JUDGE NOT BOUND BY STRUCTURED APPROACH

In determining whether a patent was invalid and should be revoked by reason of obviousness, a judge was entitled to go straight to that question, provided that he adopted the mantle of the skilled person and asked himself the correct question. He did not have to adopt the structured approach laid down in Windsurfing International Inc v Tabur Marine (GB) Ltd [1985] RPC 59).

The Court of Appeal so held in a reserved judgment in dismissing an appeal brought by the patent holders, David J Instance Ltd and Mr David J Instance against the decision of Mr Justice Laddie on April 14, 2000 that there had been no infringement by Denny Brothers Printing Ltd of European Patent GB2247662 since the claims were obvious and the patent therefore invalid.

Mr Christopher Floyd, QC and Mr Piers Acland for the patent holders: Mr Antony Watson, QC and Mr Thomas Hinchcliffe for Denny Brothers.

Lord Justice Aldous said that the patent was entitled "labels and manufacture thereof" and claimed August 31, 1990 as its priority date.

It related to a self-adhesive, multi-laminate label which contained a leaflet within it, usually in the form of a folder sheet or booklet. They were a recognised part of the label industry and were used to enable more information, usually of a technical, promotional or instructional nature, to be given to the user.

They were designed so that when they were adhered to a product, the leaflet would lay flat and shut, but the label could be opened by the purchaser of the product to reveal the leaflet.

As the patent made clear, a number of self-adhesive leaflet labels were known at the priority date of the patent and went on to point out that the labels could suffer from the disadvantage that they could be difficult for a user to open when the self-adhesive label was adhered to a product. The invention aimed to provide a convenient and elegant solution to the problem.

Uniquely, in his Lordship's experience, the patentees accepted that the solution of the problem which the invention was said to solve was not inventive.

Mr Floyd submitted that the judge had erred in principle due to a failure to adopt the structured approach to deciding obviousness in Windsurfing International.

In his Lordship's judgment, while the approach in Windsurfing was useful, there was nothing to say that it was essential.

The court had to decide whether an invention was obvious and a judge could not be faulted from going straight to that question, provided that he adopted the mantle of a skilled person and asked himself the correct question.

Lord Justice Rix and Mr Justice Lloyd agreed.

"The Times" 22nd June 2001