Scanlan v The Patent Office

A patent claim must be construed according to its language, read purposively and in the context of the specification. Where the claim’s wording has a clear meaning, the claim ordinarily stands to be construed on its own. A claim framed as a handle designed to facilitate re-use may, on the evidence, amount to no more than a claim to a handle suitable for use with carrier bags. Such a claim lacks novelty where the prior art discloses separate handles with slots or formations into which carrier-bag handles are inserted. The court may uphold a refusal on the decisive novelty ground even if another aspect of the hearing officer’s reasoning was erroneous.

The claimant appealed against the Deputy Director of the Patent Office, acting for the Comptroller, who refused a UK patent application on 16 January 2006. The application claimed a handle designed to facilitate the re-use of carrier bags.

The hearing officer construed the claim as covering a separate handle suitable for use with a carrier bag. He concluded that ten items of prior art disclosed handles with slots or other formations for receiving carrier-bag handles and that the claim therefore lacked novelty. The appeal challenged the construction, aspects of the reasoning, the treatment of alleged advantages, and procedural matters. The central issue was whether the refusal could stand.

1. Appeal dismissed. The decision of the Patent Office hearing officer stood.
2. The hearing officer’s approach to construction was legally correct. Claims define the area of protection, and clear claim language is ordinarily construed by reference to the claim itself, while the whole specification may be considered where appropriate. The construction must be purposive and reflect what an informed reader would understand from the specification.
3. The words “designed to facilitate the re-use” did not restrict the claim to a particular subjective design intention. Properly construed, the claim required a separate handle suitable for use with a carrier bag. The court regarded that construction as plainly tenable.
4. The hearing officer’s reasoning that the claim was merely a claim to an advantage was not accepted. The claim did not fall within that vice. That error did not invalidate the decision because the refusal was independently and decisively justified by lack of novelty.
5. The prior art disclosed all the relevant features of the claimed device. It consisted of separate bag handles with slots or other formations into which the loop handles of carrier bags could be inserted. The conclusion under Patent Act section 1(1)(a) was therefore correct.
6. Correspondence involving the Patent Office, other bodies, and the claimant did not affect the appeal. The court had to determine the appeal from the hearing officer’s written decision and reasons, rather than from earlier correspondence or views expressed by third parties about whether the concept was new.

1. High Court (Patents Court): appeal dismissed; the Patent Office decision stood.
2. Patent Office: the Deputy Director, acting for the Comptroller, refused the patent application on 16 January 2006 for lack of novelty.