Royal Courts of Justice
Strand, London, WC2A 2LL
Before:
MR. JUSTICE MANN
Between:
MR. ANDREW SCANLAN | Claimant |
- and - | |
THE PATENT OFFICE | Defendant |
Digital Transcription by Marten Walsh Cherer Ltd.,
Midway House, 27/29 Cursitor Street, London EC4A 1LT.
Telephone No: 020 7405 5010. Fax No: 020 7405 5026
THE CLAIMANT appeared in person
MR. COLIN BIRSS (instructed by The Treasury Solicitor) for the Defendant
Judgment
MR. JUSTICE MANN:
This is an appeal from a Decision, technically, of the Comptroller of the Patent Office in the form of a decision of the Deputy Director, Mr. B. Westerman, acting for the Comptroller, in which he refused an application for a UK patent made by Mr. Andrew Scanlan. He did so on 16th January 2006.
Mr. Scanlan's application is described in a single claim as being (in its final form) as follows: "A handle designed to facilitate the re-use of carrier bags". A little amplification appears in the description in the application where it is described as a carrying handle for use with shopping bags, carrier bags and the like comprising an elongated member having access slots 2/3 to accommodate bag handles. The carrying handle may be used with one or two shopping bags, carrier bags or the like. The carrying handle may be used to store empty carrier bags so that they may be re-used.
The device in question, of which I have seen a sample and a drawing of which appears in the application, is, in the sample produced to me, a device just over three inches long with a curved underside. It is about an inch high at its highest and it contains two matching slots -- one on the left, one on the right -- the two slots made up, first, of a diagonal slightly to the left of the vertical with a further longer diagonal roughly at right angles to that into which one handle of a plastic carrier bag is placed. There is a matching slot on the other side. I think that is the best I can give by way of a verbal description of the product.
The decision of Mr. Westerman first of all sets out the application and it contains a smaller version of the drawing which is a part of the patent application. One of Mr. Scanlan's points on this appeal was that the drawing was smaller than that appearing in his application and was a reduced drawing. It undoubtedly is, but absolutely nothing turns on that. The drawing is there in order to be able to illustrate and in order to make sense of the account of the invention which appears in the decision. The decision then contains a section called “The Issues” in which some of the history is dealt with and the nature of the hearing before Mr. Westerman is described. Nothing, I think, turns on that and no complaint is made by Mr. Scanlan in relation to that.
The next section is “The Law” in which uncontroversial law is set out and, in particular, the hearing officer flags the direction in which he is going by referring in particular to section 1(1)(a) of The Patent Act which requires that the invention be new. Indeed, in due course it is on want of novelty that the hearing officer ultimately reached his decision.
He then has a section which he entitles “Assessment”. Under paragraph 15 he sets out the principles of construction which he applies having identified the question of the true construction of the claim as being the first matter that he does have to decide, and he does that correctly. He says this:
"The function of the claim is to define what the patentee desires to protect and to express what others may not do without his permission. The wording contained in the claims is the expression of the area protected. Whilst, in some circumstances, recourse may be had to the description, where the words in the claim have a clear meaning, then the first presumption is that they stand to be construed alone. It is also settled law that, in construing the claim, I must take a purposive view, that is take a reasonable view consistent with what an informed reader would take trying his best to understand the whole specification."
Mr. Scanlan takes the point that that paragraph contains a contradiction and somehow, therefore, is a fatal flaw or one of the fatal flaws in this decision. I am afraid I do not take that view. The paragraph sets out the basic law quite correctly and succinctly enough for the purposes of his decision as to the process involved in construing a patent.
Having set out the principles of construction involved the hearing officer then sets about construing the first claim and he says this:
Taking this into account, it is clear to me that the claim requires a handle which is separate from, but of use with, a carrier bag, and I find no difficulty in understanding this. Additionally, however, it requires that this handle is ' designed to facilitate the re-use'. Here I have more difficulty. These words, in my view, should not be read as restricting the protection to some presumption as to what was in the mind of the devisor when designing the device. In my judgment, it must carry the meaning that the handle is suitable for the purpose of 're-using' carrier bags. In this context, having read the whole specification and considered all of the submissions made in the correspondence and at the hearing, I am at a loss to see what distinguishes 're-use' from 'use'.
I therefore find that protect claimed boils down 'A handle suitable for use with a carrier bag', where it is implicit that the handle is not the integral handle found on all carrier bags."
I am not sure whether Mr. Scanlan takes serious issue with that process. I think he may. If he does then it seems to me that the conclusion that the hearing officer came to on the question of construction is a perfectly tenable conclusion and he thereafter considered the matter entirely fairly and properly on the basis of that conclusion.
Mr. Scanlan, I think, takes the point that he never put forward his case on the basis of use. That may well be the case but what the examiner was doing was what he is entitled to do, which is construing the claim before he went on to decide on the fate of the application.
There then appears a paragraph which cross-refers to guidance given in a Patent Office publication entitled "How to Prepare a UK Patent Application". Paragraph 11 of that document indicates that patents will not be accepted if they are merely claims to an advantage. What the application has to do is set out technical features of the claimed invention. Paragraph 18, as I read it, indicates that the hearing officer considered that Mr. Scanlan's invention fell into the category of a claim to advantage. He seems to be equating Mr. Scanlan's claim with the examples set out in paragraph 11 of the document I have referred to. If that is indeed what he is saying, then I am afraid at this point I do not agree with the hearing officer, and if that is what this paragraph means, then Mr. Birss, who appeared today for the comptroller, would not seek to sustain it. I do not think that Mr. Scanlan's claim does fall within the vice described in paragraph 11. However, for reasons that will appear, I do not consider that means that the Decision is flawed.
What the hearing officer then goes on to do is consider prior art and come to the conclusion that the application was not novel and did not contain a new inventive step. There were before him ten examples of prior art, all of them being some form of bag handle which operated by inserting the handles of modern plastic, disposable carrier bags into slots in handles, usually ending in enlarged circles for retaining the handles. In one case the device was also described as a handle for carrying objects in self-defence. That is UK applicant Nathan and the application number is 9416611.3. I think it would not be unfair to describe that as a handle which doubles up as a knuckle-duster, but nothing particularly turns on that.
Having considered each of those items of prior art, in paragraph 20 the hearing officer says this:
"Having carefully considered the content of these documents, I find that they all disclose separate handles to which the usual handles of a carrier bag or bags can be attached. All of them have slots or other formations into which the loop handles of carrier bags are, in use, inserted and the devices are intended to assist in carrying the bag(s). In my judgment, therefore these documents demonstrate that devices falling within the scope of the claim that I have determined above are known, and that therefore the claim does not meet the requirement of section 1(1)(a)."
I have had the opportunity of seeing those items of prior art and have been taken through them or most of them, albeit fairly shortly, by Mr. Scanlan. Having seen that prior art it is quite clear to me that not only is the hearing officer's conclusion in paragraph 20 of his decision an eminently justifiable conclusion, it is in fact the only justifiable conclusion. In their different shapes and sizes the prior art demonstrates all relevant features of Mr. Scanlan's invention.
That is enough to deal with this appeal. Mr. Scanlan did not, in terms, attack, or attack particularly vigorously, the conclusion in paragraph 20. He had a whole range of other criticisms partly of the wording of the decision and partly of the process, but in any event having considered this case carefully, as I have, and the crucial step in the reasoning being paragraph 20 of the Decision, it seems to me that that part of the Decision is entirely right.
Before me Mr. Scanlan, who represented himself, took a number of points on the Decision in relation to paragraph 23 which is a paragraph dealing with one of Mr. Scanlan's submissions below. There is a cross-reference to one of the items of prior art. Mr. Scanlan had a point in relation to that which is, effectively, a point of construction on the prior art, because what these paragraphs were doing is effectively dealing with single attacks by Mr. Scanlan at the hearing below. I do not propose to develop any of them at great length. Suffice it to say for these purposes that Mr. Scanlan's construction of the relevant paragraph of prior art is, in my view and with all due respect to him, a misconstruction.
Paragraph 25 of the decision is said by Mr. Scanlan to be a "nonsense". It reads as follows:
"Mr. Scanlan also submitted that the construction of his device was, on the one hand, easier for the user to insert the carrier bag handle, and on the other, more reliable in retaining this handle when so inserted. He was unable to explain to me why this is so, and what makes his handle different in this way. I also note that most of the documents cited seem at least implicitly to include these advantages."
Mr. Scanlan was not really able to explain to me which bit of this paragraph was nonsense, but in any event, having looked at that paragraph and having looked at the items of prior art, it does not seem to me to be nonsense at all. I cannot see any material difference between the various items of prior art and Mr. Scanlan's invention and it seems to me that the hearing officer was quite right to conclude that most of the documents cited seem at least implicitly to include the advantages referred to by Mr. Scanlan.
Having taken me through various bits of the prior art -- I need not deal with any of that more than I already have -- Mr. Scanlan then set about criticizing various aspects of the procedure. He took me to various paragraphs in the correspondence and reports that have passed between the Patent Office on the one hand and Mr. Scanlan on the other and he has pointed out matters in that correspondence and those reports which he says are wrong or unfortunate and which somehow bear on this matter. It seems to me to be clear, I am afraid, that none of the material contained in the bundle of correspondence which was passed to me in any way affects this particular matter. What is before me is an appeal from the decision of the hearing officer. The hearing officer has decided the matter in the terms of his written decision for the reasons given in his written decision. It is that which I have to decide and not what has passed between the examiner on the one hand (because that was Mr. Scanlan's correspondent) and Mr. Scanlan on the other. I am afraid there is nothing in that correspondence which assists Mr. Scanlan, nor is there anything in other correspondence which Mr. Scanlan read to me and which is correspondence passing between Defra and other bodies on the one hand and himself on the other as to the desirability of recycling carrier bags. That is an entirely different point which does not bear on any issue on this appeal.
Nor am I assisted, I am afraid, by a letter from one ministry which Mr. Scanlan read to me which thanked Mr. Scanlan for drawing to their attention to his "interesting new concept". The writer of that letter may have thought that the concept was new but that does not take Mr. Scanlan anywhere at all. The writer of the letter may or may not have been being merely polite, but even if one assumes that he or she did consider this to be a new concept that is not something which binds the Patent Office, or indeed anybody else. It is merely that particular correspondent's view of the concept in question. What matters is what the material showed when it was before the hearing officer and that material showed, as the hearing officer records, that Mr. Scanlan's invention lacks novelty.
Accordingly, for all those reasons I dismiss this appeal and the decision of the examiner will stand.