Case: Technograph Printed Circuits Ltd v Mills &amp; Rockley (Electronics) Ltd [1972] RPC 346
Outcome: cited
The High Court at [111] emphasised that it is not the role of a court to substitute its own conclusion for the objective test laid down by ss 7(2) and (3), except in the rarest of circumstances: see also Technograph Printed Circuits Ltd v Mills &amp; Rockley (Electronics) Ltd [1972] RPC 346 at 355 (per Lord Reid). The task for the court is to look forward from the prior art base to what a person skilled in the relevant art is likely to have done when faced with the problem which the patentee claims to have solved. The Court noted at [115]-[116] the importance of secondary evidence when considering whether an inventive step has been achieved. Secondary evidence is that evidence which relates to matters such as the commercial success of the invention, the satisfaction of a long felt want or need, the failure of others to find a solution to the problem and the copying of the invention by competitors. Their Honours at [115] also refer to the necessity for a court to consider the scope and extent of the prior art, and to determine the precise advance over that which was previously in existence, when assessing the level of that prior art. 74 When considering the application of s 7(3) , the Court observed at [152] that attention must be directed to prior disclosures (that is publicly available information which is not part of common general knowledge), which a person skilled in the relevant art could be expected to have regarded as relevant to solving a particular problem. This does not mean that regard must be given to any work in the relevant art whatsoever, but rather only to that information a person skilled in the art could regard as relevant when confronted with the problem faced by the patentee. 75 In this case, it is not the principles relating to 'inventive step' and 'obviousness' which are in dispute, but rather their application. Austal submits that the hull of the invention is only a hybrid combination of desirable features of conventional catamaran hulls and SWATH hulls to produce a multi-hull vessel suitable for high speed operations in exposed seas. The design approach of Stena was not counter-intuitive. A person or team skilled in the art as at the priority date would, when seeking to modify the hull of a catamaran or SWATH into a hull of a so-called semi-SWATH in order to improve seakeeping while retaining speed and stability, design a hull form within the claims without any inventive step. This, Austal submits, demonstrates that the claimed invention is obvious. 76 Austal submits that the relevant prior art base for consideration concerns large high speed multi-hull passenger and cargo vessels suitable for use in exposed sea conditions. It argues that, prior to 30 January 1991, the advantages and disadvantages of both conventional multi-hull catamaran-type vessels and SWATH-type vessels were apparent and known to those in the field. Conventional catamarans were known to be highly efficient with low resistance and capable of high speeds greater than 30 knots. They had broad flat stern sections and were well suited to accommodate large engines, gear boxes and water jets to enable high speed propulsion. In addition, the broad flat stern sections were suitable for loading cargo on and off the stern. One difficulty they suffered, however, was bad seakeeping when operating in exposed waters, which arose from the vertical motion imparted due to the influence of waves. 77 SWATH vessels, on the other hand, had advantages of good seakeeping due to their small water plane area and the ability to move at high speeds (up to about 30 knots). However, SWATH vessels suffered hindrances in the form of limitations on their maximum speed due to high frictional resistance arising from large wetted surface areas. They also had low load stability and involved some engineering complexities, such as difficulty in installing and powering suitable water jet propulsion. As a result of this difficulty with propulsion, they were regarded as unsuitable for use above 30 knots.