Patents and testing not enabling disclosure



Published 06 October 2020
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On 11 September 2020, Borgarting Court of Appeal rendered its judgment concerning the decision of the Norwegian Board of Appeal for Industrial Property Rights ("BoA") to cancel Salgard AS' ("Salgard") patent NO 333479 ("Device for fish farm cage"). The judgment, LB-2019-81454, contains interesting statements concerning both the Swingball doctrine and the threshold for when pre-patent application field trials enables disclosure of an invention.

The Swingball doctrine was established by the Supreme Court of Norway in Rt. 1975 p. 603 and manifested in Rt. 2008 p. 1555, and implies that the courts should show restraint when evaluating the discretionary assessments made by the Norwegian Industrial Property Office ("NIPO") and the BoA in cases concerning patents. Borgarting Court of Appeal stated that the Swingball doctrine was of lesser importance, as the case concerned pure legal, not technical, evaluations. In addition, the court stated that the court case was better illuminated than in the BoA. Thus, the court felt less compelled to restrain itself in its evaluations of the BoA's assessment of the validity of Salgard's patent.

The BoA had concluded that the field trial conducted by Salgard for a period of eight months at Salgard's fish farm in Fornes in 2011 was harmful with respect to the novelty of the patent. The field trial had been conducted prior to the priority date of the patent, cf. the Norwegian Patents Act section 2 first paragraph and second paragraph first sentence:

"Patents shall be granted only for inventions which are new in relation to what was known before the filing date of the patent application, and which also differ essentially therefrom.

Everything made available to the public, either in writing, in lectures, by exploitation or otherwise, shall be considered as known."

The parties had agreed that the invention is known if an average person skilled in the art ("the skilled person") has been able to observe the invention and thereby directly and unambiguously deduce all the technical features of patent claim 1 (the independent and broadest patent claim). Furthermore, the parties had agreed that skilled person is a person or a team of people with knowledge of oceanography and marine biology, and insight into technical constructions used in the aquaculture industry.

Borgarting Court of Appeal held that it was practically possible for the public to travel in the area towards the limit stipulated in the Aquaculture Regulations. However, the court found it completely unlikely, and not even theoretically possible, that a person or a team of people would observe the experiment over time. It would be practically possible to observe the problems with immersion or washing, but that a person or a team should be 20 meters from the limit of the Aquaculture Regulations for more than a few hours, let alone 24 hours, appeared hypothetical and unrealistic in the opinion of the court.

The court also noted that it would not be possible for the skilled person to observe anything of significance during the time the lice skirts were only in the fish cages, as they would then be under water.

Borgarting Court of Appeal unanimously came to the conclusion that a skilled person who was at a distance of 20 meters would not see whether that it was a skirt, a fluid-permeable net, or what mesh size the net had. Due to the distance between the skilled person and the invention, the court found that the skilled person would most likely not be able to deduce any of the features of patent claim 1.

When the mesh size of patent claim 1, between 100 and 1000 micrometers, could not be deduced from a skilled person's theoretical observation, the field trial did not imply a novelty damaging publication. The invention covered by Salgard's patent could not be directly and unambiguously derived from the field trial, and it did therefore not enable the skilled person to deduce the invention.

Based on the above, Borgarting Court of Appeal decided that the BoA's decision to revoke the patent was invalid. Thus, Salgard was able to save its patent.

Main lessons from the judgment:

  1. Field trials prior to the filing of a patent application could damage the patentability.
  2. Not all field trials are novelty destroying, the field trial must enable the skilled person to deduce the features of the patent claim covering the invention.
  3. When assessing whether a field trial is novelty destroying, the assessment should be based on a realistic approach with respect to what the skilled person in theory would be able to deduce from the information made available to the public during the field trial.