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Apple and Samsung ruling provides clarity on tests for determining patent priority date and novelty, says expert

A UK judge has provided clarification of the different tests to be used to decide whether a patent covers something new and whether the date of its assessment gives it priority over other patents in a case involving South Korean device maker Samsung. 11 Mar 2013

A UK judge has clarified the differences between the legal tests for determining whether a patent is new, or novel, over a previous disclosure and whether a patent is entitled to rely on an earlier publication as the relevant disclosure of the invention. The ruling is part of ongoing litigation between Apple and Samsung in the UK Courts.

An intellectual property law expert has said that the clarification will be useful for businesses as it provides useful guidance for determining patent validity.

The High Court said that both Samsung patents that were in issue in the proceedings were invalid. The patents covered technology used in data processing in a mobile telecoms network.

In the ruling Mr Justice Floyd said that both the patents were invalid because neither of them was entitled to the priority dates that were claimed for them. A patent's priority date is the date at which its validity is assessed. Usually this is the filing date of the relevant patent application, though sometimes, as was the case here, the patent may claim an earlier date from a previous disclosure of the invention.

The judge said that even if Samsung's claimed 'priority dates' were valid, he would still have held that the patents were invalid because the inventions protected were obvious, and therefore did not merit patent protection.

Mr Justice Floyd clarified the difference between a patent's novelty and its priority date.

"The subject matter of a claim is not the same thing as the scope of the monopoly it claims," Mr Justice Floyd said. "Thus, the test for determining priority is not the same as that for novelty. In determining novelty one simply asks whether that which is described in an earlier document would, directly and unambiguously, fall within the monopoly granted by the patent claims. To put it another way, the issue is whether the earlier disclosure would infringe."

"That the law is different for priority can be illustrated by the example in [a previous case dealt with by the Court of Appeal]," the judge said. "The Court of Appeal there recognised that the disclosure of A+B+C may in some circumstances not provide priority for a claim to A or B alone or to A+B. By contrast, the disclosure of A+B+C will normally deprive a claim to A, B or A+B of novelty."

"The additional presence of other features in the disclosure would not matter. Applying the infringement test, A+B+C will still infringe, whether the claim is to A, B or A+B. When testing for priority one must therefore guard against simply asking whether the features called for by the claim are present in the priority document. The test for claiming priority in respect of the same invention has more substance, and is less formal, than that," he said.

"An interesting aspect of the ruling is the guidance from Mr Justice Floyd on the different legal tests that apply for assessing novelty as opposed to determining a patent's priority date," said patent law specialist Indradeep Bhattacharya of Pinsent Masons, the law firm behind Out-Law.com.

Samsung had claimed that the priority dates for its patents were the dates on which it submitted applications for patent protection in Korea. However, Mr Justice Floyd said that in the case of one of the patents the Korean document did not disclose "directly" or "unambiguously" details of the specific inventions for which Samsung claimed patent protection in Europe.

Mr Justice Floyd said that in the case of the other patent the Korean document did not detail the specifics of Samsung's claims under the European patent. The company was therefore not entitled to claim that its patents were valid from the dates those documents were published, the judge said.

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