The House described the law governing the bring together of two elements to form a patentable invention: ‘a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of a working interrelation brought about by the collocation of the integers.’ The construction of a patent claim is a matter for the court, not solely for the expert witnesses: ‘The proceedings in the Trial Court provide an illustration of the licence which in these days in cases of this kind is enjoyed by expert witnesses and by Counsel examining them . . In my judgment the time has come to curtail that licence whatever be the difficulties involved in doing so . . The area of the territory in which in cases of this kind an expert witness may legitimately move is not doubtful. He is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to its meaning is capable of being carried into effect by a skilled worker. He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He is entitled to say whether in his opinion a particular operation in connection with the art could be carried out and generally to give any explanation required as to facts of a scientific kind. . . . He is not entitled to say nor is Counsel entitled to ask him what the specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or as a chemist. Nor is he entitled to say whether any given step or alteration is obvious, that being a question for the Court.’
Judges:
Lord Tomlin
Citations:
(1935) 52 RPC 171
Jurisdiction:
England and Wales
Cited by:
Cited – Sabaf Spa v MFI Furniture Centres Ltd and Managhetti Spa ChD 31-Jul-2001
The claimant owned a patent on certain features of a cooking hob, and complained that the defendants had imported infringing designs. The defendant challenged the patent for obviousness.
Held: Both of the inventive features relied upon to . .
Cited – SABAF Spa (A Company Incorporated Under the Laws of Italy) v MFI Furniture Centres Limited and others; Sabaf Spa (A Company Incorporated Under the Laws of Italy) v MFI Furniture Centres Limited and others HL 14-Oct-2004
The patent holder had complained of imports of infringing items by the respondent, who in turn challenged the patent for obviousness. The Court of Appeal had rejected the rule of colocation as inconsistent with the test in Windsurfing.
Held: . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 30 April 2022; Ref: scu.216438