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Thursday, 1 June 2006


PCT gathers more adherents

WIPO's PCT Notification No.175 informs the IPKat that Malaysia is signing up to the Patent Cooperation Treaty, which will enter into force there on 16 August 2006. That's one day before El Salvador becomes PCT-operational, according to PCT Notification No.176.

Full text of PCT here; current list of adherents here

Viet Nam signs up for Madrid

The IPKat notes that the Communist government in Viet Nam is sufficiently sensitive to the needs of rampant capitalists and the consumer bourgeoisie that it has decided to sign up for the Madrid Protocol - one of the keys to smoother, more cost-effective globalisation - with effect from 11 July 2006.

Viet Nam IP resources here

Two for Uzbekistan

The Republic of Uzbekistan has acceded to the Locarno Agreement Establishing an International Classification for Industrial Designs, with effect from 19 July 2006 - and on the same day the Patent Law Treaty enters into force. These steps may not bring immediately noticeable results on the streets of Tashkent, but they are welcome anyway: building an IP infrastracture's a long-term project.

Contracting parties to Patent Law Treaty here (14, including Uzbekistan); contracting parties to Locarno Agreement here (47, including Uzbekistan)

A word on collocations

The IPKat's friend Luke Ueda-Sarson writes: "I have been waiting the last couple of months to see if anybody would comment on the decision in the ex parte O/083/06 hearing of application GB0205795.8 of Mr P Thorpe. But, since nobody seems to have made any comments either here or anyhwhere else, according to Google, I am now wondering if it has merely slipped beneath the radar.

The hearing officer to my mind made a serious error that, even if overturned on appeal, could affect large numbers of applications in the meantime if it represents the office's position generally. The point turns on the "law of collocation" expounded upon recently by Lord Hoffmann in Sabaf. Sabaf was an issue of obviousness. The hearing officer expanded the approach into the realm of novelty with, at least to my eyes, startling results. He said:

33 Following the reasoning in Sabaf, I must conclude that the application relates to two separate inventions, namely invention 1 comprising feature A and invention 2 comprising feature B. I must consider each of these in turn applying to each invention the individual tests for patentability. Although the examiner has argued on the basis of lack of inventive step, it is perhaps more appropriate to start any consideration with the question of novelty. If an invention is shown to be lacking in this respect then it is not necessary to consider the question of inventive step.

34 I would perhaps comment in passing that I was surprised that Lord Hoffmann did not address the issue of the novelty of the two inventions in the Sabaf patent since neither of the features appeared to be new.

[Says Luke: I would answer this by saying the reason he did not so address the issue is because it is wrong to do so: see more anon]

35 [considering whether any of the features at issue are novel]. Therefore both inventions fail the test of novelty.

36 I am conscious that in relying on a lack of novelty in cases such as this I am possibly departing from the approach previously taken. But this approach is the logical conclusion of the SABAF judgment which is a judgment I am bound to follow.

[Luke adds: The logic escapes me. Never before has anybody demaded that whenever an invention is made, at least one of the components of the invention must itself be new. This means no matter how brilliant a combination is, no matter how inventive, if there is no synergy involved, it can't be patented. This is precisely why Sabaf did not extend to novelty. One must demonstrate not merely that the components are not new, but they are obvious to use as well. See Sabaf at 27: "... he was therefore dealing with two alleged inventions, each of which had to pass the test laid down in section 3. He identified the *inventive step* in each". Section 3 of course is purely about obviousness, not novelty:

3.- An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only ofsection 2(2) above (and disregarding section 2(3) above).

It does not say "[a]n invention shall be taken to involve an inventive step if it is not novel". So a combination can still be non-obviousness if at least on the the components involves an inventive step. This may or may not have been the case here, but the hearing oficer explitly made no finding on the issue.

The hearing officer then attempts to show his novel approach (in both senses of the word) would in any case make no difference, since the EPO would decide the same]

40 ... [EPO guidelines] However, where the claim is merely an "aggregation or juxtaposition of features" and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step.

41 Therefore the EPO would refuse the application as an aggregation that does not involve an inventive step.

[Says Luke: Unfortunately, the hearing officer made the same mistake here. The EPO guideliness clearly say aggregation will be obvious when the components are obvious. The hearing officer found the components were not novel, as opposed to saying that they were obvious, see point 35. So the EPO would make no finding at all here]
The IPKat is fascinated by exercises in the deconstruction of case law. When he read Lord Hoffmann's speech in Sabaf he assumed that it was inventive step that his Lordship was concerned with; it never occurred to him that the collocation issue had any bearing on novelty too.


David said...

I see no conflict between the hearing officer's decision and the House of Lords in Sabaf, and indeed with the old case of Williams v Nye (which the hearing officer referred to - see the reference to mincing machine + sausage machine). If the claimed invention consists of two separate elements put together, either: i) one or both of the elements have to themselves be novel and inventive; or ii) the combination of the two elements creates a 'synergistic effect', normally described in terms of an inventive step. The two separate elements might not themselves be novel, but they may be each disclosed in entirely separate fields, and the combination itself can therefore be the invention. In the case of Mr Dowling, both elements were in the field of furniture, and in particular furniture that converted between a seat and a bed. Each element was previously disclosed, so could not be novel or inventive, and there was no invention to be had from the combination, since the non-inventive skilled person in the art would be able to combine them.

Anonymous said...

The venerable "sausage machine" case still stands even if three known items, available off the shelf, are placed together and each fulfils its basic function. A wind-up constant torque motor plus an elecltrical generator plus a radio module did not result in a granted patent; see GB 2262324. [The wind-up motors had been widely used in amateur cine cameras until electric motors replaced them.]

Anonymous said...

You patent bods always dive into the detail. What intrigues me (especially from a TM perspective) is the question: when can Judges be said to have laid down a 'legal principle' or made, as in this case,a 'law of collocation' ?

Being a simple person, I thought Parliament made laws, or in the case of IP these days, the European Institutions.

What Judges ought to be required to do is to state that they are enunciating a legal principle or just doing justice in a given case. Now that would make things easier !

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