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Friday, 18 May 2007

UK-IPO Opinion: Photomosaics "not novel"

The IPKat doesn't usually comment on individual UK-IPO Opinions under section 74A, but this one caught his eye and he thought some of his readers might be interested.

In Opinion 01/07, a request was made regarding the validity of EP(UK) patent 0852363, in particular whether certain claims in the patent were novel and inventive in the light of various submitted documents. The requester also sought an opinion as to whether the invention was patentable under section 1(2).

The request was made after Patent Office proceedings for revocation were initiated by the requester. In an interim decision (O/345/06), the Hearing Officer suggested that an opinion might assist in assessing the strength of the claimant's case, given that the claimant was unwilling to submit any security for costs. Revocation proceedings were stayed pending issuance of the opinion.

The patent, having a priority date from a US filing in January 1997, related to computerised methods of generating 'photomosaic' images, such images being made up of many smaller images selected for their match to portions of a target image. The invention lay in how to create a photomosaic by dividing up a target image into tile regions, each tile region being divided into sub-regions. Images were selected for each tile region based on a match in terms of visual similarity to the sub-regions. The end result was a closer visual match in the mosaic to the target image, because sub-regions of the individual tiles matched the corresponding areas of the target image more closely.

Observations were filed on behalf of the patentee, maintaining their view that the invention was new, inventive and not excluded from patentability. The patentee also submitted witness statements and supporting evidence relating to the public availability of a thesis written by the inventor Robert Silvers (photo above right) before the priority date of the patent.

The examiner first considered that, since the comptroller was empowered under section 74A(1)(b) to issue opinions only on the basis of sections 1(1)(a) and (b), she could therefore give no opinion on patentability under section 1(2).

The examiner considered the issue of novelty with respect to various prior art images apparently created by a mosaicing process. The requester alleged that a computerised process was known before the priority date in which a photomosaic image was made through selection of source images based on visual similarity. Supporting evidence was provided in the form of published photomosaic images. The examiner found no evidence in the images to suggest the actual process used to create them, and as such the images did not provide an enabling disclosure of the patented method.

A document describing the creation of a mosaic image from a set of dominos was considered. In this, a target image was divided into cells, and the cells compared with domino halves, which were then positioned in pairs in the target image. The examiner determined that this did not disclose all the features of the claimed invention, since it did not disclose a computerised method, no images were involved (only real dominos) and no measurements of visual similarity based on calculated differences were made.

Mr Silvers’ thesis was then considered. It was agreed that the thesis provided a full enabling disclosure of the patent, particularly given that significant sections of the patent appeared to be derived from the thesis.


Left: 'Christ' rendered with images of scrolls (from photomosaics.com).


The only question was therefore whether the thesis constituted prior art under section 2(2). The requester provided a witness statement from Dr Ken Knowlton, who stated that he had received a copy of Mr Silvers’ thesis in the course of his role as reader of the thesis prior to its submission in June 1996. Dr Knowlton also stated that he had not been under any confidentiality agreement during this period, which pre-dated the priority date of the patent.

A further statement was provided from Michael Hawley, Mr Silvers’ thesis supervisor, who also asserted that there was no confidentiality agreement in place, and that it would unusual for there to be one at MIT where the work was carried out.

The patentee disputed that the evidence showed the thesis as having been published in June 1996, and argued for the later date of December 1997 on the basis of a date stamp from the MIT archives. A statement from Mr Silvers was also provided, stating his belief that the communications with Dr Knowlton and Mr Hawley was on the basis of “a mutual expectation of trust and confidentiality”. The patentee also referred to Coco v. A.N. Clark (Engineers) Limited [1968] FSR 415, claiming that Dr Knowlton would have been aware that communications made and received in the role of thesis adviser were expected to be treated with confidentiality.

The examiner determined that, given the date stamp, the evidence did not show that the thesis was publicly available before the priority date. However, the evidence also did not show that the prior disclosures to Dr Knowlton and Mr Hawley were made with a reasonable expectation of confidence. The witness statements provided no more than assertions from each side, with no factual evidence provided in support. There was also no evidence provided that showed the thesis was put on a ‘patent hold’ before the submission date, which suggested that there was no intention to file a patent at that time.

The examiner consequently determined that the burden of proof lay on the patent proprietor to prove the existence of an obligation to maintain secrecy, which in her view had not been shown by the evidence provided. As such, the thesis was seen to constitute a public disclosure before the priority date and therefore rendered all the patent claims invalid through lack of novelty.

In case she was wrong, the examiner nevertheless proceeded to consider whether the claims, which had already been shown to be novel over each of the other cited documents, were inventive. Using the document disclosing domino mosaic pictures as a starting point, and following the established Windsurfing guidelines, the examiner found all the claims to be novel and inventive over the documents submitted by the requester.


The IPKat is very impressed by the lengths to which the examiner went (over 26 pages) to come to her opinion, given that the opinion cost the requester only £200. Unless the patentee can pull something out of the hat (and provided the claimant keeps his nerve and can stump up the required security) it looks like the patent stands to be revoked on the basis of a non-confidential prior disclosure by the patentee.

This case is, in the IPKat's view, a good example of why US inventors who might want to obtain patent protection outside their country need to take into account the fact that the US 1 year grace period is not applicable everywhere.

3 comments:

Luke Ueda-Sarson said...

I'm gob-smacked by the conclusion external examiners would be under no duty of confidentiality in the absence of evidence... certainly if I was told this during my doctorate, I'd have been astonished; and now I know a little something of the law, I am even more surprised; surely the conclusion is back to front?

But thanks to internet searching, a single minute of searching can easily find such things as the guidelines for PhD external examiners at St Andrews, which clearly state the examiner's report will be confidential until released; and I would be surprised if other universities are any different; IMO the appropriate conclusion would therefore be the application is likely to be upheld, as evidence for confidentiality is likely to be easy to obtain - possibly be simply writing to the university in question.

David said...

That may well be the case for other universities. In this case, however, no such guidelines were forthcoming. If they did exist, the patentee should have been able to present them, and that should have been the end of the matter. As it was, the examiner found on the basis of the evidence presented that the burden of proof lay on the patentee to show that any disclosures of the invention were confidential. He did not show this. There was also the issue of the thesis being submitted before the priority date of the patent. This would have to be shown to be limited by a "patent hold". This was also not shown.

Anonymous said...

I have to say that in my experience examiners of PhD theses have not been bound to confidentiality. If you wish them to be restricted there is an option on the form for this, but it is not an automatic right. I would guess that under these circumstances, if you don't request confidentiality you are deemed to have agreed to it not being confidential.

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