Lord Dunedin construed the claim in question and proceeded to consider the Tesla Patent, the alleged anticipation of the patent claim: ‘Now that being my view of the Claim, I turn to Tesla, and what I have to ask myself is this – Would a man who was grappling with Rosenberg’s problem, without having seen Rosenberg’s Patent, and who had Tesla’s Specification in his hand, have said: ‘That gives me what I wish?’ I do not think he would. I do not think it would have occurred to him that Tesla had actually solved a problem which was not before him by one of his arrangements used in a particular way – for that must be done, the switches must be operated in a certain procession – in a machine which was intended to solve another problem altogether.’
Judges:
Lord Dunedin
Citations:
[1928] 45 RPC 1
Citing:
Approved – Flour Oxidizing Co Ltd v Carr and Co Ltd 1908
Application was made for a patent for using an apparatus previously disclosed as suitable for a different use.
Held: Parker J said: ‘But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove . .
Cited by:
Cited – General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd CA 1971
Degree of Novelty Required before patent grant
The court set out the test for novelty required to be established before a patent could properly be granted: ‘To determine whether a patentee’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 12 May 2022; Ref: scu.188262
