Beware of field-testing! Will the Right to Roam be a new problem?

This is an interesting case from the Intellectual Property Enterprise Court in the United Kingdom concerning field testing of prototypes. Thank you the East Anglian Daily Times for their useful summary. For the full written decision, you can refer to here: https://www.bailii.org/ew/cases/EWHC/IPEC/2021/1007.html

As stated by the patentee, Mr Claydon, this decision could have unintended consequences. 

The requirement for an invention to be patentable in the United Kingdom (and in most other countries) include the requirement that the invention is both novel (i.e. new) and inventive (i.e. not obvious) over the state of the art. The state of the art, or the "prior art" is "all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."

In this case, the patentee built a prototype in a farm workshop, and used/tested it in a field on the farm. However, there was a nearby footpath. The public footpath skirts the edge of the field where the testing took place, although at that time it was was unmarked and unmaintained.  There was also a hedge - about 6 feet high - between the footpath and the field, but with gaps at three points.

There was no evidence to suggest that there was ever anyone present other than Mr Claydon and his brother when the testing was taking place.

Mzuri’s case included an argument that Claydon’s prototype could have been observed from the footpath to which the public had access, enough to obtain an enabling understanding of the invention.

In the decision, this argument was accepted, stating that "There were periods, possibly many, during which it was likely that a skilled person, standing on the footpath at the point where Mr Kelly took his photographs shown above, would have been able to see the prototype in action and been able to deduce from its appearance and from the appearance of soil left in its wake, features of construction of the prototype including all the features of claim 16." Claim 16 was thus declared invalid for lack of novelty.

The actual presence or not of members of the public was considered irrelevant.

This is in line with well recognised jurisprudence, but it got me thinking. Is this of potential concern given the nationwide movement towards a "Right to Roam"? 

According to the website www.righttoroam.org.uk, "The Right to Roam is an ancient custom that allows anyone to wander in open countryside, whether the land is privately or publicly owned. In countries such as Norway, Sweden, Estonia and Scotland it has existed as a common right, a defining concept of nationhood, and has only recently been codified into law." If a right to roam exists, and it allows access to all land whether privately or publicly owned, does that mean that anywhere can be a viewing access point for the purposes of considering whether something is a public disclosure? If so, will almost ANY external testing, or even testing in a private building with a window to such a viewing access point, even without a nearby designated footpath, be legally a public disclosure? For countries like Norway, Sweden, Estonia and Scotland, where there seemingly is a right to roam pretty much anywhere where a member of the public can get to, I fear that it would be!

It will be interesting to see if anyone will be willing to test this issue before a court. Given that Scotland and England both apply the UK Patents Act when it comes to patent law, I certainly would have my reservations about trying to defend against a public disclosure allegation for any field testing in Scotland, and similarly any proven incidence of an external showing of a prototype in such countries, as even in the absence of the public, there is a right for the public to be in a position to see it, and perhaps that is enough!

The defendant (Mzuri) argued there was potential for prior disclosure during testing of a new type of seed drill. Claydon argued testing of the new drill had taken place on private, secluded farmland owned by the company’s directors next to its factory in Suffolk.

www.eadt.co.uk/...