Requirements for Patentability

Re Johns- Manville's Patent

(invalidation based on lack of Inventiveness) Per Lord Diplock: A relevant guide is the assessment of the likelihood of success in taking that step by a person versed in the art. Where the step taken by the inventor is not marked out as the obvious step to follow, the inventor will be deemed to have exercised his inventive faculty

Exceptions to the rule that a patent mist not have been part of the state of art 🎨

1) An invention will still be considered new if it has been displayed or exhibited in an officially recognized international exhibition- S. 1(3) 2) A confidential disclosure - Pall Corp v. Commercial Hydraulics (Belford) Ltd Note📝: In the case of disclosure, an invention will be deemed to have failed the newness test if it is disclosed to the public by any person at all, for it has already been anticipated

James Oitomen Agboronfo v. Grain Haulage and Transport Ltd (example of improvement patent case)

An Oitomen Harmless Boiler, an improvement patent, was successfully protected through a patent grant.

S. 1(2) (c) PDA

An invention is industrially applicable if it can be manufactured or used in any kind of industry, including agriculture. Thus, to be industrially applicable: 1) The steps taken set out in the description which accompanies the patent application must result in the production of the effect to outcome claimed by the patentee 2) The effect or result must be useful or industrially applicable

S. 1(2) PDA- meaning of new

An invention is new if it is not part of the state of art

Inventive Activity

Deals with the extent of the difference between what was previously known and what the inventor claimed to have invented S. 1(2) (b) - an invention results from an inventive activity if it follows 👣 not obviously from t he state of art 🎨.

Van der Lely v. Bamfords (hay-making machine wheels turned by contact with the ground)

Invention was held to be anticipated by a photograph in a journal which showed this feature

Test for inventive activity

It is an objective one. - Personal opinion or experience of inventor immaterial - That inventor thinks it to be ingenuous immaterial. - That it took him time and effort to make discovery immaterial.

Test for newness

It is universal - as can be deduced from S. 1(3)

Windsurfing International Inc. v. Tabur Marine

Oliver J. identified four steps for ascertaining inventiveness: - what's the inventive concept in the patent? - court takes on the garb of the normally skilled but unimaginative addresses in the art - What're the differences between the prior art and the subject matter of the patented application? - Do the differences constitute steps which would have been obvious to the skilled man?

Hills v. Evans (invalidation based on lack of Inventiveness)

Per Westbury L. C. : To invalidate a patent on this ground, the state of the art must be such that an ordinary skilled person in that filled would at once perceive and understand and be practically able to apply the discovery without making further experiments.

S. 1 PDA

Provides that for an invention to be patentable: 1) if it new, must have resulted from an inventive activity and be capable of industrial application; or 2) if it is an improvement of an already existing patent and also new, results from inventive activity and is capable of industrial application.

Improvement Patents

S. 1(1)(b) PDA - must satisfy the three requirements of 1) newness; 2) inventiveness; and 3) capability of industrial application - must not be a mere minor alteration or cosmetic adjustment

Samuel Parkes & Co. Ltd v. Coker Bros; Windsurfing v. Tabur Marine

The fact that an invention was long awaited and the device is superior and novel for what has been erstwhile available could be an evidence of inventiveness

S. 1(3) - Definition of state of art

The field of art or knowledge to which the invention relates

Windsurfing International Inc v. Tabur Marine

The newnees of a patented windsurfing board and other related forms of propulsion was successfully challenged The fact that a young boy 👦 had made use of something similar, though less sophisticated, was held to be anticipatory of the plaintiff's invention

Alsop's Patent (per Parker J.)

The reason for the dual test (in industrial application) is that "the real consideration which the patentee gives for the grant os the disclosure of a process which produces a result"

Stahlwerk Becker's Patent

With regards to a process, the invention may fail 👎 the newness test if a product derived from the process has already been marketed or published in a manner that someone can deduce from the publication the process and can thus be carried out by a person skilled in that field.

Otto v. Steel

With regards to to written publication, an anticipatory document may be a book, journal of an earlier patent, so long as it has been made available publicly