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8.Surely that’s the end of validity?
Surely that’s the end of validity?
Coverage
After you have read this chapter, you should be aware of:
2. The grounds that are likely to appear in FD4.
Section 72 ofthe Patents Act 1977, as amended, sets out the grounds for revocation of a patent. The first specific ground of revocation is that the invention is not a patentable invention, and thus indicates that revocation may be available if the invention does not meet the criteria of section 1(1), which are that the invention must be new and inventive, the invention must be capable of industrial application, and must not be specifically excluded subject-matter. You have considered novelty and inventive step above. It is not impossible to conceive of a question for FD4 where the patent related to something incapable of industrial application, or which was excluded subject-matter, and so these possibilities should not be overlooked.
The second specific ground of revocation is that the patent was granted to a person who was not entitled to be granted that patent. It is possible to conceive that a FD4 question could be based on a scenario where such a situation exists, but it does seem to very unlikely, as quite a large proportion of the letter from the client would have to be devoted to this topic, and there could only be a few marks available for dealing with the difficulty. However, this is a point that could be ‘hinted at’ in the letter from the client, giving you an opportunity to gain a mark by remembering to ask the client for more information, and explaining how that information might totally alter your conclusions and advice. Maybe the patent was granted to an ex-employee of the client, and there might be a suspicion that the invention was made while the patentee was still employed by the client.
The third specific ground of revocation is that the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. Here the examiner does have the opportunity of creating a specification that does not actually disclose the invention. It will be recalled that section 125 (when the obvious printing error has been taken into account and the words ‘for a patent’ in the first line have been notionally deleted) indicates that the invention is that specified in a claim. Now you may or may not find it
surprising that many of the specifications in FD4 do not have a statement of invention, and so may not describe the invention in the same words as used in the claim. Sometimes there is a statement of invention which is very slightly different from the main claim. It is very easy for the eye to slide over small points like this, but often in the real world a small point can make all the difference.
Often, on looking at specific words in the claim it is impossible to find the same words anywhere in the specification. A range specified in the claim may not appear as such in the specification. There may be one or two examples within the range, or even at the ends of the range, but no real disclosure of the range itself. There may be a reference in the claim to a range of materials, such as ‘metals’, while the specification may only disclose specific metals such as iron, lead and copper.
As the subject-matter of the FD4 patent is usually straightforward, the examiner often uses a very deficient description, and candidates often do not observe that things that should have been described have not been described because, once you have the general idea, the rest is obvious. The examiner plays on this by claiming features that have not been described at all. For example, the claim may recite the steps of replacing a blade on a knife, i.e. taking out the old blade and putting in a new one. The description may only show how the knife is taken apart and the old blade taken out. There is no description of putting in a new blade and re-building the knife. It is as plain as a pikestaff as to how this is done, but there is no description. So there may well not be an enabling description of sufficient detail for the skilled person to put the complete invention into effect, although there may be a counter argument that the missing information is so trivial that the skilled person would immediately fully understand the situation.
All of the oddities of this type that you may observe have probably been planted by the examiner to enable you to spot them and raise questions on the internal validity of the patent. A bit like an Easter egg-hunt. The clues have been hidden, but in such a way that they can be found relatively easily if you just look.
Look out for anything that the letter from the client says is ‘difficult’. For example, the client may say ‘it was difficult to assess the average molecular weight…’ and there may be no real teaching in the specification as to how this is to be done, even though this parameter appeared in the claims. There would be a mark for questioning the sufficiency of the specification on this point. Also look for anything that is “essential” in the description but not in the claims, or anything that looks like the skilled person would need to conduct experimentation to figure out what to use to implement the invention across the whole scope of protection that is claimed. There would be a few marks for questioning the sufficiency of the specification on any of these points.
Marks can be easily gained for observing these shortcomings in the specification, and then a few marks more may be available in the amendment section for at least beginning to improve the situation by incorporating into the specification statements of invention corresponding to the wording of the claims. Then the specification does at least in itself disclose the underlying concepts as defined in the claims, as well as giving the originally present specific examples.
Here, again, beginning to address the amendment section before you actually get to it may pay dividends, as you can provide the solution to the problem while the problem itself is fresh in your mind.
The remaining two specific grounds of revocation relate one way or another to amendments. Section 72(d) relates to the situation where the matter disclosed in the specification of the patent
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.
EXERCISE 6 – notes
Is the invention patentable? The subject-matter does not seem to be excluded, and it seems apparent that the invention is capable of industrial application.
We have no information on ownership, and so there is no point in discussing this.
Is the invention disclosed clearly and completely? In other words is there an 'enabling' disclosure? The language of the claims does not appear as such in the specification, and the description does not mention steel, teeth along one edge, teeth 'arranged' in groups of four or the 'clear spaces', but the description is to be read by one familiar with saw blades, and would the skilled person need to be told all of this to be able to put it into practice, especially with the drawings to hand? The situation would be better, or course, if the description was more detailed, as then there would be no question regarding 'sufficiency'. As with any FD4 the subject-matter is simple (and quite possibly already familiar to you), and so it is easy to assume that the skilled person will be able to perform the invention, but it always worthwhile rigorously considering exactly what the description does not tell you.
