Novelty & Infringement: two sides of the same(ish) coin
In the prior blogpost we covered some aspects of construction useful for the FD4 examination. Next, we are moving onto Novelty & Infringement.
Novelty: the ‘reverse infringement’ test?
Under UK practice, there had been an approach which was occasionally referred to as the ‘reverse infringement’ approach, as set out in General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457 (See MoPP 2.03). The point was that a piece of prior art must ‘infringe’ the claim if performed to destroy its novelty. Why is this relevant to the FD4 examination? Well, for starters, infringement (and novelty!) are based upon the purposive construction approach outlined in my prior article. Actavis Lilly raises some interesting questions for novelty under this established concept, but we are all awaiting clarification from the judiciary in due course as to whether this standard applies.
Answer structure in novelty & infringement
Given purposive construction applies to Novelty and Infringement, when you are answering the question of whether a prior art document/infringing article falls within the scope of the claims, you must point to how each feature maps to your construction. This is evident in the mark scheme, and the exemplary passing papers that the PEB provide. As such, do not complete the construction section and forget about it. Instead, have it by the side and refer to it when planning and writing your answer for the novelty and infringement sections.
As per the exemplary scripts, you must not simply say ‘Yes’ or ‘No’ and then give a page reference. You should be explaining how what is stated at that reference matches your construction to get the marks. I pretty much copied the style of the mark scheme and would say Y/N with a reference. DON’T! I only passed once I understood that I needed to map the features to my construction and explain how they matched. I don’t think it needs to be an essay on each feature, but should justify why whatever is disclosed is the same as what you have construed. Using a table layout or not (I really don’t think it matters - I used a table format, for whatever that’s worth), make sure to state whether its present or not, and explain why with evidence where appropriate, and with reference to your construction. This is demonstrated throughout the exemplary passing scripts, and the Examiner’s Report makes reference to the right and wrong approach in paragraph two of the ‘Infringement’ section of their report for 2024.
So what of Actavis Lilly..?
Looking at the 2024 mark scheme, it is clear that Actavis Lilly must be discussed for each claim in the infringement section which does not infringe under normal meaning, with reference to the three questions in order to score all three marks. So, make sure to learn the questions, practice them, even when you’re doing past papers which pre-date the judgment. As a reminder, here they are:
- Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
If yes:
- Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? 7
If yes:
- Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim of the patent was an essential requirement of the invention?
