CFPH LLC, Patent Applications by

Mr Douglas Campbell (instructed by Kilburn & Strode) for the Appellants Mr Colin Birss (instructed by The Treasury Solicitor) for the Comptroller-General of Patents Hearing date : 17 March 2005 ____________________

(a) Sometimes it is meant that an idea is not obvious (is clever enough to deserve patent protection): as where Tomlin J referred to the scintilla of invention required to support a patent [2] , or as where Lord Herschell warned of the danger of being misled by the very simplicity of an apparatus "into the belief that no invention was needed to produce it" [3] . Modern legislation calls this inventive step and we can avoid confusion by using that phrase.

(b) At other times 'invention' is referring to what the patentee himself claims it to be (he may be right, he may be wrong). For example, when a judge or hearing officer says: "I hold that the invention of claim 1 was not new". A striking example is section 72(1)(a) of the Patents Act 1977, which says that a patent for an invention may be revoked if "the invention is not a patentable invention".

But for my part I think Nicholls LJ was too modest. I believe his difficulty arose, not through lack of expertise, but because of the inherent vagueness of the concept itself. In Fujitsu Limited's Application [1997] EWCA Civ 1174 , [1997] RPC 608 Aldous LJ said:

Likewise the German Federal Court of Justice in XZB 15/98, "Sprachanalyseeinrichtung", 11 May 2000.