High Court Finds That Unobserved Trial Of Seed Drill Machinery In A Field Next To A Public Footpath Rendered The Patent Relating To The Invention Invalid For Prior Use

• Published date: 21 June 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Wiggin
• Author: Ms Sara Ashby

Facts

The claimant, Claydon Yield-O-Meter Ltd, makes and sells agricultural machinery. The defendant, Mzuri Ltd, is a company in Worcestershire which competes in the same market.

Claydon claimed that Mzuri had infringed two of its patents: (i) a UK patent entitled "Improved seed drill"; and (ii) a European patent claiming another invention of the same title.

The specification of the UK patent states that the invention relates to a new method and apparatus for planting seed using a seed drilling apparatus pulled by a tractor to produce agricultural crops.

The EU patent claims an invention expressly stated to be an improvement on that of the UK patent.

Mzuri counterclaimed for revocation of both patents. It alleged that the UK patent was invalid on account of prior use by Claydon itself and by reference to a US patent, and that the EU patent was invalid on account of the US patent and another piece of prior art.

Prior use

It was not in dispute that before the priority date of the UK patent, Claydon tested a prototype of its seed drill, which had all the features of claim 16, the particular claim in contention. The prototype was made in Claydon's farm workshop by Mr Claydon, his brother and a Claydon employee. It was tested in a field for ten hours, split over two days.

There was a public footpath that skirted the edge of the field where the testing took place, which in 2002 was unmarked and unmaintained. There was a hedge about six feet high between the footpath and field, but with gaps at three points.

Mzuri argued that Claydon's prototype could have been observed from this public footpath, enough to obtain an enabling understanding of the invention.

Mr Claydon gave evidence as to what happened during the two days of testing and the experts gave evidence as to what the skilled person would have been able to determine and infer.

Mr Claydon said in his witness statement that, at the time of the test, it was in his mind that he would prevent anyone who happened to be nearby from seeing the prototype. He was in a tractor cab and from that vantage point could see anyone in the vicinity before they could see what was happening in the field. He discussed what to do with his brother before the tests began, and they decided that, if they saw anyone, they would move away so that such person would not be close enough to see any relevant detail of the prototype.

In fact, there was never anyone present other than Mr Claydon and his brother.

Decision

His Honour Judge...