The judgement in the recent case of Claydon v Mzuri ([2021] EWHC 1007 (IPEC)) will stifle innovation and have unintended consequences, Jeff Claydon, CEO of Claydon Yield-o-Meter Limited, believes. The judgement related to the potential for prior disclosure during testing of a new type of seed drill, even though it had taken place on private, secluded farmland owned by the company’s directors adjacent to its factory in Suffolk.
Jeff Claydon states: “Patents are not given out lightly. They are difficult to obtain and costly to maintain. Applications involve many checks to the prior art, all of which the Claydon patents passed, so we have no regrets about bringing this case to court. Our only regret is that although the judge found the defendant to be infringing our patent, we lost the case on a pure technicality.
“The decision raises the question of how any new agricultural machinery can be tested in private, on your own land prior to the patent being approved when there are so many smart phones and drones about. The ruling could render virtually any patent worthless because somebody “could” have seen a prototype invention in some way prior to patent approval.
“Small-scale field testing needs to take place to ensure that a device works before deciding whether it is worth patenting. This judgement therefore may endanger innovation as it could make patents revocable, unenforceable, uneconomical, and completely unviable.”
Background to the case
The Claimant (Claydon) claimed that The Defendant (Mzuri) had infringed two of its patents, UK Patent No. 2 400 296 for an invention entitled “Improved seed drill” (“the 296 Patent”) and European Patent UK No. 2 051 576 (“the 576 Patent”) which claims another invention of the same title.
The case related to the alleged prior public use of a new seed drill which incorporated design features that were the subject of these patents and raised the question of when prior use should be categorized as a public disclosure. The alleged infringers and defendants argued that Claydon’s ‘296 patent’ was invalid by virtue of prior public use by the inventor (Jeff Claydon).
That the inventor tested a prototype of the invention in a field on his own farm before the patent application was filed was not in dispute. The question before the Judge was whether this constituted public disclosure of the invention, given the potential for a “skilled person” to have observed the prototype seed drill operating.
The defendant argued that the prototype in the field “could” have been observed from a public, though unmarked and unmaintained, footpath on the edge of the field. Although there was a 6′-high hedge between the footpath and the field, crucially, there were three gaps in the hedge through which the field could be seen.
Although aware that prior public use of his invention could jeopardize his ability to get patent protection, Mr Claydon maintained that he had a good vantage point from his tractor cab and would have maneuvered the tractor so that the drill prototype was not visible had he seen someone on the footpath when testing it. However, the Judge, His Honor Judge Hacon (Hacon HHJ), concluded that a hypothetical, skilled person would have been able to deduce all the claimed features of the invention from their vantage point at the edge of the 40-acre field.
Commenting on the judgement, Jeff Claydon stated: “This was based on a completely hypothetical situation. What “could happen” and what actually “did happen” are two totally different things. In other areas of law, you need evidence that something actually “did happen” and without that the case does not stand. In my opinion, patent law should be no different.”
Recent developments
Addressing the content of a press release issued recently by the defendant, Mr Claydon stated: “It contains a number of inaccuracies. We offered Mr Lole the opportunity to discuss a licensing arrangement on many occasions over the years since he launched his product, but in every case he refused.
“We did not feel this was fair because patents exist for a reason; to protect intellectual property. They are also expensive to obtain and maintain, so it seemed unjust for someone else to benefit from our innovation and investment without some form of recompense. Mr Lole told us in a letter that he would rather defend his position in court than come to a sensible agreement, which left us with no choice other than to assert our rights as the patent holder.
“Even though the judge found the defendant to be infringing our patents the outcome of the case hinged entirely on a technicality which we consider to be unjust. Consequently, the decision represented a sad day for patents and innovators as it makes it virtually impossible to test any invention outdoors, something which is necessary for agricultural machinery.
“Without reward there is no incentive to innovate, and without innovation there is no progress to create better, more efficient equipment and processes.”
For further reading on this subject Gordon Harris, Partner, International IP Leadership, Gowling WLG (UK) LLP writes on ‘Schrödinger’s seed drill: a consideration of the recent cases involving prior use in patent law.’ Gordon is extremely critical of the decision of the judge and elaborates on the extensive resort to hypothetical concepts which lay behind the judgment.
