KSR and Standards of Inventive Step: A European View – Review of IP Law, 2008

Thomas Jefferson and inventive step – Milling inventions of Oliver Evans – Hotchkiss v Greenwood – Cuno Engineering v Automatic Devices – Graham v John Deere – Similarity to the Windsurfing test in the UK – Persuasive power of new result evidence – US and UK examples – UK decision in Sabaf v MFI Furniture – Conservative character of the KSR decision – Relationship between technical problem test (EPO) and new result – Evidence-based approach – Preserving balance and avoiding over-reaction.

Symbian – UK Court of Appeal – 2008

Court of Appeal decision in Symbian Limited v. Comptroller General of Patents [2008] EWCA Civ 1066 – Method of accessing data in a dynamic link library (DLL) device – Improved speed and reliability – Requirement for a novel effect outside the computer (disapproved as a test) – Meaning of “technical contribution” – Each case to be considered on its merits – Decisions to be followed: Computer-related invention/VICOM T 0208/84, Data processor network/IBM CORP T 0006/83, Computer-related invention/IBM CORP T 0115/85, and T 1543/06 Game machine/GAMEACCOUNT and UK decisions in Merril Lynch and Gale.

Patents and Scientific Integrity – CIPA, May 2008

Inaugural lecture delivered at Bournemouth Univeristy on 21 February 2008 – CIPA Journal May 2008. Permissible claim scope in empirical research fields – functional definitions – Generic claims to chemical compounds – Consequences when some compounds shown not to perform as promised – Duty of good faith under UK law – Relationship to inequitable conduct in US – Recent findings of inequitable conduct in the CAFC and the likely outcome under a similar fact pattern before the UK courts – Misrepresentation of experimental results and their significance.

The Anywayup Cup – CIPA Journal, October 2005

Inventive step – Technically simple invention – Small difference from prior art – Solution to long-standing problem – Commercial success – Checklist of matters which should be taken into account when assessing a case of lack of inventive step – Lessons for a private individual or small business seeking to develop a new invention.