Novelty - Cases

Question 1

Asahi’s Application [1991]

Answer 1

Prior art will anticipate an invention if it provides an enabling disclosure

Question 2

Synthon v SmithKline [2005]

Answer 2

Anticipation has two elements:

(a) disclosure; and
(b) enablement.

Disclosure - uses the infringement test

Enablement - the ordinary skilled person could have performed the invention which satisfies the requirement of disclosure.

Differing enabling requirements - low tech/high tech inventions may require different levels of disclosure to be enabling.

Question 3

Hill v Evans

Answer 3

If a prior art document does not sufficiently disclose the present invention such that the skilled person could not perform the invention, then there is room for another valid patent.

Question 4

General Tire & Rubber v Firestone Tyre & Rubber [1972]

Answer 4

The earlier publication must be interpreted at the date of its publication, having regard to the surrounding circumstances which existed at the time. If the earlier publication, so construed, discloses the same invention as the patentee, then the patent claim has been anticipated.

Question 5

PLG Research Ltd v Ardon [1993]

Answer 5

For a document to form part of the state of the art, the information must have been available to at least one member of the public free in law and equity to use it.

Question 6

Bristol Myers Co’s App [1969]

Answer 6

If information has been communicated to at least one member of the public (without any inhibiting fetter), then this amounts to making it available to the public.

Question 7

Lux Traffic v Pike Signals [1993]

Answer 7

There is no need to prove that anybody actually saw the disclosure, provided the relevant disclosure was in public.

Question 8

Folding Attic Stairs Ltd v Loft Stairs Company [2009]

Answer 8

There may be a difference between “seeing” and “observing” something.

Question 9

Merrel Dow [1996]

Lord Hoffman

Answer 9

s.2(2) does not confine the state of the art about products to the knowledge of the [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.

Question 10

Wesley Jessen v Coopervision [2003]

Answer 10

A disclosure to a person who does not understand what they are told and thus cannot make further use of the information has been suggested as not being made available to the public.

Question 11

Van der Lely v Bamfords [1963]

Answer 11

The disclosure does not need to be entirely enabling such that no trial and error is required to produce the invention. Normal practices of trial and error are allowable.

Question 12

Von Heyden v Neustadt [1880]

Answer 12

No mosaicking for novelty.

Each document must be interpreted on its own and so not allowed to piece together prior documents to destroy novelty.

Question 13

Sharpe & Dohme v Boots Pure Drug [1927]

Answer 13

Mosaicking (for novelty) is permissible if a series of papers directly refers to each other so that a person reading one can find the others.

Question 14

T 328/87 Washing Machine/THOMSON BRANDT [1992]

Answer 14

EPO novelty (what is requried):

all the facts which make it possible to determine the date of prior use and the circumstances relating to the alleged use.

Question 15

T 123/82 Polyurethane Plastics/BAYER [1979-85]

Answer 15

Something filed on the priority date (even if before the application in suit) does not anticipate.

Question 16

T 205/91 Continuous production of inorganic based material/FRAUNHOFER-GESELLSCHAFT

Answer 16

A non-patent document is construed at the date of publication.

Question 17

T 233/90 Magnetic recording medium/KONICA

Answer 17

A patent document is construed at the date of filing of the earlier application.

Question 18

T 305/87 GREHAL/Shear

Answer 18

Not possible to mosaic for novelty at EPO

Question 19

T 153/85 AMOCO CORP/Alternative claims

Answer 19

Can mosaic documents for novelty if the document explicitly refers to another provided that the referred to document was available to the public at the time of publication of the document.

Question 20

G 2/88 Friction reducing additive/MOBIL OIL III [1990]

Answer 20

All the elements of the claimed invention have been disclosed to one member of the public.

Question 21

T 165/96 Prefading/CAYLA [2002]

Answer 21

No requirement that a doc is disclosed to a minimum number of people.

Question 22

T 482/89 Power supply unit/TELEMECHANIQUE [1992]

Answer 22

The sale of an article to a member of the public is sufficient to amount to disclosure.

Question 23

T 969/90 Tube électronique/THOMSON

Answer 23

The purchaser of an article does not need to be a skilled person to amount to a disclosure.

Question 24

T 171/84 Trial and error/AIR PRODUCTS [1986]

Answer 24

A skilled person can correct minor mistakes (trial and error) if they do not effect the clarity or conciseness of the disclosure.

Question 25

T 177/83 Fibre composites/BAYER [1979-85]

Answer 25

There must be a complete correspondence between all the features of an application in suit and the prior art for novelty to be destroyed

Question 26

T 411/98 Training Pant/KIMBERLY-CLARK [2002]

Answer 26

Correspondence of just the essential features is not enough to destroy novelty.

Question 27

T 830/90 Secrecy/MACOR [1994]

Answer 27

Something does not anticipate if it was made secretly.

Secrecy can extend to small or large groups of people.

Question 28

T 61/95 MONFORTS

Answer 28

A document which is unpublished but available on request amounts to disclosure for novelty purposes.

Question 29

T 84/83 Rear view mirror/LUCTENBERG [1979-85]

Answer 29

No actual sight necessary.

Question 30

T 877/90 T-Cell Growth Factor/HOOPER [1993]

Answer 30

Disclosure to a person who does not understand it does not amount to making available to the public.

Question 31

T 206/83 Enabling Disclosure/ICI [1987]

Answer 31

Disclosure must be enabling to destroy novelty.

Question 32

T 450/89 Electroless plating/ENTHONE [1994]

Answer 32

The invention must be disclosed clearly and unmistakably.

Question 33

T 59/86 Friction Reducing additive/MOBIL OIL IV [1991]

Answer 33

An invention may also be clearly and unambiguously implied in the disclosure to destroy novelty.

Question 34

Sabaf v MFI Furniture [2005]

Answer 34

Before assessing inventive step, first have to decide if there is more than one invention.

Two inventions do not become one invention because they are contained in the same hardware.