IPEC considers whether prototype testing on private property can constitute a prior disclosure

In a judgment by the Intellectual Property Enterprise Court (IPEC) earlier this year, [2021] EWHC 1007 (IPEC) (Claydon), an important question regarding the issue of whether testing a prototype on private property can constitute a prior disclosure was addressed. This decision has important ramifications for how much precaution an inventor must take when conducting tests, especially in sectors involving large commercial equipment. At first glance, this decision seems to run counter to the earlier Court of Appeal decision in [2019] EWHC 991 (Pat) (Hozelock) which had similar circumstances. However, an important distinction is revealed when examining the facts of the two cases.

Hozelock – 17 April 2019

In Hozelock, the invention in question was an expandable garden hose, that the inventor had developed in his garden which was visible from a nearby road. An important point of contention in this case was whether the inventor’s actions amounted to a public disclosure which rendered the patent obvious.

The judge drew a distinction between the scenario where the public is given access to information, in whatever form, but no one takes up the opportunity to look at it, versus the present scenario of Hozelock, where no member of the public could have got access to the information.

The reason no one could have accessed the information is because it was held that if a member of the public had tried to observe the inventor in his garden, the inventor would have simply ceased his activity and concealed the prototypes. This distinction allowed the judge to reach his conclusion that no public disclosure had been made by the inventor in his garden.

Claydon – 22 April 2021

Whilst the Hozelock case concerned a garden hose invention, Claydon involved a tractor pulling a seed drill. This difference in magnitude between the inventions was key to how the decision was made.

In Claydon, the inventor tested the prototype in his farm before filing for the patent. There was a six-foot tall hedge surrounding his farm but it had several gaps, through which anyone could look and take note of his invention. The claimant contended that the prototype could have been seen by anyone from the public footpath, thus gaining enough information to understand the invention.

In his witness statement, the inventor said that he had previous experience of patents and had learned the hard way that public disclosure of his invention would jeopardise the chances of getting a patent granted. With this in mind, he assumed he could prevent anyone who was nearby from seeing it, by simply driving away.

In cross-examination, it emerged that the point of public access from which an observer would have been best placed to witness the testing of the prototype was a point on the public footpath. According to the inventor, the path was very rarely used in 2002, however this statement still implied that the public had access to it.

It was observed in this case that there is clearly a difference between quickly and effortlessly concealing a garden hose in a container versus driving a conspicuous vehicle away from someone whilst on a large flat field. Also of note was the fact that, even if the vehicle had driven away too far for someone to observe, it would have still left behind ‘tines’ in the field which would have given insight into how the seed drill worked.

As it turns out, no one saw the inventor’s prototype. Unfortunately for him, in both UK and European patent law, the standard is not whether the prototype was actually seen, but whether it was made available to the public.

The judge found that a skilled person, standing on the public footpath, would have been able to see the prototype in action and been able to deduce from its appearance and from the appearance of soil left in its wake, features of construction of the prototype. Further, the judge did not believe that the inventor could have feasibly taken action that would have prevented the skilled person from seeing or inferring each of those features, including the alignment of the tines. Therefore, the patent was found invalid because of prior public disclosure.

Practical and legal implications

Both of the aforementioned cases involved a prototype invention being tested by the inventor on private property that was within viewing distance of public property. What ultimately led to the different decisions for these cases was the fact that, in the Hozelock case, the invention in question was small and portable, so in theory, could have easily been concealed if a member of the public was observing the inventor during testing. In the Claydon case however, the invention was large, not portable and was situated in a wide open area and in theory, if a member of the public began to observe the inventor testing the invention, the inventor would not have been able to realistically do anything to effectively conceal what they were doing.

This decision raises the practical question of how inventors can confidentially test and develop large inventions outdoors at their own premises. One may even go as far as claiming that this would contravene the principle of non-discrimination based on the field of technology under Article 27 TRIPS, which states that:

“[…] patents shall be available and patent rights enjoyable without discrimination as to the […] field of technology […]”

In other words, inventions incorporated in larger products might de facto be discriminated vis-à-vis inventions related to smaller ones as there is uncertainty as to whether a large invention can be tested in the field without risking loss of novelty. It seems that this decision falls within the definition of de facto discrimination as, whilst the ruling appears neutral, as it is not formally addressed to a particular field of technology, its actual effect is to impose negative consequences on inventors within industries which require large scale tests. For some this finding is likely to be considered unfair and difficult to justify.

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