Cases for Patent Law
Novelty S1(1)(a)
Requirements in S2
The tripartite Synthon BV v Smithkline Beecham plc [2006] **
test
The excluded materials from the State of the Art
The Meaning PLG Research Ltd v Ardon [1993] to form part of the state of the art, the information given must have
of Public been made available to at least one member of the public who was
S2 free in law and equity to use it. Recipient of the information must
not be bound by confidentiality.
Breach of UNION CARBIDE/Atmospheric Information obtained in breach of confidence cannot destroy
Confidence Vaporizer [1991] novelty
Info
Secrecy Re Gallay [1959] there was implied secrecy in the case of a joint venture
Confidentiality Re Dalrymple [1957] , the large number of members in a trade association meant that the
stamp had no fact that the word ‘confidential’ was stamped on the front of a
effect document circulated to all had no effect.
What Amounts to the Prior Art?
The patent system is Merrell Dow v Norton [1996]
basically about
information
Documentary prior art Re Asahi KKK’s Patent *1991+
will include earlier
patents
what prior written art Synthon v Smithkline Beecham [2006]
must contain in order ...the antecedent statement must be such that a person of ordinary knowledge of the subject
to invalidate a later would at once perceive, understand and be able practically to apply the discovery without the
patent necessity for making further experiments and gaining further information before the
information can be made useful. If something remains to be ascertained which is necessary for
the useful application of the discovery, that affords sufficient room for another valid patent
Documentary prior art Sales Leaflets Monsanto (Brignac’s) Application *1971+
may also include Books and Magazines as long as they could have Lang v Gisbourne (1862)
been read by a member of the public
Information in a library as long as the public has Re Tecalemit [1967]
access to it, hence a private research library where Re Bakelite [1967]
documents stored there may not be accessible by
the public and hence such documents would not
amount to prior art.
Prior use of a later claimed invention may be by the patentee Gore v Kimal [1988]
the use of the by an innocent third party Fomento v Mentmore [1956]
invention may or by a competitor Bristol-Myers Co (Johnson’s) Application *1975+
be
Ability to Lux Traffic Controls v Pike even though there was no evidence that anyone had examined the
replicate Signals [1993] ** inside of the device, had the skilled addressee been present at the trial,
it would have been possible for such a person to deduce from their
observations how the device worked
Pall v Bedford Hydraulics microporous filters were supplied for testing which were incapable of
[1990] analysis and so there was no enabling disclosure.
, Windsurfing International if a device is demonstrated in public, if this contains enough information
Inc v Tabur Marine [1985] to carry out the later invention, novelty will have been destroyed
Quantel v Spaceward novelty will not have been destroyed if those present were not able to
Microsystems [1990] observe how the device worked
Folding Attic Stairs Ltd v disclosure occurs not in a public place but on private premises where
The Loft Stairs Company members of the public (albeit unskilled people) were present and could
Ltd [2009] examine the device if they wished
Peter Prescott QC thought that it was the place of disclosure which
mattered, so that there is a significant difference between public and
private premises. He added that the visitors would not have appreciated
what they had seen but, even if they had, this disclosure would not have
anticipated claim 1 of the patent which was for the manufacturing
process
strict approach Claydon Yield-OMeter Ltd v In a claim for infringement of a patent for an improved seed drill (a type
to novelty in Mzuri Ltd [2021] of agricultural machine), the defendant counterclaimed for invalidity
patent law based on prior use. A prototype of the claimant’s seed drill had been
tested in a field on private land over a period of two days before a
patent had been applied for.In such cases in which prior use is at issue,
the information made available to the public is that which would
(hypothetically) have been noticed or inferred by a person skilled in the
art who had taken advantage of the available access to the invention.
a hypothetical skilled observer standing on the footpath would
have been able to see the prototype in action and would thereby
have been able to deduce the claimed invention. As a
consequence, the patent was anticipated through prior use.
Anticipation - the prior art matches exactly the subject matter (i.e. the claims) of the later patent so as to render it not
new
The three tests as to what amounts to General Tire v Firestone [1972]
enabling disclosure
1.Whether the prior art Lux Traffic Controls v Pike The question is whether such a person would be able to
points inevitably to the later Signals [1993] ‘work the invention’ from the information disclosed
patent is assessed through without undue burden
the eyes of the notional
skilled addressee
Inventive Step
Reqirements in S3
Identifying the inventive concept – Dyson Appliances v Hoover; Or
Identifying the essence of the invention – Unilever v Chefaro
What should Biogen Inc v Medeva plc [1997] court should expressly or by implication take into account the
courts take problem that the patentee was trying to solve
into account?
The Problem Wheatley (Davina) v Drillsafe Ltd
Solution test [2001]
Wording of Schütz (UK) Ltd v Werit (UK) Ltd the question of whether it is necessary to show that the
the claims [2013] defendant took the inventive concept of a patent in order to be
play a huge liable for patent infringement requires a nuanced approach.
role Much depends on the wording of the claims and on what the
defendant has actually done
Lilly Icos Ltd v Pfizer Ltd [2002] inventive step is concerned with whether it is qualitatively
Novelty S1(1)(a)
Requirements in S2
The tripartite Synthon BV v Smithkline Beecham plc [2006] **
test
The excluded materials from the State of the Art
The Meaning PLG Research Ltd v Ardon [1993] to form part of the state of the art, the information given must have
of Public been made available to at least one member of the public who was
S2 free in law and equity to use it. Recipient of the information must
not be bound by confidentiality.
Breach of UNION CARBIDE/Atmospheric Information obtained in breach of confidence cannot destroy
Confidence Vaporizer [1991] novelty
Info
Secrecy Re Gallay [1959] there was implied secrecy in the case of a joint venture
Confidentiality Re Dalrymple [1957] , the large number of members in a trade association meant that the
stamp had no fact that the word ‘confidential’ was stamped on the front of a
effect document circulated to all had no effect.
What Amounts to the Prior Art?
The patent system is Merrell Dow v Norton [1996]
basically about
information
Documentary prior art Re Asahi KKK’s Patent *1991+
will include earlier
patents
what prior written art Synthon v Smithkline Beecham [2006]
must contain in order ...the antecedent statement must be such that a person of ordinary knowledge of the subject
to invalidate a later would at once perceive, understand and be able practically to apply the discovery without the
patent necessity for making further experiments and gaining further information before the
information can be made useful. If something remains to be ascertained which is necessary for
the useful application of the discovery, that affords sufficient room for another valid patent
Documentary prior art Sales Leaflets Monsanto (Brignac’s) Application *1971+
may also include Books and Magazines as long as they could have Lang v Gisbourne (1862)
been read by a member of the public
Information in a library as long as the public has Re Tecalemit [1967]
access to it, hence a private research library where Re Bakelite [1967]
documents stored there may not be accessible by
the public and hence such documents would not
amount to prior art.
Prior use of a later claimed invention may be by the patentee Gore v Kimal [1988]
the use of the by an innocent third party Fomento v Mentmore [1956]
invention may or by a competitor Bristol-Myers Co (Johnson’s) Application *1975+
be
Ability to Lux Traffic Controls v Pike even though there was no evidence that anyone had examined the
replicate Signals [1993] ** inside of the device, had the skilled addressee been present at the trial,
it would have been possible for such a person to deduce from their
observations how the device worked
Pall v Bedford Hydraulics microporous filters were supplied for testing which were incapable of
[1990] analysis and so there was no enabling disclosure.
, Windsurfing International if a device is demonstrated in public, if this contains enough information
Inc v Tabur Marine [1985] to carry out the later invention, novelty will have been destroyed
Quantel v Spaceward novelty will not have been destroyed if those present were not able to
Microsystems [1990] observe how the device worked
Folding Attic Stairs Ltd v disclosure occurs not in a public place but on private premises where
The Loft Stairs Company members of the public (albeit unskilled people) were present and could
Ltd [2009] examine the device if they wished
Peter Prescott QC thought that it was the place of disclosure which
mattered, so that there is a significant difference between public and
private premises. He added that the visitors would not have appreciated
what they had seen but, even if they had, this disclosure would not have
anticipated claim 1 of the patent which was for the manufacturing
process
strict approach Claydon Yield-OMeter Ltd v In a claim for infringement of a patent for an improved seed drill (a type
to novelty in Mzuri Ltd [2021] of agricultural machine), the defendant counterclaimed for invalidity
patent law based on prior use. A prototype of the claimant’s seed drill had been
tested in a field on private land over a period of two days before a
patent had been applied for.In such cases in which prior use is at issue,
the information made available to the public is that which would
(hypothetically) have been noticed or inferred by a person skilled in the
art who had taken advantage of the available access to the invention.
a hypothetical skilled observer standing on the footpath would
have been able to see the prototype in action and would thereby
have been able to deduce the claimed invention. As a
consequence, the patent was anticipated through prior use.
Anticipation - the prior art matches exactly the subject matter (i.e. the claims) of the later patent so as to render it not
new
The three tests as to what amounts to General Tire v Firestone [1972]
enabling disclosure
1.Whether the prior art Lux Traffic Controls v Pike The question is whether such a person would be able to
points inevitably to the later Signals [1993] ‘work the invention’ from the information disclosed
patent is assessed through without undue burden
the eyes of the notional
skilled addressee
Inventive Step
Reqirements in S3
Identifying the inventive concept – Dyson Appliances v Hoover; Or
Identifying the essence of the invention – Unilever v Chefaro
What should Biogen Inc v Medeva plc [1997] court should expressly or by implication take into account the
courts take problem that the patentee was trying to solve
into account?
The Problem Wheatley (Davina) v Drillsafe Ltd
Solution test [2001]
Wording of Schütz (UK) Ltd v Werit (UK) Ltd the question of whether it is necessary to show that the
the claims [2013] defendant took the inventive concept of a patent in order to be
play a huge liable for patent infringement requires a nuanced approach.
role Much depends on the wording of the claims and on what the
defendant has actually done
Lilly Icos Ltd v Pfizer Ltd [2002] inventive step is concerned with whether it is qualitatively
