Case Comment
© 1997-2010 Donald M. Cameron,
Cameron MacKendrick LLP citation(s): [1976] R.P.C. 231 (Ch.D. per Whitford J.)
Case Comment
© 1997-2010 Donald M. Cameron,
Cameron MacKendrick LLP
XXX:
"What is the "invention" which has to be considered? The "manner of manufacture"? For this one has to look at Claim 1. What has to be considered is the process for the production of the tetracycline. This, in itself, if you have a tetracycline-producing strain, is an old and well-known process.
... It is said that Claim 1, on the narrow construction, is no more than a claim to any strain of a descendant from A-377 which will give nearly 100 per cent tetracycline production, and in this sense it is no more than a claim to something which was obviously desirable. A-377 was just as much, and possibly more, an obvious starting point for anybody seeking to isolate a 100 per cent tetracycline producer as any other strain."
At p. 234
The first task in any patent action is to decide exactly what monopoly the patentee has been granted. Today all patents end with claims. The function of the claims is to define the monopoly. The patent, if valid, enables the patentee to stop other people making anything covered by, or using any process covered by, his claims during the life of the patent. One of the important features of the claims is to make it clear to other people what they are not entitled to do during the life of the patent, and the Patent Act expressly provides that the claims must be clear and succinct and must be fairly based upon the matter disclosed in the specification. Before ever you get to the claims of the patent you should find a complete description of the invention, a description of what is going to be claimed. It should be a complete description which will enable anybody, after the patent has expired, to put the invention into practice. These monopolies are granted to encourage people to make inventions and to make the nature and working of them known, and unless a full and fair description is given the patent ought not to be valid. In the same way, when you get to the claims you ought to be able to know what you may do and what you may not do, and if the claims are incomprehensible or ambiguous, or do not really relate to the invention which has been disclosed in the body of the patent specification, the patent again should not stand valid. It is not to be expected that every patent will be comprehensible to everybody who picks it up, for patents are directed to persons who have skills in the particular fields with which each patent is concerned - the so-called men skilled in the art. The description of the invention has only to be a description sufficient to enable the notional skilled man to put it into practice. Only those familiar in the field in question can be expected to make anything of the claims.
An understanding of the claims, a determination as to their scope - what lawyers call the construction of the claims - is necessarily the first task to be undertaken, and it must be done dispassionately. The claims should be considered without reference to the effect the giving of any particular meaning may have on any issue of infringement, without reference to the result and effect so far as the attack on validity is concerned. The language used in each claim is in the end determinative, but each claim must be considered against the background of, in the context of, the specification as a whole. The specification itself has to be considered in the context of the general filed to which the invention is applicable. It is directed to skilled men in the particular field and they will read it against their knowledge of the prevailing conditions in the field at the time that the patent is granted, and against their knowledge of earlier work which may have been done in the same field.
...If a thing is obvious you can go straight to it. Invention in the patent sense has nothing to do with any flash of inspiration - or, at least, not necessarily. It may involve finding something off the track, and to my mind it may equally involve something which might be predicted could possibly be found down some generally defined track by a patient enough searcher. The question really is as to how much research a searcher may have to do if he is to find the desired process or the desired article. A patient searcher is as much entitled to the benefits of a monopoly as someone who hits upon an invention by some lucky chance or an inspiration. If the expectation of success is sufficiently predictable, and the effort involved is not going to be very great, then it may well be that no patentable invention can result, as was found to be the case in both Sharpe v. Dohme and Johns-Manville. If the expectation of ultimate success is doubtful and the effort involved is great then I think the person undertaking the work would be entitled to a monopoly; but only for that he has done, unless he is working in some entirely new field.
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