A patent for a method of producing asbestos cement was challenged for obviousness.
Diplock LJ considered that a development should be treated as obvious if ‘the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial’. However the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success. He said: ‘It is enough that the person versed in the art would assess the likelihood of success as sufficient to warrant actual trial. . The Superintending Examiner and the Patents Appeal Tribunal were both of opinion that, filtration processes being common to many industries, these documents, although addressed primarily to the mining and paper industries respectively, were likely to be read by those concerned with the asbestos cement industry, and that such readers would have realised that here was a newly-introduced flocculating agent which it was well worth trying out in their own filtration process. I can see no grounds which would justify this court in reversing this concurrent finding by two expert tribunals.’ and
‘I have endeavoured to refrain from coining a definition of ‘obviousness’ which counsel may be tempted to cite in subsequent cases relating to different types of claims.’ and
‘Patent law can too easily be bedevilled by linguistics and the citation of a plethora of cases about inventions of different kinds. The correctness of a decision upon an issue of obviousness does not depend upon whether or not the decider has paraphrased the words of the Act in some particular verbal formula. I doubt whether there is any verbal formula which is appropriate to all classes of claims.’
Judges:
Diplock LJ
Citations:
[1967] RPC 479
Statutes:
Jurisdiction:
England and Wales
Cited by:
Cited – Angiotech Pharmaceuticals and Another v Conor Medsystems Inc CA 16-Jan-2007
The appellants challenged a finding that their patent for a vascular stent failed for obviousness.
Held: To overcome a judge’s finding in such a case some error of principle had to be shown. No such error was shown and the appeal failed. . .
Cited – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
Cited – Brugger v Medic-Aid Ltd (No 2) ChD 1996
B alleged infringement by M of its patented nebulizer. M replied saying that the claims failed for obviousness. Features of the nebulizer were admittedly old and well known, but the claimant asserted a new mechanism which reduced the size of the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 23 March 2022; Ref: scu.247934