Patently demonstrated?

Pally demonstration to Duke of York

There must be a stong temptation for a business hosting a visit from a VIP or a local MP to show off the business’s new thing.  Nothing beats a good demonstration of new technology.  However, if this new technology has not completed any patent application process, there is a danger.

In order to obtain a patent, an invention has to meet certain conditions, which appear deceptively simple :

  • the invention must be new;
  • it must involve an inventive step;
  • it must be capable of industrial application;
  • it must not be an invention that consists of :

–  a discovery, scientific theory or mathematical method;
–  a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
–  a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer [Note: this is where EU/UK patent law differs materially from, for example, US patent law]; or
–  the presentation of information; or

  • the commercial exploitation must not be contrary to public policy or morality.

(From section 1 of the Patents Act 1977, as amended.)

Two recent cases have addressed the question of novelty, which we will come onto shortly.

Traditionally, patent lawyers advise inventors to be secretive about possibly patentable inventions, with any demonstrations or disclosures limited as much as reasonably practicable.  Where demonstrations or disclosures have to be made, the advice is generally to make sure that there is a confidentiality or non-disclosure agreement in place.  The reason for this approach is that if any details of the invention make it into the public domain, there is a risk that the details may be deemed to be part of the “prior art”, essentially general knowledge to anyone skilled in the relevant area.  If something becomes part of the prior art, then it cannot be considered to be new.

The most well-known example of the novelty principle being applied, certainly in my home area of Portsmouth and Hayling Island, is the case Windsurfing International Inc v Tabur Marine (GB) Ltd. 1985 RPC 59.  This involved a dispute between the owners of the US windsurfing patent filed by the American inventors of windsurfers Drake and Hoyle in 1968 and granted in 1970, and the UK company, which was a licensee.  Extremely fortuitously for Tabur Marine’s patent lawyers, the found evidence in a local newspaper that a Hayling Island schoolboy, Peter Chilvers, had invented a board and sail combination, with the key element of a universal joint at the foot of the mast, in 1958. So this was prior art, which, if you can bear the pun, shot the American’s patent out of the water.  With the US patent then declared invalid, Tabur Marine could stop paying Windsurfing International royalties.  The original tests for novelty set out in Windsurfing International are still applied, albeit slightly amended by the later Court of Appeal case Pozzoli Spa v BDMO SA & Anor [2007] EWCA Civ 588.

So, why the picture of the Duke of York standing by a set of boxes on a pallet?  This pallet was no ordinary pallet, but a combination dolly and pallet (no, I didn’t know what a dolly was either – a wheeled platform).  It was the subject of a patent application when the Duke was shown round the new Sheffield factory of Loadhog Limited, who then went on to challenge the application made by Polymer Logistics BV on novelty as well as other grounds.  The hearing officer at the Intellectual Property Office decided, not unreasonably, that the demonstration to the Duke did not destroy its novelty:

But unless he had got down on his hand and knees, or turned the Pally prototype upside down to see how the mechanism operated, the most that he could have taken away from the demonstration is the idea of a single device that can function as a dolly and a pallet, and which can be converted between the two states by means of a foot pedal.  …. There was no suggestion that the Duke did get down on his hand and knees to inspect the prototype more closely, … (Paragraph 48)

The hearing officer was merely applying the High Court ruling in a similar case, Folding Attic Stairs Ltd v The Loft Stairs Company and another [2009] EWHC 1221.  As the case name implies, this was all about folding attic ladders.  A prototype ladder had been seen by a press photographer for the Irish Times and the visiting Irish Minister for Trade and Tourism.  It was not demonstrated to the visitors, but was caught in the background of published photographs of the visit.  Fortunately only the lower part of the prototype was shown in the published photographs, and the High Court found that there was no evidence that the photographer or Minister had inspected the prototype, nor that either of them were persons skilled in the art.  It was therefore ruled the prototype was not in the public domain or made accessible to the public to become part of the prior art.

So the lesson?  If you have to demonstrate a prototype to a visiting VIP, you should be okay. Just make sure that by some bad luck the VIP isn’t knowledgeable in the relevant area and that you have some control over any photographers accompanying the VIP.

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