Novelty - Cases

Question 1

Ashai’s Application

Answer 1

(ANTICIPATION)

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

Question 2

Synthon v SmithKline

Answer 2

(ANTICIPATION)

Anticipation has two elements:

(a) disclosure
(b) enablement

Disclosure - uses the infringement test

Enablement - ordinary PSA could have performed the invention, satisfying disclosure requirement

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

Question 3

Hill v Evans

Answer 3

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

Question 4

General Tire & Rubber v Firestone Tyre & Rubber

Answer 4

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 patentee claim has been anticipated

aka document should be construed as it would be at date of publication

Question 5

PLG Research Ltd v Ardon

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

Answer 6

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

Question 7

Lux Traffic v Pike Signals

Answer 7

No need to prove that anybody saw the disclosure, provided the relevant disclosure was in public

Question 8

Folding Attic stairs v Loft stairs company

Answer 8

Difference between “seeing” and “observing” something in terms of disclosure

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 not form state of the art

so it is part of the state of the art if info disclosed enables public to know product sufficient to work it.

Question 10

Wesley Jessen v Coopervision

Answer 10

(ENABLEMENT)

disclosure to person who doesnt understand what told or given and cant make any further use has been suggested as made available to public .

members of the public using contact lenses anticipates invention even if didnt know special features of what they were using

Question 11

Van der lely v Bamfords

Answer 11

(TRIAL AND ERROR)

disclosure no need to be totally enabling as to avoid ordinary methods of trial and error which involve no inventive step and generally necessary in applying discovery to producing a practical result.

Question 12

Von Heyden v Neustadt

Answer 12

(Mosaicking)

for determining novelty each doc must be interpreted on its own and so not allowed to piece together prior docs to destroy novelty

Question 13

Sharpe & Dohme v Boots

Answer 13

(Mosaicking)

where series of papers refer to each other so person reading one can find the others = CAN use mosaic to attack novelty

Question 14

Washing machine / Thomson-Brandt

Answer 14

(NOVELTY AT EPO)

all facts which make it possible to determine date of prior use, what has been used and circumstances relating to alleged use’

Question 15

Polyurethane Plastics/ BAYER

Answer 15

(NOVELTY AT EPO)

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

Question 16

Continuous production of inorganic based material/ FRAUNHOFER GESELLSCHAFT

Answer 16

(NOVELTY AT EPO)

Document (non-patent) construed at date of publication

Question 17

Magnetic recording medium/KONICA

Answer 17

(NOVELTY AT EPO)

Document (patent) construed at date of filing of the earlier application

Question 18

GREHAL/Shear

Answer 18

(MOSAICKING AT EPO)

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.

Question 19

AMOCO CORP/Alternative Claims

Answer 19

(MOSAICKING AT EPO)

if doc refers explicitly to another document as providing more detailed info on certain features, teaching of latter regarded as incorporated into document continuing the reference. provided doc = available to pub on date of doc which had reference

Question 20

Friction reducing additive/MOBIL OIL III

Answer 20

(MADE AVAILABLE TO WHO EPO)

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

Question 21

Prefading/CAYLA

Answer 21

(MADE AVAILABLE TO WHO EPO)

no requirement that it is disclosed to a minimum number of people

Question 22

Single Sales/TELEMECHANIQUE

Answer 22

(MADE AVAILABLE TO WHO EPO)

No obligation of secrecy

Question 23

Power supply unit/TELEMECHANIQUE

Answer 23

(MADE AVAILABLE TO WHO EPO)

sale of an article to a member of the public = sufficient to amount to disclosure

Question 24

Tube electronique/THOMSON

Answer 24

(MADE AVAIL TO WHO EPO)

purchaser doesnt need to be a skilled person

Question 25

Trial and error/AIR PRODUCTS

Answer 25

(TRIAL AND ERROR EPO)

Skilled person can, as result of CGK correct minor errors if they dont affect the clarity or completeness of the disclosure

Question 26

Fibre composites/BAYER

Answer 26

(IDENTITY TEST)

must be complete correspondence between all technical features of the application in suit and prior art

Question 27

Training Pant/ KIMBERLY-CLARK

Answer 27

(IDENTITY TEST)

correspondence of essential features is therefore not enough

Question 28

Secrecy/MACOR

Answer 28

(Secrecy)

Something does not anticipate where it was made secretly

Secrecy can exist in relation to both small and large groups of people

Question 29

MONFORTS

Answer 29

(Actual sight)

A doc which is unpublished but available on request amounts to disclosure for purposes of novelty

Question 30

Rear View Mirror/ LUCTENBERG

Answer 30

(Actual Sight)

necessary to show realistic possibility that skilled person saw disclosure, not that actually saw it

Question 31

T-Cell Growth Factor/HOOPER

Answer 31

(Actual Sight)

disclosure to person who doesn’t understand invention is not making available to public

Question 32

Enabling Disclosure/ICI

Answer 32

(Construing prior art)

Disclosure must = enabling (PSA can perform invention)

Question 33

Electroless plating/ENTHONE

Answer 33

(Construing prior art)

invention therefore must be disclosed clearly and unmistakably

Question 34

Friction reducing additive/MOBIL OIL

Answer 34

(Construing prior art)

can also be clearly and unambiguously implied in disclosure