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8. Surely that’s the end of validity? extends beyond that in the application for the patent, as filed. Note that any information in the whole application as originally filed, including the claims, can be present in the specification of the granted patent without any problems arising, so material can be copied from the claims into the description. Section 72(e) relates to the situation where the protection conferred by the patent has been extended by an amendment that should not have been allowed. Such an amendment is usually considered to be a post-grant amendment. If the FD4 examiner is to set up a situation where either of the last two grounds is relevant, then copies of the documents before and after amendment will have to be available, or the precise nature of the amendment would have to be spelled out in some other way, making the papers of the question more voluminous, and so it would seem most unlikely that either of these two grounds will appear in FD4. So, after looking for novelty and inventive step, you should at least consider if there is any possibility of the invention being incapable of industrial application or being excluded subjectmatter, and then really look for any areas where the description may be thought to be insufficient to enable to skilled person to put the invention, as defined in any of the claims, into practice. If you find there to be any reason why there is internal invalidity, then you should explain the whole position quite clearly in your answer. This section does not lend itself to the threecolumn approach as used in Interpretation, infringement and novelty, and so you will have to remember to include your reasons for any conclusion that you reach. If you cannot find any grounds for internal invalidity, it is probably worth just saying that, to show that you have considered it. You might say that the description and drawings mention all of the features in the claim, and so the disclosure is enabling. Even if the examiners disagree with you, they will have to give you some credit for addressing the issue and for giving a reason. If you say nothing at all about sufficiency and internal validity the examiners have no option – they can give you no marks. One final thing to look out for is that the patent may be a recently granted European Patent, and so you may have to consider the grounds for opposition.
EXERCISE 6 Consider the bowsaw blade patent, and write notes on internal validity. Then turn the page.
Infringement and Validity • 2018
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