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intellectual property (IP)

intellectual property (IP) | 30 Apr 2021
BY Hugo Biermann

SCA: we’ll have no truck with this patent

“Over a century ago Lord Herschell observed that: ‘The mere adaptation to a new purpose of a known material or appliance… so that no inventive faculty is required and no invention is displayed in the manner in which it is applied, is not the subject matter for a patent.’”

These are the opening words from Judge Ponnan of the South African Supreme Court of Appeal (“SCA”) in the recent case of Groundprobe v Reutech. They pretty much sum up what this case is all about.

The facts

As so often happens, a claim of patent infringement was met with an attack on the validity of the patent. The patent here related to a radar system that has application in open-cast mines and warns of possible dangerous movement that may lead to collapsing mine walls. This radar system has, however, been around for many years, having previously been mounted on a trailer that was pulled by a vehicle. The patent here covered the mounting of the radar system directly on the back of a light delivery vehicle or bakkie. The judge put it as follows:

“The issue turns on the question of whether it is inventive to mount a known radar system used to monitor slope system stability in open-cast mines on a motorised automobile vehicle. This, in circumstances where the same radar system was previously mounted on a trailer that was hitched to a motorised automobile vehicle.”

Inventive step: the law

Judge Ponnan cited the South African case of Roman Roller v Speedmark, where Judge Corbett said this:

“An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to the state of the art at the relevant time. Conversely, if the invention is obvious to such a person then the invention is deemed not to involve an inventive step and to be invalid on the ground of obviousness.”

As for obviousness, the judge referred to various authorities. He was particularly drawn to the “structured approach” to obviousness which, in the words of Sir Robin Jacob in the case of Nichia v Argos, comprises the following:

 “1) (a) Identify the notional person skilled in the art; (b) Identify the relevant common general knowledge of that person;

2) Identify the inventive concept of the claim or if that cannot readily be done, construe it;

3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;

4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”

Inventive step: application of the law

The judge made the point that slope-monitoring radar has been in use since the 1990s and the idea of having it connected to an alarm system was commercialised in the 2000s. The patent in this case took this no further:

“However as shall become apparent the patent does not disclose any advance in radar technology. The patent is therefore not addressed to a person having a particular expertise in radar. The person skilled in the art of this patent is, rather, a mechanical engineer with experience in mounting and stabilising radar systems.”

Of the experts who had given evidence only one was a mechanical engineer, the other two were experts in radar technology and their evidence was therefore disregarded. The judge said this: “It would be fair to say that the only conceivable candidate for inventive step lay in the idea of mounting a radar used for monitoring slopes on a motorised automobile vehicle.”  

But, said the judge, there’s nothing inventive in that: “Radars used in other applications, such as in the military, have been mounted on motorised automobile vehicles since at least World War II.”

The judge ended as follows: “There can thus be no doubt that the only conceivable candidate for the ‘inventive concept’ is the idea of mounting a radar used for monitoring slopes on a motorised automobile vehicle. I do not think that this can be said to constitute a step forward upon the state of the art and least of all a step that is inventive. Nothing therefore remains of the patent.”

So, the attack on the patent succeeded and the claim for infringement fell away.

This judgment reinforces the principle that the difference between an invention and the so-called “prior art” must constitute a non-obvious step forward. If not, a valid patent cannot be granted for the invention.

 

Reviewed by Rowan Forster, an Executive in ENSafrica’s IP department.

Hugo Biermann

IP | Patent Attorney | Senior Associate

hbiermann@ENSafrica.com

+27 81 482 3447