Vital signs; More on enabling disclosure and inventive step

The IPKat spotted another non-English Court of First Instance decision yesterday on Community trade marks (it's in German and French only): Rechtssache T‑111/06 Wesergold Getränkeindustrie GmbH & Co. KG v Harmonisierungsamt für den Binnenmarkt; Lidl Stiftung & Co. KG.. So far as the Kat can tell, Wesergold applied to register the sign depicted here as a Community trade mark for non-alcoholic drinks and fruit drinks/juices in Class 32. Lidl opposed, citing an earler German registration of the word mark VITAFIT for fruit juices, fruit drinks and nectars in the same class. Lidl alleged a likelihood of confusion, citing similarity of the marks and identity/similarity of the goods.

What happened next? The IPKat's not too sure. He thinks the Opposition Division and the Board of Appeal upheld the opposition and that the CFI has dismissed Wesergold's further appeal -- but his katty whiskers tell him that he has missed something significant along the way. As usual, can some kind person email him here and let him know.

Last Sunday this weblog published a note (here) on a recent patent case in which the learned judge (Mr Justice Kitchin) said, at para.204:
"... an earlier publication will only deprive a patented invention of novelty if it discloses the invention and ... 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".
Team blogger Jeremy took issue with this, commenting:
"While the notion that a disclosure must be enabling is crucial to novelty, I don'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?"
Now Trevor Cook (Bird & Bird) has come to the judge's rescue. Says Trevor:
"I think that you are being somewhat unfair on the Judge by omitting to quote para 205, and with which para 204 ought be read in conjunction, and where he goes on to repeat his earlier finding (at para 203) that the patent in which these claims for obvious but non-enabled desiderata appear, is insufficient. Insufficiency and obviousness are in a sense opposites, and so I can see some logic to his approach".
The IPKat, who is more concerned with statements of law that students will pick up and run around with than with whether the judge's findings were correct, wonders what his readers think.
Vital signs; More on enabling disclosure and inventive step Vital signs; More on enabling disclosure and inventive step Reviewed by Jeremy on Thursday, November 22, 2007 Rating: 5


  1. ""... an earlier publication will only deprive a patented invention of novelty if it discloses the invention and ... 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."

    Of interest to me is the later publication. That is, what happens when a later publication shows that the patent could not possibly have worked?

    As far as I can tell the patent is niether reviewed nor withdrawn (at least that's what the USPTO tell me).

    Perils of an absolute, rather than a relative, system of issuing title to property I suppose?

  2. In the real world (Europe, that is), the later publication would probably be useful to show that the patent specification was insufficient, or possibly lacking in industrial applicability, if it could be shown not to work in practice.

  3. What I should have also said is that insufficiency or a lack of industrial application is enough to invalidate a patent. The latter is the usual way of preventing perpetual motion machines from being granted (in the UK at least).

  4. OK, here's a related theoretical question to answer. I've never managed to work out myself either what the answer would be from a legal perpsective or should be from a moral perspective.

    Let's say someone invents a working time machine, files their patent application with a full and enabling disclosure of their way of making the time machine work.

    The prior art is HG Wells' book "The Time Machine" which describes the concept of a time machine, but with no enabling disclosure.

    Can the inventor have, as their claim 1, "A time machine."

    Possible problems and points for discussion with this claim:
    1. HG Wells' disclosure is novelty destroying (unlikely because it's not enabling)

    2. HG Wells' disclosure renders the invention of a time machine obvious (in the absence of features in the claims directed to the actual way in which the machine works)

    3. The claim is overbroad since the inventor has disclosed only one way of making a time machine and is claiming all time machines.

    What do people think the law would say (in particular Mr Justice Kitchin) and what SHOULD the law say?


  5. David, in practice I thought the UKIPO tried to reject perpetual motion machines on the basis of prior art. The reasoning being that saying "your machine won't work" to an inventor is typically less likely to make them give up and stop wasting IPO time than saying "your machine is known".

    For an example, see the decision and subsequent appeal to the High Court (yet to be judged) from Mr Tony Lawless' application


  6. hmm - presumably if they had genuinely invented a working time machine, they could go back to the appropriate point, bump off HG Wells, and thus remove points 1 and 2 from the equation anyway...

  7. Regarding the time machine question, I think the judgment would be that claiming "A time machine" would be not allowed, not because it is obvious or not novel (leaving aside any lack of a prior art enabling disclosure), but because it is insufficiently enabled across the whole breadth of the claim. Unless the specification came up with all possible ways of making a time machine, or just possibly a general principle applicable to all time machines, the claim would be too broad. This seems similar to the recent case of Generics v Lundbeck, where a patent claim to an enantiomer was invalid because the applicant had only come up with one way (admittedly the only known way at the time) of obtaining the isolated enantiomer.

    A good exam question, perhaps.

  8. And on the perpetual motion machine problem, lack of industrial applicability is the textbook way of dealing with such applications, but there could also be attacks on sufficiency or clarity. I think the patent office would be more uncomfortable rejecting an application on the grounds of lack of novelty or inventive step if there is even a vague possibility that an appeal overcoming this might succeed. Even though it might be a waste of the inventor's money to continue flogging his dead horse thinking that he might persuade someone that his theory could work, arguing novelty and inventive step for something that clearly doesn't work is like two bald men fighting over a comb. I think it is a more sensible approach going to the heart of the matter, and asking the inventor to prove that it works, given the prima facie case that it does not. As for not wanting inventors to waste money, some people are just unable to listen to sense (which the patent office is actually very good at, particularly with sole inventors). In my less charitable moments, I would say that such people deserve all they get (or perhaps deserve to be sectioned for their own safety).

  9. We don't need to get into the realms of fantasy, do we? How about simply reading what Lord Hoffmann, operating out of the House of Lords, wrote about Orville and Wilbur (and their claim "A heavier than air flying machine") in, what was it, Genentech or something. Says it all, doesn't he? Mind you, Lundbeck is too deep for many simple people on the continent, who haven't yet grasped Biogen-type insufficiency. A great communication challenge here.

  10. Hi David

    Thanks for answering the question; but it leads on to another one. Who raises the non-inventiveness issue?

    The company who have bought the patent are hardly going to raise the issue 'cos it will expose them to the charge of incompetence. They'll try to bury it as quietly as possible.

  11. Regarding the claim "A time machine", I'd add that, regardless of whether the machine was sufficiently described or not, such a claim would (should) never fly before the European Patent Office. It would be considered as claiming a result to be achieved and rejected following Art. 84 EPC (claims should define the subject-matter clearly and concisely) and the Guidelines for examination C-III, 4.7.

  12. What did Lord Hoffmann say? I'm familiar with the Wright patents, and their claims were actually quite detailed and referred to matters of flight control. Heavier-than-air flying machines were known before the Wright Bros. (see Cayley, Lilienthal, Maxim, etc.). Effective control means weren't...

  13. David, a claim to "a time machine" would be lacking in novelty over sun-dials, egg-timers, grandfather clocks etc.

  14. My assumption is that a time machine is different to a chronometer. This would, of course, be detailed by definitions in the description of the patent application to avoid any ambiguities.

  15. The words of Lord Hoffmann that I had in mind are in his speech in Biogen v. Medeva at the end of his section 12 "Support for the Claims". He says: "care is neded not to stifle further research and healthy competition by allowing the first person who has found a way of achieving an obviously desirable goal to monopolise every other way of doing so (see Merges and Nelson, Columbia Law Review)". Immediately above those words he cites Morse and the Wright Brothers as persons initiating a whole new technology and who ought not to be allowed to monopolise all ways to an obvious goal. So here we see the link between obviousness, Biogen-type insufficiency, Lundbeck and the EPO Guidelines.


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