Patent Lawyer April 2015 Update: IPEC finds mailer patent invalid
Apr 29, 2015
On 1 April 2015, His Honour Judge Hacon handed down judgment in respect of a patent for a “mailer” (the “Mailer Patent”). A mailer was described by the court as “a form, letter or other type of business communication which is folded after completion, sealed by means of adhesive around its periphery and then sent through the post”.
However, despite the date of hand down, the judgment proved to be no April fools joke for the Claimant in this matter, Everseal Stationery Products Limited, who found their patent for a “mailer” (the “Mailer Patent”), to be held invalid (see full judgment here).
Why was the Mailer Patent Invalid?
For a patent to be valid in the UK, it must (amongst other things) be “new” and involve an “inventive step”. In this respect, a patent is “new/novel” if it is not “part of the state of the art” at the date the patent is filed and it involves an “inventive step” if the claims made by the patent were not “obvious” to the “person skilled in the art”.
In determining whether or not a patent is obvious, the court must identify:
- each cited piece of prior art;
- the notional “person skilled in the art“;
- the relevant common general knowledge of that person;
- the inventive concept of the claim in question; and
- what differences exist between the cited prior art and the inventive concept of the claim.
When those issues have been identified, the court must then consider whether the differences constitute steps which would have been obvious to the person skilled in the art. If not, they will require a degree of invention, which is not obvious.
In this case, the Defendants, Document Management Solutions Ltd and others, relied upon the prior use of a mailer known as the “V-fold Readymade Mailer”, manufactured by Moore Paragon Ltd, distributed in the UK by Laser Business Forms Ltd and sold to users by the stationery retailer, Viking Direct (the “Viking Mailer”) and two US Patents in relation to novelty and lack of inventive step of claims 1 and 7.
Since Viking Mailer had been made available to the public in the UK before the filing of the Mailer Patent, and because the court considered the Mailer Patent’s Claim 1 did not disclose anything new Claim 1 of the Mailer Patent was found to be invalid.
Turning to the two US Patents, the first being “Faltin”, which was a US patent published in 1969 and related to a flat sheet of material folded in a particular way such that it formed an envelope for use as a mailer. Despite the Defendants’ argument that Faltin claimed that the seal used was “permanent”, which was part of Claim 1 of the Patent, HHJ Hacon did not consider the Patent to lack novelty over Faltin.
Second to be considered was “Johnsen”, which was a US patent published in 1974, which claimed a mailer which can be rapidly printed and processed for mailing through a collating machine. However, again, HHJ Hacon did not consider this to mean that the Mailer Patent lacked novelty in this respect.
Despite his findings in relation to novelty of the patent over Faltin and Johnsen, HHJ Hacon did find that the patent was obvious and therefore also invalid as a result of them.
What is the effect of Invalidity?
If a patent is held to be invalid, it is removed from the register and therefore can no longer be used to prevent others from committing acts of infringement. As such, despite HHJ Hacon’s finding that the Defendants’ product would infringe Claim 1 of the Mailer Patent, because the Mailer Patent is invalid the Defendants can continue the alleged acts of infringement and avoid having to pay the Claimant an account of its profits, or damages, as a result of those acts.
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