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Sunday, 18 November 2007

Blowin' in the wind

Last Wednesday, 14 November, Mr Justice Kitchin handed down his England and Wales Patents Court judgment in the patent dispute of Wobben v Vestas-Celtic Wind Technology Ltd [2007] EWHC 2636 (Pat). In short, Wobben was the owner and managing director of Enercon, a major manufacturer of wind turbines and the market leader in Germany (also the unsuccessful Community trade mark applicant in a decision covered by this blog last week).

Right: the IPKat demonstrates his affection for wind power

Vestas was the UK branch of the largest maker of wind turbines in the world. Wobben sued for patent infringement; Vestas claimed the patents were invalid; Wobbens agreed that some of his patents' claims were invalid and sought to amend them.

In a case that, despite its length, had very little law in it but lots and lots of techie stuff, Kitchin J found in favour of Vestas. He concluded that there had been no infringement and various claims in Wobben's patents were invalid. One thing the judge said did catch the IPKat's eye. As para.204 he observed:

"It was confirmed by the House of Lords in Synthon v SmithKlineBeecham [2005] UKHL 59; [2006] RPC 10 that an earlier publication will only deprive a patented invention of novelty if it discloses the invention and that the skilled person would be able to perform the disclosed invention if he attempted to do so by using the disclosed matter and his common general knowledge. In my judgment the same approach must apply to obviousness. There can be no justification for finding that a "near miss" which does not enable the claimed invention nevertheless renders it obvious".
The IPKat wonders whether readers agree that this is indeed the case. He had always assumed that the functions of novelty and inventive step were quite different. While the notion that a disclosure must be enabling is crucial to novelty, he doesn't see why it should be a sine qua non for obviousness: if it were, then how does the 'obvious to try' criterion stand, where something that exists in the prior art does not in fact constitute an enabling disclosure but suggests clear lines of thinking that will lead to what the patent applicant believes to be an invention?

You can read the full decision here. Curiously, notes Merpel, BAILII has classified this as a Chancery Division case rather than as a Patents Court case. Let's hope it soon finds its way home.

Blowin' in the wind here and here


Anonymous said...

If he simply meant that an earlier publication would not deprive a patented invention of inventiveness if it disclosed material which would not enable him to perform the disclosed invention on the basis of the disclosed material coupled with his common general knowledge surely he was right.

Putting it another way, a patent will not be invalidated for lack of obviousness if the prior art relied upon merely discloses an idea the skilled address would not be able to put into effect using his common general knowledge. If it were otherwise then many valuable inventions - those which consist of working out how to achieve a known desirable end - would be deprived of protection.

twr57 said...

It depends what you claim. If there is a known desirable end that people have been trying to reach but failing, you find a way of reaching it, and you claim the new way, there's a strong argument that your invention is not obvious. The new way is typically obvious only with hindsight.

But if you claim the end itself (because you are the first to achieve it) that's different. Such a claim is illegitimate. The only question is Why? I would like to argue it was obvious, though this is far from easy. I would quote Lord Hoffmann in Biogen v. Medeva, and wave my hands a lot. The alternative is Article 84, but that's not available after grant. So if you can get your claim past the Examiner, and the obviousness argument doesn't stand up, you're home and dry. This happens far too often in biotech cases.

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