Novelty & Inventive Step Flashcards
What is an invention? Give 3 case law examples and how they defined what invention is
- Genentech Inc’s Patent [1989] RPC 147
- Mustill LJ described the need for an ‘invention’ to be a fundamental requirement for a patent to be granted - Biogen v Medeva plc [1997] RPC 1
- Lord Hoffmann need for an invention “academic”
- Lord Mustill refused to say Genetech was wrong - G 3/08 Computer Program [2011] OJ EPO 10l
- The approach in T 154/04 Estimating Sales Activity/DUNS LICENSING [2008] OJ EPO 46 (something which is an invention falls outside Article 52(2)) is right;
Give 3 types of novelty and explain each of them.
- Absolute novelty (UK &EPC)
- anything disclosed anywhere in the world whether by use or publication. Strictest standard - Relative novelty
- publication anywhere in the world counts but only use in that jurisdiction - Local novelty
- any use or publication in the jurisdiction affects novelty, nothing else does. Was a common system until the mid-20th century. Promotes technology/knowledge transfer. i.e.) if you see some innovative invention, you can come back to your home country and patent it there and use it i.e., exhibition.
Explain (with case laws) the basic requirement of novelty in the UK
Prior art will anticipate an invention if it provides an enabling disclosure – Asahi’s application [1991] RPC 485.
This enabling disclosure was explained in the case Synthon v SmithKline [2005] as having two elements:
- Disclosure
- Enablement.
What is a disclosure and disclosure to whom? Give a case law example.
In patent law, the term “public” could even mean one person. Disclosure of the invention to a single person would still be instated as disclosure.
To anticipate an invention, it must be available to the public:
- “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” – PLG Research Ltd v Ardon [1993] FSR 197, 226
Is actual sight necessary in disclosure? Give two case law examples
- Luc Traffic v Pike Signals [1993] RPC 107 – “it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public”.
- Another analogy used by the judge – if there’s a traffic management system software developer who get their system tested under the council’s permission and if they had the system in a box next to the traffic lights. The engineers, who would understand how these systems work, had the keys to access these boxes and there’s no evidence/proof that any of these engineers use the key to access and see the inside of the box, it can still be considered as disclosure under library principle
- Library principle – if a book is in a library, it’s considered to be disclosed even if nobody has ever read it. - Folding Attic Stairs Limited v Loft Stairs Company [2009] EWHC 1221 (Pats)
- But there may be a difference between “seeing” and “observing” something – you got to be actually engaged the image and understand the invention with for it to count.
When is the patent construed? Give 2 case law examples
A document should be construed as it would be at the date of publication – i.e.) if a patent is published/disclosed in 1920, you read it through the eyes of somebody in 1920.
1. General Tire & Rubber v Firestone Tyre [1972] RPC 457
2. SmithKline Beecham v Apotex [2005] FSR 23
What is the infringement test from the disclosure of a patent? Give a case law example
“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”
Lord Hoffmann, Synthon v SmithKlein [2005] UKHL 59, [22]
What is equivalent teaching
“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” – Lord Hoffman, Merrell Dow [1996] RPC 76, 88
Claim for compound invalid, claim for synthetic preparation was not disclosed in prior art and a claim for a synthetic compound was allowed
What is Enablement in the UK? Give a case law example
“Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure” – Lord Hoffman, Synthon v Smithkline [2005] UKHL 59, [26]
Enablement for novelty therefore equates with sufficiency in the application itself: see section 14(3) and 72(1) of the Patents Act 1977
What is the difference in the requirement of enablement? Give case law examples
“In the case of a low-tech invention, 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” – Lord Walker, Synthon v SmithKlein [2005] UKHL 59, [64]
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.
- Wesley Jessen v Coopervision [2003] RPC 20, members of the public using contact lenses anticipates invention even if they did not know the special features of what they were using. This is because they could have gone to a skilled person to look and examine the lenses. Therefore, disclosed.
- Would be better to file the patent and then do the trial testing to the public.
When we talk about the requirements of enablement, it varies. It can vary by technology
Tricky question in patent law, what happens when you disclose to somebody who doesn’t understand. i.e.) nuclear scientist talking to his/her daughter. Does that count as disclosure? If the daughter can remember everything that has been said to her and regurgitate them, it would be a disclosure, but just disclosing an invention to the public may not be enough
What is trial and error in enablement? And how does it affect the requirement of enablement?
The disclosure does not need to be so totally enabling as to avoid “the ordinary method of trial and error which involve no inventive step and generally are necessary in apply any discovery to producing a practical result” – Van der Lely v Bamfords [1963] RPC 61, 71. HL
Now often the “undue burden” test is applied based on EPC
What if there’s an error/mistake in disclosure? It’s still a disclosure provided that the skilled person can fix the errors without too much difficulty/undue burden
Undue burden – when a skilled person can identify/correct without much difficulty. Something so ridiculous that the skilled person would know something is wrong straight away.
Can you mosaic different patent documents to meet the requirement of enablement? Give examples of case law.
Generally mosaicking is not allowed – you need to have one identifiable piece of prior art including the entire disclosure
For determining novelty, each document must be interpreted on its own and so not allowed to piece together prior documents to destroy novelty – Von Heyden v Neustadt (1880) 58 LJ Ch., 126
But 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 – Sharpe & Dohme v Boots Pure Drug (1927) 44 RPC 367
- i.e.) where there is some degree of incorporation by reference. You have to show essentially, the last disclosure incorporates all the earlier necessary disclosures into it.
How it the novelty judged at the EPO?
EPC: Absolute Novelty
- Article 54:
1. An invention shall be considered to be new if it does not form part of the state of the art
2. The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, but use in any other way, before the date of filing of the European patent application
Basic Question
- What is required:
“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” – T328/87 Washing machine/THOMSON-BRANDT [1992] OJ EPO 701, Headnote I
When is the novelty judged in the EPC?
Novelty is judged on the date of filing (or the date of filing of the priority application)
- So where an application is filed on 1st May 2010, then novelty is judged at the beginning of that day (essentially 12.01 am)
Thus, something filed on the priority date (even if before the application in suit) does not anticipate – T 123/82 Polyurethane Plastics/BAYER [1979-85] EPOR B575 at [r 9]
When is the prior art documents construed at EPC?
Document (non-patent) construed at the date of publication – T 205/91 Continuous production of inorganic based material/FRAUNHOFER-GESELLSCHAFT (unpublished*) 16 June 1992 at [r 4.4];
Document (patent) construed at the date of filing of the earlier application – T 233/90 Magnetic recording medium/KONICA (unpublished*) 8 July 1992 at [r 3.3]
Date of publication is 18 months after the date of filing, therefore there could’ve been some development during this time
