The UK boasts one of the longest-established patent systems in the world, though the origins of patents for inventions are obscure and no single country can claim to have developed the first system, so Venice also has a claim to this distinction – and although the English crown was granting patents earlier, Venice had the first statute establishing something elaborate enough to be termed a ‘system’. In England specific grants of privileges by the Crown to manufacturers and traders can be traced back to the fifteenth century.
The expression ‘patent’ derives from the means of granting such privileges, which were evidenced by Letters Patent – open letters – with the King’s Great Seal attached in such a way that the seal did not have to be broken to read the contents. In 1449, Henry VI granted such a patent – the first known English patent for invention – to John of Utynam, a Flemish glassmaker, for a method, unknown in England, of making stained glass. (The glass was needed for the windows of Eton College.)
The grant of patents to traders and manufacturers became common practice in Tudor times: Elizabeth I granted some 50 between 1561 and 1590. These covered such products as soap, saltpetre, alum, leather, salt, glass, knives, sailcloth, sulphur, starch, iron and paper, but Sir John Harrington’s request for a patent for a new water closet was turned down in 1596, on grounds of propriety.
At this time, patents were often granted for inventions or trades that were not new. Elizabeth, and her successor James I, granted rights to favourites or to generate revenue. The Court of Queen’s Bench held one patent granted by Elizabeth, for making knives with bone shafts, to be unsustainable because the products were already being made in the Realm.1 In another case a monopoly on making playing cards was ruled unlawful.2 On the other hand, the courts did recognise the benefit that patents might ensure that new technology became available.3
Continuing abuse obliged James I to respond to judicial and popular criticism by revoking all previous patents and declaring that ‘monopolies are things contrary to our laws’. However, an exception for ‘projects of new invention so they be not contrary to the law, nor mischievous to the State’ derogated from this basic prohibition. In 1624, this public interest doctrine was incorporated into the Statute of Monopolies, section 6 of which rendered illegal all monopolies except those ‘for the term of 14 years or under hereafter to be made of the sole working or making of any manner of new manufactures within this Realm to the true and first inventor’. The 14-year term corresponded to two standard periods of apprenticeship.
The Statute of Monopolies established the principle that monopolies could sometimes be justified, and that there should be exceptions from the basic rule which prohibited them. Patents are therefore an exception to that basic rule, and the same can be said of other intellectual property rights. Letters Patent remained in use for other purposes, unaffected by the Statute of Monopolies: for example, following the Restoration in 1660, two London theatres were given permission to put on ‘spoken drama’, and because the licence was contained in Letters Patent they were known as Patent Theatres.
Over the next two centuries there were considerable developments in the patents field, but at the hands of the courts rather than as a result of government intervention. A written specification became a prerequisite during the reign of Queen Anne, one of the first patents to comply with this requirement being James Puckle’s 1718 patent for a machine gun. In 1785, Richard Arkwright’s spinning machine patent was voided for want of an adequate specification.
The scope of the patent system grew to embrace improvements to known machines and ideas or principles provided they ‘were clothed in practical application’ – or, as we might say now, capable of industrial application. James Watt’s 1796 steam engine patent was the first beneficiary of this extension of patentability to improvements.
The patent system survived the industrial revolution unscathed, but by the middle of the nineteenth century it had become extremely inefficient. In 1851, the Great Exhibition highlighted many of the deficiencies of the patent system, which required an applicant for a patent to petition seven different offices, a process lampooned in Charles Dickens’s A Poor Man’s Tale Of A Patent (although to drive home his point, the author took full advantage of his artistic licence and had his hero visit 34 offices)4.
We take the patent system almost for granted now, not that it is without critics: but even at the height of the Industrial Revolution there were those who preferred free trade, to whom the patent system was anathema. The Royal Society for the Encouragement of Arts, Commerce and Manufacture (known for short as the Royal Society of Arts) was founded in 1754 and one of its main activities was the promotion of competitions in which a technical problem was published and a prize offered for an invention which solved it – a perfect illustration of the problem-solution approach which we find in patent law.
The patent system was overhauled in 1852 by the Patent Law Amendment Act, which simplified procedures, reduced fees and introduced a single UK patent to replace the national patents that had been offered until then in the constituent parts of the Kingdom. In 1883, further reforms brought into existence the Comptroller-General and a staff of examiners, though they were charged only with checking the adequacy of the description of inventions submitted to them, not their novelty.
1902 saw the introduction of a limited investigation into the novelty of the invention before a patent would be granted. The search was restricted to specifications published in the 50 years preceding the date of the application. Nevertheless, the amount of additional work involved was substantial and 190 new examiners were recruited to deal with it in addition to the 70 already employed.
Searching became so much more complicated as a result of these changes that patent specifications were abridged and classified by subject. By 1905 there were 1,022 volumes arranged in 146 classes, and a couple of years later the abridgement volumes were completed back to the first patent to be given a number, granted in 1617 to Rathburn & Burges for ‘Engraving and Printing Maps, Plans &c’.
No radical changes were made in the patent system between then and 1977, when the present Patents Act replaced the 1949 one. Beside the 1977 Act, the 1949 Act looks parochial: it continued to provide for ‘patents of importation’, granting a monopoly to the first person to bring an invention to the UK, rather than its inventor.
1The case is mentioned on the Patent Office website, but without a citation and the author has not yet been able to find one.
2Darcy v Allein (1602) 11 Co Rep 84. See https://en.wikipedia.org/wiki/Darcy_v_Allein.
3Cloth Workers of Ipswich (1615) Godbolt 252.
4Dickens’s work can also be read in an edition edited by Jeremy Phillips: Charles Dickens and the Poor Man’s Tale of a Patent, Oxford: ESC, 1984.
In the internationalist 1977 Act, the law was radically amended to conform to the European Patent (or Munich) Convention of 1975 as well as the Convention on the European Patent for the European Community (the Community Patent Convention, or CPC, which for reasons described below has never come into operation) and certain provisions of the Patent Co-operation Treaty, which provides for international applications. The 1977 Act was specifically designed to achieve harmonisation with those conventions, and section 130(7) states:
Whereas by a resolution made on the signature of the Community Patent Convention the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, . . . 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply.
The English courts therefore have to have regard to decisions on patentability of the European Patent Office’s Boards of Appeal: see Merril Dow v Norton1, per Lord Hoffmann, and Bristol Myers Squibb v Baker Norton Pharmaceutical Products Ltd2, per Jacob J. The approach taken by other courts (principally those in Germany) to the interpretation of patent claims is also important for the application of the Patents Act 1977: see Kirin Amgen3 at paras 72 to 75, and Conor Medisystems v Angiotech Pharmaceuticals Inc.4 In Grimme Landmaschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery)5 the Court of Appeal discussed the need to follow the German courts on matters relating to the interpretation of the EU regulation and section 60(2).
When an Act of Parliament gives effect to an international convention, problems can arise. Either the Parliamentary draftsman copies out the wording of the convention or they try to make it clearer and ‘judge-proof’. Adrian Skemp QC, who drafted the 1977 Act in an era before the issue was grappled with in the context of EU directives, was constrained by his brief but subject to pressure from practitioners and judges, attracted a great deal of criticism which seems to me to be undeserved. In particular, much has been said about section 10(7), not much of it complimentary: it has even been described by Jacob LJ as ‘cack-handed’ in Markhem v Zipher6 and as ‘preposterous’ in Grimme Landmaschinenfabrik v Scott.7
The Act was amended in 20048 to conform to the revisions to the EPO known as EPO 2000. It is of course the 1977 Act, and those international conventions, that concern us in this chapter. The Act and the Convention should therefore be considered parts of a single project.
The European Union – in fact, because it goes back so long, the European Economic Community – has a significant interest in the patent field. As we shall see (paragraphs 11.4 to 11.6), the future development of the patent system will involve a substantial amount of European Union law, in the form of a Community patent regulation and a single patent litigation system.
1[1996] RPC 76, 82.
2[1999] RPC 253.
3[2005] 1 All ER 667.
4[2008] RPC 716 at para graph 5, per Lord Hoffmann.
5Grimme Landmaschinenfabrik GmbH & Co KG v Derek Scott (trading as Scotts Potato Machinery) [2010] EWCA Civ 1110 (15 October 2010); at first instance [2009] EWHC 2691 (Pat) (3 November 2009) (Floyd J).
7Above, note 9. See Johnson, Phillip. ‘Mr Skemp’s preposterous provision: the drafting of the Patents Act 1977 and harmonization in the 1970s’, Queen Mary Journal of Intellectual Property 5, 4: 367-388, doi: https://doi.org/10.4337/qmjip.2015.04.01.
8The Patents Act 2004, to which there is a useful Explanatory Memorandum prepared by the government. The 2004 Act came into operation on 13 December 2007, implementing the 2000 amendments to the Convention with a distinct lack of haste.
Patents are intended to protect inventions, and the legislation is designed to ensure that only deserving, innovative products or processes get protected. To be patentable, the invention must involve some sort of technical effect: there must be a solution to a technical problem, although the Act nowhere states this in so many words. In Re Asahi’s Application1, Lord Oliver of Aylmerton provided a concise explanation of the nature and purpose of patents:
The underlying purpose of the patent system is the encouragement of improvements and innovation. In return for making known his improvement to the public the inventor receives the benefit of a period of monopoly during which he becomes entitled to prevent others from performing his invention except by his licence.
In the Court of Appeal’s judgment in Dranez Anstalt v Hayek, Chadwick LJ said:
The grant or registration of a patent confers a monopoly. The statutory monopoly can be justified on the grounds that it is necessary (for a limited time) in order to encourage inventors, and those who fund them, to apply their skills and resources in developing products and processes from which the public will benefit. But the balance between the benefits which will accrue to the public from permitting monopolies in order to encourage invention and the detriment which may be suffered by the public from monopolistic practices is struck by the patent legislation.2
So there is a bargain between the public and the inventor, and disclosure of the invention is crucial. As Lord Mansfield said as long ago as 1778, disclosure is ‘... the price the individual should pay the public for his monopoly.’3
The grant of a patent gives monopoly protection for inventions that can be exploited industrially in return for complete disclosure of the invention over which protection is claimed. Since monopolies cannot be granted more than once, the invention must be novel – that is, something that society has not had access to before. Looked at another way, if the consideration for the grant of a patent is the disclosure to the public of the new learning it embodies, there will be a failure of consideration if (or to the extent that) the subject matter is already known.
1 [1991] RPC 584. The Court of Appeal’s judgment in Eli Lilley Co v Human Genome Sciences [2010] EWCA Civ 33 (since reversed by the Supreme Court: [2011] UKSC 51 (2 November 2011)) also contain interesting and helpful explanations of why a patent system is desirable.
2[2002] EWCA Civ 1729 (26 November 2002), [2003] FSR 561, at [25].
3Liardet v Johnson (1778) 1 WPC 53.
Ownership of a patent allows an inventor to prevent even an independent inventor of the same thing from working the invention. In most countries (the U.S.A.. being historically the main exception, applying a ‘first to invent’ rule which was good for lawyers as it encouraged so-called ‘interference’ actions) the rights go to the first to file a patent application for the invention. The U.S.A.. has had a first to file system since 2013.
The invention must be disclosed as the price of the monopoly, allowing competitors to design round the patent and other people to apply the learning in it to other fields. Relying on confidentiality may be an alternative, but trying to keep the invention secret gives much less certain protection. Reverse engineering of the invention would deprive it of its character of confidentiality and therefore of all legal protection. So, while keeping an invention secret might be a more powerful way to protect it, this is rarely possible because the technology would be available to all with no way for the inventor to control what others do with it. Better to enter into the bargain with the public and get the protection offered through it.
The following discussion relates primarily to applications under the Patents Act 1977. Much applies also to the European Patent Convention, and where there are differences between the two systems this is explained.
Many countries have laws which give patent-type protection without the full rigour (and expense) of a patent system. These are often called petty patents, but the German Gebrauchsmuster translates better as ‘utility model’. Commonly, they work by postponing substantive examination of the patent application, cutting out a lot of expensive work but resulting in the grant of many potentially invalid rights. As well as Germany and Austria, such systems can be found in such diverse countries as Australia and China. The UK has considered and rejected the idea more than once in the past thirty years, and the European Union’s proposals on the subject have made no progress.