To be patentable, an invention must meet a number of requirements. One such requirement is that the invention must be new, as at the date on which the application is filed (or at the priority date). Whether an invention is novel at that date will depend on whether or not the invention, as disclosed by the patent, formed part of the state of the art as at the date of the application, so as to enable an ordinary person, skilled in the relevant field (and using general common knowledge), to work that invention.
If it does, then the invention will not be patentable.
Patent application
Prior to submitting its application, the prospective patentee will most likely search for prior art, so as to satisfy itself of the novelty of the invention (and/or draft the claims so as to try and avoid that prior art), with the registry at which the application is made undertaking its own searches, during the examination phase.
The application, examination and subsequent prosecution process can prove costly. Added to the investment that has been made by the patentee in the inventive process itself, it is not unusual for the cost to obtain a granted patent to run into several thousand pounds.
Disclosure and State of the Art
Whilst it is generally well known that an invention should not be disclosed to the public before the patent application is filed, situations can arise in practice where the patentee has inadvertently disclosed the invention, without appreciating that this is what they have done. If the patent is granted, but it later transpires that an enabling public disclosure was made before the application was made, the patent will be vulnerable to an invalidity action, as the invention will be deemed to form part of the prior art, as at the date of the application.
Consequently, the invention will no longer be considered to be new.
Public and Enabling Disclosure
For a disclosure to be problematic, it has to be made to the public and it has to be enabling.
It is settled law that a disclosure is made to the public even if it is only made to one person; a disclosure is an enabling disclosure if it allows a persons skilled in the field in question to work the invention.
Whilst sale of the invention will be considered to be an enabling disclosure, there are other examples of activities which, whilst the law confirms them to be novelty destroying, are perhaps less obviously so.
For example, a written disclosure, if made available to the public, will mean that the invention forms part of the state of the art, even if that text is never read.
E. Mishan & Sons t/a Emson v Hozelock Limited & Ors
A recent case (E.Mishan & Sons t/a Emson v Hozelock Limited & Ors [2019] EWHC 991 (Pat)) considered whether a number of experiments by the inventor in his garden (to create a lightweight, expandable garden hose), constituted a public disclosure, given that his garden was visible from the street. The Court found that such experiments could be a public disclosure; whilst the inventor’s garden was private property, there was nothing to suggest to anyone watching that what he was doing was confidential.
However, on the evidence, the Court found not only that the individual experiments in isolation were insufficient to be enabling disclosures but further that, as none of the experiments (as they would have been perceived by any observer) were referable to the others, those experiments could not be considered collectively, when assessing whether there had been an enabling disclosure.
In addition, the Court accepted the evidence of the inventor that, had anyone walked past his property whilst he undertook his work, he would have stopped what he was doing and taken all of the materials that he was using inside.
Comment
The case is unusual because of where the inventor had chosen to conduct his experiments. We anticipate that, had he been aware of the potential pitfalls of undertaking those experiments in his garden, he would have chosen somewhere that was completely private, thereby taking this line of attack on the patent out of the equation.
However, what is perhaps more interesting is the way in which the Court dealt with established case law authorities on prior disclosures and how it differentiated between those cases and what had happened in E. Mishan.
As we say above, there are well established circumstances in which a disclosure will be determined to have been made and these circumstances include a disclosure in writing that can be accessed by the public, but which no one ever reads. The Courts have previously favoured a ‘bright line’ approach to the issue, so as to avoid subjectivity and questions of degree.
With this in mind, it is strange that in the inventor’s evidence that he would pack up his tools and materials in the event that he saw an observer, was considered by the Court to mean that any disclosure had not been made available to the public and did not, therefore, destroy novelty.
In approaching this issue in this way, the question on disclosure appears to be answered with reference to the inventor’s intention (there appears to have been no evidence that the inventor did move indoors or that there were any observers). In so doing, the Court explained that, because the inventor said that he would have packed up his things and moved inside, the public could not, in fact, have accessed the invention. As a result, the Court reasoned that the disclosure was not a public disclosure.
However, through this analysis, the Court has introduced an element of subjectivity into the assessment, which the Courts have previously been at pains to avoid.
Notwithstanding the Court’s finding on disclosure, the patent in question was in fact held to be invalid, for lack of inventive step. The Court did however decide that, if the patent had been valid, the Defendant’s product would have infringed that patent. Consequently, we may yet see an appeal of this decision, in which case the question of public disclosure and subjectivity may be considered once more.
How Can Nelsons Help?
Emma Ward is a Partner in our Dispute Resolution team, specialising in contentious intellectual property matters.
For more information, please contact Emma on 0800 024 1976 or via our online form, and she will be happy to assist.