Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a patent: ‘The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being ‘known or used’ and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.’
Jacob LJ elaborated on what was required to establish an inventive step for the purposes of registration of a patent: ‘It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage – the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise. ‘
Oliver LJ said: ‘What has to be determined is whether what is now claimed as invention would have been obvious, not whether it would have appeared commercially worthwhile to exploit it’.
Oliver LJ, Jacob J
[1985] RPC 59, [1985] FSR 59
Patents Act 1949 32(1)(e)
England and Wales
Cited by:
Cited – David J Instance Ltd and Another v Denny Brothers Printing Ltd CA 20-Jun-2001
In a case where a patent was being challenged for obviousness, the judge was not necessarily obliged to follow the structured approach recommended in the Windsurfing International case. Here the judge had gone straight to the issue at the heart of . .
Applied – McGhan Medical Uk Ltd v Nagor Ltd and Biosil Ltd PatC 28-Feb-2001
The claimants had a patent for breast (and other) implants, the surface of which was claimed to be an improvement. They claimed infringement, and the defendant challenged the validity of the patent as lacking novelty, obviousness, and that . .
Cited – Lilly Icos Llc v Pfizer Ltd (1) CA 23-Jan-2002
The claimant had begun proceedings to apply for the revocation of the defendant’s patent for Viagra, on the grounds of obviousness. The defendant appealed the revocation.
Held: The prior literature was clear. It would have been obvious to have . .
Cited – SABAF SpA v MFI Furniture Centres Ltd and Another CA 11-Jul-2002
The appellant challenged dismissal of its claim for patent infringement. The judge had held that the design was obvious, involving essentially only the collocation of two known features.
Held: Collocation was no more than a species of . .
Cited – Seb SAa v Societe De’Longhi Spa CA 4-Jul-2003
The claimant’s action for patent infringement had been dismissed on the basis that the patent was invalid for obviousness.
Held: There was material before the judge on which he could properly conclude as he did on the presence of common . .
Cited – Panduit Corporation v Band-It Company Limited CA 25-Apr-2002
The second step of Windsurfing requires the judge to adopt the mantle of the skilled person. This is particularly important where, as in this case, the attack upon the patent is based upon what was generally known in the art. . .
Cited – Rocky Mountain Traders Limited and Hewlett Packard Gmbh; Westcoast Limited and Fellowes Manufacturing (UK) Limited CA 20-Dec-2000
The claimant appealed an order finding its patents for mechanisms for labelling CDs invalid for obviousness.
Held: the judge had applied the correct tests for obviousness, and the view taken by the judge of the expert evidence was not open to . .
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: . .
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 . .
Updated – Pozzoli Spa v BDMO Sa and Another CA 22-Jun-2007
The patentee had invented a method for storing CDs. The patentee sought leave to appeal a finding that its patent was invalid, and if successful, to appeal a finding that the defendant’s apparatus was not infringing.
Held: The application for . .
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Cited – Improver Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 09 November 2021; Ref: scu.179734