A patent is an intellectual property right relating to an invention. It lasts for 20 years and gives the patent holder (usually the inventor) the exclusive right to use exploit their invention during this time. An invention must satisfy four conditions in order to be capable of being granted a patent. It must:
– be new
– involve an inventive step
– be capable of use in an industrial setting
– not fall within an exclusion
This article will examine the first requirement that an invention must be new.
Whether an invention is “new” is judged with reference to what is considered to be “state of the art” at the date the patent is filed. Accordingly, a patent application will fail if its subject matter forms part of a pre-existing application or where the workings of the invention have been published before, such as in journals. The Intellectual Property Office (“IPO”) will, upon receipt of the patent application, investigate whether the invention is new and third parties are also afforded this opportunity upon publication by the IPO.
Many patent infringement claims are based on the argument that the invention subject to the patent is not new and that the grant of the patent is therefore invalid. This argument is usually advanced on the basis that an “enabling disclosure” has been made, meaning the invention has been disclosed to the public and can not, therefore, be regarded as being new. The test to satisfy is whether a skilled worker could observe the invention and create a copy of it from the disclosure.
In Windsurfing International v Tabur Marine (1985), a patent for a sailboard was held to be invalid when video footage pre-dating the grant of the patent emerged, showing a young boy having built an early version of the board. The patent was held to be invalid, despite the defendant having altered the design slightly.
In Synthon BV v Smithklein Beecham Plc (2006), the claimant had referred to a chemical compound in an initial patent application which it did not proceed with. This was held to be an enabling disclosure and resulted in the defendant’s later patent being declared invalid.
In C Van der Lely NV v Banfords Ltd (1963), a photograph of an agricultural machine which featured in a newspaper was held to be an enabling disclosure because it showed how the machine worked. However, in the later case of Quantel Ltd v Spaceward Microsystems Ltd (1990), a television broadcast of a computer which created complex visual effects was not deemed to be an enabling disclosure because the way in which the computer operated was not made clear.