Wednesday, 10 June 2009

When disclosure is fatal to a patent

Today the judgment of Peter Prescott QC (sitting as a deputy judge) in Folding Attic Stairs Ltd v The Loft Stairs Company Ltd & Anor [2009] EWHC 1221 (Pat) is published. It explores many aspects of patent law and validity (so it will be another case to add to my table of patent cases analysed by whether the court found the patent valid and infringed, or not), but the most interesting point concerns whether the fact that people had access to the workshop where the invention was being worked (a set of loft stairs being there for visitors to see) without being under any express obligation of confidence meant that there had been a disclosure of the invention.

The deputy judge referred to that excellent case, Lux Traffic Controls Ltd v. Pike Signals Ltd [1993] RPC 107, in which the firm for which I then worked acted for the successful defendants. Portable road traffic signals operating in a new way had been set up on a public road, for a trial: the claimant (or "plaintiff" as we called them in those days) later applied for a patent. Aldous J (as he then was) held that the public trial meant that the invention had been disclosed, whether or not anyone had actually inspected the signals who could have understood what they were doing that had not been done before.

In the latest case, the claimant's factory in Ireland was visited by a government minister and a photographer from the Irish Times. The photographer took a picture of the minister with the inventive loft stairs in the background, but publication of the photo did not destroy novelty: nor did it matter that the photographer and the minister both had an opportunity to inspect the stairs. The law regards a disclosure in a public place as a disclosure whether or not anyone actually saw it (let alone understood it), but a disclosure in a place to which the public does not have access is a different matter:

there is no irrebuttable presumption of law that information that is capable of being perceived by persons who are on private premises is in fact perceived by them, if the circumstances are such as to make it unlikely that those persons were interested in the subject-matter. For that would be to invent a legal fiction without necessity."

Of course, it's still essential for inventors to keep their inventions confidential in the pre-patent stage, and the Lux case shows just how easy it is to lose novelty. Although the Loft Stairs case offers an escape route, it is a very small one which few inventors will find it possible to pass through, so the need for prudence (and NDAs) remains.

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