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Grounds of Invalidity
There are four main legal grounds for attacking the validity of a patent: lack of novelty (or anticipation); lack of inventive step (obviousness); lack of an enabling disclosure (insufficiency) and added subject-matter (added matter). All of these issues will usually have been considered prior to the grant of the patent by the relevant office that examined the patent application. For UK patents, the relevant office will have been either the European Patent Office (the EPO) or the UK Intellectual Property Office.The EPO now examines patent applications quite carefully, but its procedures do not allow for rigorous consideration of expert evidence, as usually happens in the English courts when the validity of a patent is challenged. In addition, the EPO has a test for examining inventive step that can sometimes lead to a different result from the assessment of inventive step according to the standard of the English courts. European Patents (UK) have therefore been granted by the EPO that have then been found invalid by the English courts.
Who is the addressee of the patent?
In formulating an attack on the validity of a patent, it is important to establish who the patent specification is addressed to.This person is called the hypothetical skilled addressee. Sometimes, the subject matter of a patent specification is complicated and requires the hypothetical skilled addressee to have an understanding of different technical areas or skills. These skills are not necessarily found in a single individual and in such cases the skilled addressee may comprise a team of persons, all with different basic skills.
The skilled person
The skilled person considering a simple mechanical invention is not the same as the skilled person (or the skilled team of persons) involved in considering a complicated invention in the field of biotechnology or microelectronics. In patent cases, the English courts use expert evidence to determine what was generally known to the hypothetical person skilled in the art at the priority date of the patent. Sometimes, it may be necessary to hear evidence from more than one expert. In pharmaceutical cases, for example, it may be necessary to instruct both an organic chemist and someone else suitably qualified in analytical techniques.
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