Thursday June 11th 2009, by Piers Strickland
In a recent case in the High Court of England and Wales of Folding Attic Stairs Limited v The Loft Stairs Company Limited, the Judge Peter Prescott QC (sitting as a Deputy Judge) ruled that a patent for a folding ladder was valid and infringed.
One of the most interesting aspects of the case was to decide whether the claimants had inadvertently invalidated their own patent by disclosing details of it before filing for a patent.
Pursuant to s.1(1)a of the UK’s Patent Act 1977, a patent may only granted to an invention which is “new”, i.e. it must have novelty, in line with s.2 of the Patent Act 1977. Many people do not realise that the law in this area is very strict and even a very small disclosure may be enough to destroy the novelty of a patent.
Here the patentees had invited the Irish Minister for Trade and Tourism and a photographer of the Irish Times to their factory in order to publicise their new ladder product. The Minister was apparently shown a test unit of the product and the photographer took a few photographs. In this case, the Judge held that the disclosure to the Minister and/or the photographs did not sufficiently divulge the important features of the patented invention to count as an anticipating disclosure which would have invalidated the patent.
Although the claimants / patentees were successful in overcoming this invalidity challenge to the novelty of their patent, the decision, on this specific issue, appears to have been a relatively close run thing. Another Judge could have quite easily ruled the other way on the same facts.
Accordingly, one of the key lessons from this case is: be very careful before disclosing details of your invention to third parties, before you have got a patent application filed. If you desperately need to disclose your invention to third parties (such as those providing funding etc), then make sure that all concerned parties have signed up to sufficiently well drafted confidentiality / non-disclosure agreement.
Being responsible for invalidating your own (valuable) patent is one business mistake no-one wants to make.
