Novelty - Cases Flashcards
Ashai’s Application
(ANTICIPATION)
Prior art will anticipate an invention if it provides an enabling disclosure
Synthon v SmithKline
(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
Hill v Evans
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.
General Tire & Rubber v Firestone Tyre & Rubber
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
PLG Research Ltd v Ardon
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
Bristol Myers Co’s App
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
Lux Traffic v Pike Signals
No need to prove that anybody saw the disclosure, provided the relevant disclosure was in public
Folding Attic stairs v Loft stairs company
Difference between “seeing” and “observing” something in terms of disclosure
Merrel Dow [1996] (Lord Hoffman)
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.
Wesley Jessen v Coopervision
(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
Van der lely v Bamfords
(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.
Von Heyden v Neustadt
(Mosaicking)
for determining novelty each doc must be interpreted on its own and so not allowed to piece together prior docs to destroy novelty
Sharpe & Dohme v Boots
(Mosaicking)
where series of papers refer to each other so person reading one can find the others = CAN use mosaic to attack novelty
Washing machine / Thomson-Brandt
(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’
Polyurethane Plastics/ BAYER
(NOVELTY AT EPO)
Something filed on priority date (even before application in suit) does not anticipate
Continuous production of inorganic based material/ FRAUNHOFER GESELLSCHAFT
(NOVELTY AT EPO)
Document (non-patent) construed at date of publication
Magnetic recording medium/KONICA
(NOVELTY AT EPO)
Document (patent) construed at date of filing of the earlier application
GREHAL/Shear
(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.
AMOCO CORP/Alternative Claims
(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
Friction reducing additive/MOBIL OIL III
(MADE AVAILABLE TO WHO EPO)
All elements of claimed invention have been disclosed to one member of public
Prefading/CAYLA
(MADE AVAILABLE TO WHO EPO)
no requirement that it is disclosed to a minimum number of people
Single Sales/TELEMECHANIQUE
(MADE AVAILABLE TO WHO EPO)
No obligation of secrecy
Power supply unit/TELEMECHANIQUE
(MADE AVAILABLE TO WHO EPO)
sale of an article to a member of the public = sufficient to amount to disclosure
Tube electronique/THOMSON
(MADE AVAIL TO WHO EPO)
purchaser doesnt need to be a skilled person
Trial and error/AIR PRODUCTS
(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
Fibre composites/BAYER
(IDENTITY TEST)
must be complete correspondence between all technical features of the application in suit and prior art
Training Pant/ KIMBERLY-CLARK
(IDENTITY TEST)
correspondence of essential features is therefore not enough
Secrecy/MACOR
(Secrecy)
Something does not anticipate where it was made secretly
Secrecy can exist in relation to both small and large groups of people
MONFORTS
(Actual sight)
A doc which is unpublished but available on request amounts to disclosure for purposes of novelty
Rear View Mirror/ LUCTENBERG
(Actual Sight)
necessary to show realistic possibility that skilled person saw disclosure, not that actually saw it
T-Cell Growth Factor/HOOPER
(Actual Sight)
disclosure to person who doesn’t understand invention is not making available to public
Enabling Disclosure/ICI
(Construing prior art)
Disclosure must = enabling (PSA can perform invention)
Electroless plating/ENTHONE
(Construing prior art)
invention therefore must be disclosed clearly and unmistakably
Friction reducing additive/MOBIL OIL
(Construing prior art)
can also be clearly and unambiguously implied in disclosure
