apparent to someone who is aware of both the prior art and the patent that it will do so. But patent infringement does not require that one should be aware that one is infringing….It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior art is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied”
“Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure.”
“In the case of a low-tech invention (for example a simple agricultural machine…) the simple disclosure of the invention will probably be enough to enable the skilled person to perform it. By contrast in the case of a high-tech invention in the field of pharmaceutical science the bald assertion of the existence of the invention may have to be accompanied by detailed disclosure enabling the skilled person to perform it”
Key terms: Basic requirements, infringement test, enablement
- Hill v Evans (1862)
“the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able to practically to apply the discovery…If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent”
Key terms: Disclosure
- General Tire & Rubber v Firestone Tyre & Rubber (1972)
“The earlier publication must…be interpreted at the date of its publication, having regard to the surrounding circumstances which then existed, and without regard to subsequent events… If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim…asserts that he has invented, the patentee’s claim has been anticipated, but not otherwise”
Key terms: Disclosure
*** PLG Research Ltd v Ardon [1993]
“to form part of the state of the art, the information given by the use must have been available to at least one member of the public who was free in law and equity to use it”
Key terms: Disclosure
*** Bristol Myers Co’s App [1969]
“if the information, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to a making available to the public…”
Key terms: Disclosure
- Lux Traffic v Pike Signals [1993]
“it is settled law that there is no need to prove that anybody actually saw the disclosure provide the relevant disclosure was in public.“
Key terms: Disclosure
- Folding Attic Stairs Limited v Loft Stairs Company [2009]
There may be a difference between “seeing” and “observing” something.
Key terms: Disclosure
General Tire and Rubber v Firestone Tyre [1972]
SmithKline Beecham v Apotex [2005] FSR 23
A document should be construed as it would be at the date of publication
Key terms: Disclosure
Lord Hoffmann, Merrell Dow [1996]
“section 2(2) does not purport to confine the state of the art about products to knowledge of their chemical composition. It is the invention which must be new and which must therefore not be part of the state of the art. It is therefore part of the state of the art if the information which has been disclosed enables the public to know the product under a description sufficient to work it”
Key terms: Equivalent teaching
*** Wesley Jessen v Coopervision [2003
A disclosure to a person who does not understand what he or she is told or given; and accordingly can make no further use has been suggested as not being made available to the public.
Members of the public using contact lenses anticipates invention even if did not know the special features of what they were using.
Key terms: enablement
*** Van der Lely v Bamfords [1963]
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”
Key terms: trial and error
Von Heyden v Neustadt (1880)
For determining novelty each document must be interpreted on its own and so not allowed to piece together prior documents to destroy novelty.
Key terms: mosaicking
*** Sharpe & Dohme v Boots Pure Drug (1927)
Where a series of paper refer to each other so that a person reading one can find each of the others, this is not an impermissible mosaic and can be used to attack novelty
Key terms: mosaicking
- T 328/87 Washing machine/THOMSON-BRANDT [1992]
“all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use.”
Key terms: novelty at the EPO
- T 123/82 Polyurethane Plastics /BAYER [1979–85]
Something filed on the priority date (even if before the application in suit) does not anticipate:
Key terms: novelty at the EPO
- T 205/91 Continuous production of inorganic based material/FRAUNHOFER-GESELLSCHAFT
Document (non-patent) construed at date of publication
Key terms: novelty at the EPO
- T 233/90 Magnetic recording medium/KONICA
Document (patent) construed at date of filing of the earlier application
Key terms: novelty at the EPO
*** T 305/87 GREHAL/Shear [1991]
It is not permissible to combine separate items belonging to different embodiments described in one and the same document, unless such combination has specifically been suggested.
Key terms: mosaicking at the EPO
- T 153/85 AMOCO CORP/Alternative claims [1988]
If a document refers explicitly to another document as providing more detailed information on certain features, the teaching of the latter is to be regarded as incorporated into the document containing the reference. Provided that the document referred to was available to the public on the publication date of the document containing the reference.
Key terms: mosaicking at the EPO
- G 2/88 Friction reducing additive/MOBIL OIL III [1990]
All the elements of the claimed invention have been disclosed to one member of the public.
Key terms: made available to who (EPO)
- T 165/96 Prefading/CAYLA [2002]
No requirement that it is disclosed to a minimum number of people (cf trade secrecy)
Key terms: made available to who (EPO)
- T 482/89 Single Sales/TELEMECHANIQUE [1992]
There is no obligation of secrecy
Key terms: made available to who (EPO)
- T 482/89 Power supply unit/TELEMECHANIQUE [1992]
The sale of an article to a member of the public is sufficient to amount to disclosure
Key terms: made available to who (EPO)
- T 969/90 Tube électronique/THOMSON
The purchaser does not need to be a skilled person
Key terms: made available to who (EPO)
- T 171/84 Trial and error/AIR PRODUCTS [1986]
A skilled person can, as a result of the common knowledge, correct minor errors if they do not affect the clarity or completeness of the disclosure.
Key terms: Trial and error
- T 177/83 Fibre composites/BAYER [1979-85]
There must be complete correspondence between all technical features of the application in suit and the prior art
Key terms: Identity test
- T 411/98 Training Pant/KIMBERLY-CLARK [2002]
Correspondence of the essential features is therefore not enough
Key terms: Identity test
- T 830/90 Secrecy/MACOR [1994
Something does not anticipate where it was made secretly.
Secrecy can exist in relation to both large and small groups of people
Key terms: Secrecy
- T 61/95 MONFORTS
A document which is unpublished but available on request amounts to disclosure for the purposes of novelty
Key terms: Actual sight
- T 84/83 Rear view mirror/LUCTENBERG [1979-85]
It is necessary to show that there was a realistic possibility that a skilled person saw the disclosure it is not necessary to show they actually saw it.
Key terms: Actual sight
- T 877/90 T-Cell Growth Factor/HOOPER [1993]
But disclosure to a person who does not understand the invention is not making available to the public
Key terms: Actual sight
- T 206/83 Enabling Disclosure/ICI [1987]
The disclosure must be enabling (meaning enabling a skilled person to perform the invention)
Key terms: Construing the prior art
- T 450/89 Electroless plating/ENTHONE [1994]
The invention must therefore be disclosed clearly and unmistakably
Key terms: Construing the prior art
- T 59/86 Friction Reducing additive/MOBIL OIL IV [1991]
It may also be clearly and unambiguously implied in the disclosure
Key terms: Construing the prior art
*** Sabaf v MFI Furniture [2005]
“before you can apply section 3 and ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, you have to decided whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware.”
*** ICI / Pyridine herbicides
A document (in this case a co-pending European application) does not effectively disclose a chemical compound, even though it states the structure and the steps by which it is produced, if the skilled person is unable to find out from the document or from common general knowledge how to obtain the required starting materials or intermediates.
Information which can only be obtained after a comprehensive search is not to be regarded as part of common general knowledge.
Actavis v Janssen
Criticised Mobil Oil, and said it should be narrowly interpreted in UK courts.
