Patenting New Uses of Known Technology

As technologies progress, it is becoming more common for people and companies to look for solutions within the realms of available knowledge. Often a known technology from one field when used in a completely different area can deliver surprising results. With those surprising results often come new patents.

In the medical industry, the second pharmaceutical use of a known compound or medicament is well documented. These types of patents have been around for a number of years, and are often referred to as having "swiss-type " claims. One of the classic examples of this is the new use of AsprinTM as an anticoagulant and antinflammatory treatment. This was considered a new medical use over and above the traditional known use for alleviating headaches. As such, patents were awarded for the new use of the known drug, AsprinTM.

Outside the medical profession, similar situations arise, but across a broad spectrum of technologies. The question becomes where to draw the line between what would be an expected use of a known technology and what would be a use that is different enough to be entitled to a monopoly of twenty years?

A recent decision in Europe provides some guidance as to how such a decision can be made. The general criteria in such a situation is a patent for a new use of a known technology would not be allowable if it is "obvious to a person skilled in the art" to combine those two technologies.

The decision above refers to the case of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS (EMGS) [2010] EWCA Civ 819, which questioned the validity of European Patent EP 1309887.

EP 1309887 was held by EMGS and covered the use of controlled source electromagnetics (CSEM) to determine the difference between oil and water in a deep water geological formation. While CSEM was a well known technique, it had never before been applied to the use of deep water oil exploration. Revocation of the patent was sought of the grounds that the combination of these two separate skills was obvious to "a person skilled in the art" and therefore unpatentable.

In making his decision Lord Justice Jacob pointed out that the person skilled in the art for obviousness is not the same person skilled in the art for performing the invention once it has been made. Specifically, he stated that;

"I think the flaw in [assuming that the skilled person is the same in each case] is to assume that "the art" is necessarily the same both before and after the invention is...