Lloyd LJ added to the guidance at first instance:
‘In each case sufficiency will thus be a question of fact and degree, depending on the nature of the invention and the other circumstances of the case.
But if a working definition is required then one cannot do better than that proposed by Buckley L.J. in giving the judgment of the Court of Appeal in Valensi v British Radio Corporation [1973] RPC 337. After referring to a number of earlier authorities, including Edison and Swan v Holland, he said:
‘We think that the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge, that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found.’
Then a little later:
‘Further, we are of the opinion that it is not only inventive steps that cannot be required of the addressee. While the addressee must be taken as a person with a will to make the instructions work, he is not to be called upon to make a prolonged study of matters which present some initial difficulty: and, in particular, if there are actual errors in the specification-if the apparatus really will not work without departing from what is described-then, unless both the existence of the error and the way to correct it can quickly be discovered by an addressee of the degree of skill and knowledge which we envisage, the description is insufficient.’
In that case there was a mistake in the specification. But Buckley LJ’s language is equally apt to cover an omission. Aldous J said that the Valensi test is as apposite under the 1977 Act as it was under the 1949 Act. I agree.’
Judges:
Lloyd, Stuart-Smith and Scott LJJ
Citations:
[1993] RPC 7
Statutes:
Jurisdiction:
England and Wales
Citing:
Appeal from – Mentor Corporation v Hollister Incorporated ChD 1991
The court considered the meaning of the phrase a ‘person skilled in the art’ in the context of a patent claim.
Aldous J said: ‘The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the . .
Cited – Valensi v British Radio Corporation CA 1973
The court considered the test for deciding what degree of knowledge, skill and perseverance the skilled man was assumed to have as a ground for revocation of a patent on the associated basis. There had been a mistake in the specification of the . .
Cited by:
Cited – Synthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 17 May 2022; Ref: scu.231508