Long v Comptroller General of Patents

Patent claims must be construed purposively in the context of the specification as a whole. Ordinary words such as “shadow” receive their meaning from that context and from how the skilled reader would understand the invention’s purpose.

A claim may define an invention by its result, but the specification must still disclose enough information to enable the skilled person to perform it. Where the claim was properly construed as covering a light source being blocked so that indicia were no longer illuminated, the claimed car-park system lacked novelty. The appeal was dismissed.

Linda Long appealed on paper from a hearing officer’s decision in the Intellectual Property Office refusing patent application GB0523890.2. The application concerned indicators for showing whether car-parking spaces were occupied, using a light source which illuminated indicia when a space was empty and cast a shadow when it was occupied.

The hearing officer construed “cast a shadow” as meaning that the vehicle blocked the path of light so that the indicia were no longer illuminated. On that construction, the claims lacked novelty over a German patent. He also considered the claims unclear under section 14(5)(b) of the Patents Act 1977. The central issues on appeal were the proper construction of the claims, the admissibility of photographs offered to explain “shadow”, and the consequences for novelty and sufficiency.

1. Fresh evidence. The photographs of sporting events were inadmissible. “Shadow” and “cast a shadow” are ordinary English expressions. Their meaning had to be determined by construing the claims purposively in the context of the patent specification, not by evidence illustrating their use in other contexts (para [31]).
2. Construction. Applying sections 125(1) and 125(3) of the Patents Act 1977 and the Protocol on the Interpretation of Article 69 of the European Patent Convention, the claims had to be read in the context of the specification as a whole, using a purposive construction. The skilled reader would understand “cast a shadow” to mean that the vehicle blocked the light path so that the indicia were no longer illuminated or were in shadow. The words did not require a clearly defined outline or image of the vehicle on the ceiling (paras [33]–[36]).
3. Novelty. On that construction, the claimed invention contained all the features disclosed by the German patent. The invention therefore lacked novelty, and the hearing officer was right to refuse the application (paras [37], [40]).
4. Alternative sufficiency observation. If the claims had instead been construed as requiring a clearly defined vehicle shadow, the specification would not have complied with section 14(3). Unlike No-Fume Limited v Frank Pitchford & Co Limited 52 RPC 231, the specification gave no information explaining how the claimed result was to be achieved. This was an alternative, unnecessary observation because the court had rejected that construction (para [38]).
5. The appeal was dismissed. The appellant was ordered to pay the respondent’s costs (para [40]).

• High Court (Chancery Division), Patents Court: The appeal on paper from the Intellectual Property Office hearing officer’s decision of 25 May 2010 was dismissed. The refusal of the patent application was upheld.