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Prior use

3.66 The state of the art as set out by Section 14 includes matter that is made available to the public through prior use. Notably, the prior use must be in the public domain and does not include secret use (the rights of secret prior users may be protected under Section 71). The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197). However, if the viewer is bound by confidentiality then it will not be taken to disclose the invention (J Lucas (Batteries) Ltd v Gaedor Ltd [1978] RPC 297).

3.67 In considering prior use, the UK Patents Act 1977 has determined that “it now requires the prior use, to constitute anticipation, to have made available to the public an enabling disclosure of the invention” (Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83). Similarly in PLG Research v Ardon International Aldous J stated:

“Under the 1977 Act, patents may be granted for an invention covering a product that has been put on the market provided the product does not provide an enabling disclosure of the invention claimed. In most cases, prior sale of the product will make available information as to its contents and its method of manufacture, but it is possible to imagine circumstances where that will not happen. In such cases a subsequent patent may be obtained and the only safeguard given to the public is section 64 of the Act.”

3.68 The information made available to the public will depend on the nature of the invention and the manner in which it has been made available. Relevant factors include whether a member of the public had access to the invention in a manner that would allow them to handle, measure and test or whether they could merely look at it. Depending on the circumstances a person skilled in the art might be able to determine how an article was constructed and operated but in other cases they may not (Lux Traffic Controls Ltd v Pike Signals Ltd and Faronwise Ltd [1993] RPC 107). In Folding Attic Stairs Ltd v Loft Stairs Co. Ltd. [2009] FSR 24 the Court determined that viewing of a prototype (in a non-public location) by a small and defined group of visitors without any duty of confidentiality was not novelty-destroying since it was highly improbable that the visitors would or could have ascertained the features of the claimed invention.

3.69 In contrast, in Milliken Denmark AS v Walk Off Mats Ltd and Anr [1996] FSR 292 the Court held that the hiring of mats to customers who were free to inspect them amounted to anticipatory prior use even though the mats relied on perforations not visible to the naked eye for their function. In this case once an inspection had been carried out, knowledge of the perforations would be sufficient to enable the person skilled in the art to perform the invention. This would provide an anticipation of the article per se, and furthermore of the process of preparation if this could be deduced by the person skilled in the art.

3.70 In Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76, Lord Hoffmann held that making matter available to the public requires the communication of information since an invention is a piece of information. He went on to hold that the use of a product makes an invention part of the state of the art only so far as that use makes available the necessary information. Thus, acts which are done without knowledge of the relevant facts, would not count as anticipations. However, they would amount to infringement after the grant of the patent. In Merrell Dow the fact that volunteers in clinical trials had taken terfenadine and therefore had made the acid metabolite in their livers, was held not to constitute anticipation by use. In contrast, in Evans Medical Ltd’s Patent [1998] RPC 517, a prior art vaccine had been made available to the public in such a way that it would have been possible to analyse it to determine its contents.

3.71 In most cases prior use will be raised by an Examiner in relation to the invention being displayed at an exhibition or read before a conference. This may be material that comes to light as a result of conference proceedings or internet disclosures (for example photographs of a show display or newspaper articles). Alternatively there may be material filed by third parties. As a consequence, the Examiner is unlikely to be in a position to test the evidence in relation to prior use, and particularly whether the disclosure would be enabling to a person skilled in the art. In the case of prior use, the Singapore approach has followed the standard of proof required by the UK Intellectual Property Office as follows:

“In cases of alleged prior use, the required standard of proof is the balance of probabilities. Within this standard, the Patents County Court in Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd, [2004] RPC 5 held that a flexible degree of probability should be applied to evidence relating to prior use. The cogency of the evidence had to match the occasion and be proportionate to the subject matter. Because of the nature of the monopoly itself and question of public interest, no stricter standard should be applied. It was held that it was not necessary for an opponent to prove his case ‘up to the hilt’ as had been required by the EPO Technical Board of Appeal in Sekisui/shrinkable sheet, [1998] OJEPO 161 (T 472/92). The hearing officer in Colley’s Application, [1999] RPC 97 also distinguished from Sekisui by not requiring proof ‘up to the hilt’, but followed this decision and Demmeler Maschinenbau GmbH & Co KG (T 908/95) in holding that mere assertion of prior use was insufficient: place, time and detail were essential.”

3.72 Accordingly the Examiner must weigh up the details provided in a disclosure and the evidence in response. Mere assertions (particularly by third parties) are unlikely to be sufficient without details and supporting evidence of the nature of the alleged prior use.