English Patent Infringement Case Raises Cognitive Science Issues

English Patent Infringement Case Raises Cognitive Science Issues

Courts frequently rely on cognitive science to help decide the correct outcome in Intellectual Property cases - particularly in trade-mark disputes with respect to confusion. A recent case before the Patent Court of England and Wales, has raised interesting cognitive science issues with respect to novelty and public domain.  As a defense to patent infringement, the defendants claimed that the patent was invalid on account that the invention had been disclosed to the public prior to patent application via two unskilled individuals.

In 1995, an Irish company developed a new design to their traditional folding staircase.  The new design came about because of a recent ISO certification. By following the ISO process, the company had been able to identify and solve a specific problem with their previous folding staircase design.

On January 18, 1996, while still in the prototype phase for the new design, the owner of the company invited the Irish Times and Irish Minister for Trade to their factory for the purpose of promoting the company and ISO certification. During the tour, the Irish Minister for Trade and Tourism and photographer had the opportunity to view the prototype. The prototype was also used as a convenient backdrop for a picture of the owner of the company and the minister which was published in the Irish Times.  At the time, the Irish company had not recognized the novel feature in their new staircase design let alone filed for a patent for it. The application for a patent was not filed until Nov 5, 1996. 

In its decision, the court held outright that the invention had not been disclosed to the public despite the photograph of the prototype being published in the Irish Times. This was because the photograph did not divulge the novel feature claimed in the patent nor was it discussed in the accompanying Irish Times article.

The court was a little more hesitant in concluding that the invention had not been disclosed to the public via the Minister and photographer. Both were given free rein in the factory to view the operations, and were not required to sign a confidentiality agreement.  

There is a bright-line rule that recognizes that if a document is placed on the shelves of a public library then everything in the document is considered to be part of the state of the art even if it was utterly obscure and nobody bothered to consult it. The point is that the public has the legal right to consult the document including a person skilled in the art.

The court also stated that 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. They would not understand the significance of the invention and as such the patent is not invalid.

The court appears to have taken a common-sense approach in its decision. If neither the Minister nor photographer could describe the novel invention, then how could it be part of the public domain of knowledge? It is strange, however, that the court arrived at this decision without the testimony of the Minister or photographer. The court infers based on the information before them that the Minister and photographer were not interested in the actual prototype and that they did not perceive the necessary information for it to become the state of the art.

This decision also engages aspects of cognitive science, particularly in the areas of perception. Yet, based on the court's written decision it does not appear that any expert evidence on cognitive science was led. Certainly it is plausible that even if the photographer and Minister could not describe the specific novel invention, they may still have a subconscious impression which could, through directed questioning, be conveyed to persons skilled in the art.

It should be noted that based on the facts of this case, under Canadian law the court's reasoning is unnecessary. Section 28.2(1)(a) of the Canadian Patent Act provides a grace period of one year to file for inventors who disclose their inventions to others prior to filing a patent application.

28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed

(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;

Accordingly, even if the Minister and photographer had learned about the invention on January 1996, the company still filed for protection by November 1996, well within the year grace period in Canada.