KSR and Standards of Inventive Step: A European View – Review of IP Law, 2008

Thomas Jefferson and inventive step ? Milling inventions of Oliver Evans ? Hotchkiss v Greenwood ? Cuno Engineering v Automatic Devices ? Graham v John Deere – Similarity to the Windsurfing test in the UK ? Persuasive power of new result evidence ? US and UK examples ? UK decision in Sabaf v MFI Furniture ? Conservative character of the KSR decision ? Relationship between technical problem test (EPO) and new result ? Evidence-based approach ? Preserving balance and avoiding over-reaction.

Symbian – UK Court of Appeal – 2008

Court of Appeal decision in Symbian Limited v. Comptroller General of Patents [2008] EWCA Civ 1066 ? Method of accessing data in a dynamic link library (DLL) device ? Improved speed and reliability ? Requirement for a novel effect outside the computer (disapproved as a test) -? Meaning of ?technical contribution? ? Each case to be considered on its merits ? Decisions to be followed: Computer-related invention/VICOM? T 0208/84, Data processor network/IBM CORP T 0006/83, Computer-related invention/IBM CORP T 0115/85,? and T 1543/06 Game machine/GAMEACCOUNT and UK decisions in Merril Lynch and Gale.

Patents and Scientific Integrity – CIPA, May 2008

Inaugural lecture delivered at Bournemouth Univeristy on 21 February 2008 ? CIPA Journal May 2008. Permissible claim scope in empirical research fields ? functional definitions ? Generic claims to chemical compounds ? Consequences when some compounds shown not to perform as promised ? Duty of good faith under UK law ? Relationship to inequitable conduct in US ? Recent findings of inequitable conduct in the CAFC and the likely outcome under a similar fact pattern before the UK courts ? Misrepresentation of experimental results and their significance.

The Anywayup Cup – CIPA Journal, October 2005

Inventive step ? Technically simple invention ? Small difference from prior art ? Solution to long-standing problem – Commercial success ? Checklist of matters which should be taken into account when assessing a case of lack of inventive step ? Lessons for a private individual or small business seeking to develop a new invention.