Archive for the ‘Patents’ Category

The danger of inadvertently disclosing your invention and thus potentially losing your patent rights

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.

EPO publishes guide to software patents

Wednesday June 10th 2009, by Piers Strickland

As reported by the IPKat blog, the EPO has published a useful guide setting out its approach to software patents.

The introduction states that:

“The European Patent Office (EPO) does not grant patents for computer programs (“software patents”) or computer-
implemented business methods that make no such technical contribution. In this respect the granting practice of the EPO
differs significantly from that of the United States Patent and Trademark Office (USPTO).

The EPO is bound by European patent law as laid down in the European Patent Convention (EPC), which has been adopted by the 35 member states of the European Patent Organisation, and as interpreted by the independent EPO boards of appeal, the judiciary of the Organisation.“

A full copy of the EPO report can be found here.

High Court refuses to rule patent revocation action is an abuse of process and also refuses to grant a stay pending opposition proceedings in the EPO

Friday June 5th 2009, by Piers Strickland

In the case of Tns Group Holdings Limited V Nielsen Media Research, Inc, the High Court of England and Wales held that, pursuant to the words “any person” in s.72(1) of the Patents Act 1977, the intention of the applicant in a revocation action was irrelevant.  Therefore, it was not an abuse of process to bring the revocation action even if there had been no sufficient commercial reason to do so.  This makes sense given that, as a matter of public policy, patent monopolies should be vulnerable to wide scale challenge.

The Claimant admitted intention was to use a finding of invalidty from an English Court in other European jurisdictions.  The Honourable Mr Justice Arnold, of the High Court, held that such a motive was legitimate, as consistency of decisions was desirable.  The Judge also refused to stay the action pending opposition proceedings in the European Patent Office (“EPO”), following the principles laid down in Glaxo v Genentech, because the EPO proceedings would take at least two years longer than a final decision in the UK courts.