Blowin' in the wind

Last Wednesday, 14 November, Mr Justice Kitchin handed down his England and Wales Patents Court judgment in the patent dispute of Wobben v Vestas-Celtic Wind Technology Ltd [2007] EWHC 2636 (Pat). In short, Wobben was the owner and managing director of Enercon, a major manufacturer of wind turbines and the market leader in Germany (also the unsuccessful Community trade mark applicant in a decision covered by this blog last week).

Right: the IPKat demonstrates his affection for wind power

Vestas was the UK branch of the largest maker of wind turbines in the world. Wobben sued for patent infringement; Vestas claimed the patents were invalid; Wobbens agreed that some of his patents' claims were invalid and sought to amend them.

In a case that, despite its length, had very little law in it but lots and lots of techie stuff, Kitchin J found in favour of Vestas. He concluded that there had been no infringement and various claims in Wobben's patents were invalid. One thing the judge said did catch the IPKat's eye. As para.204 he observed:

"It was confirmed by the House of Lords in Synthon v SmithKlineBeecham [2005] UKHL 59; [2006] RPC 10 that an earlier publication will only deprive a patented invention of novelty if it discloses the invention and that the skilled person would be able to perform the disclosed invention if he attempted to do so by using the disclosed matter and his common general knowledge. In my judgment the same approach must apply to obviousness. There can be no justification for finding that a "near miss" which does not enable the claimed invention nevertheless renders it obvious".

The IPKat wonders whether readers agree that this is indeed the case. He had always assumed that the functions of novelty and inventive step were quite different. While the notion that a disclosure must be enabling is crucial to novelty, he doesn't see why it should be a sine qua non for obviousness: if it were, then how does the 'obvious to try' criterion stand, where something that exists in the prior art does not in fact constitute an enabling disclosure but suggests clear lines of thinking that will lead to what the patent applicant believes to be an invention?

You can read the full decision here. Curiously, notes Merpel, BAILII has classified this as a Chancery Division case rather than as a Patents Court case. Let's hope it soon finds its way home.

Blowin' in the wind here and here