The King v.
copyright 1997 Donald M. Cameron
At. p 43
"This ex post facto analysis of the invention is not sound. I am supported in this view by the statement of Fletcher Moulton L.J., in British Westinghouse Electric and Manufacturing Company Ltd. v. Braulik (1910), 27 R.P.C. 209 at 230:
"I confess that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion it is not countenanced by English Patent Law."
and the approval of it given in the House of Lord by Lord Russell of Killowen in Non-Drip Measures Co., Ltd. v. Stranger's Ltd. et al (1943) 60 R.P.C. 135 at 142, with his additional remarks:
"Whether there has or has not been an inventive step in constructing a device for giving effect to an idea which when given effect to seems a simple idea which ought to or might have occurred to anyone, is often matter of dispute. More especially is this the case when many integers of the new device are already known. Nothing is easier than to say, after the event, that the thing was obvious and involved no invention."
And in the same case Lord Macmillan said, at p. 143:
"It might be said ex post facto of many useful and meritorious inventions that they are obvious. So they are, after they have been invented."
At p. 44:
"It is clearly established that the practical utility and commercial success of an invention may be a material factor in determining whether the new result produced by its was obvious or involved inventive ingenuity. Commercial success by itself, without the solution of a problem, is not sufficient to establish subject matter: vide Longbottom v. Shaw (1891), 8 R.P.C. 333 at 336; Heginbotham Brothers, Ltd. et al. v. Burne (1939), 56 R.P.C. 399 at 413. But where there is evidence of a problem and a solution of it then commercial success is strong evidence of invention. That was effected of the statement of Tomlin J., in Samuel Parkes & Co. Ltd. v. Cockre Brothers Ltd. (1929), 46 R.P.C. 241 at 248:
"Nobody, however, has told me and I do not suppose anybody ever will tell me, what is the precise characteristic or quality the presence of which distinguishes invention from a workshop improvement.... The user of this particular clip has been large. Over 1¼ millions were sold up to the end of 1927. The Railway Companies have adopted it as standard, and to that extent it has beaten its competitors out of the field. The truth is that, when once it had been found, as I find here, that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is, I think, practically impossible to say that there is not present that scintilla of invention necessary to support the Patent."
This statement was quoted with approval in the House of Lords by Lord Russell of Killowen in Non-Drip Measure Co. Ltd. v. Stranger's, Ltd. et al (1943), 60 R.P.C. 135 at 142, where he said:
"it is always pertinent to ask, as to the article which is alleged to have been a mere workshop improvement, and to have involved no inventive step, has it been a commercial success? Has it supplied a want?"
Then at p. 143, after citing the statement of Tomlin J. as apposite, he went on:
"As to the commercial success of the Plaintiff's patent there can, in my opinion, be no doubt. In 1935, 430 measures were sold; in 1936; 7,996; in 1937, 16,700 and in 1938, 18,400. In the war years the sale naturally fell off, but the success of the machine was immediate and great. That there was a need for such a machine was clear from the defects in those already on the market. Nor should it be forgotten that as far back as the year 1908 Newland was trying to solve the problem of producing a machine which would deliver measured quantities of liquid without requiring one hand of the operator to be left free to operate the valve. He failed to produce a practical or marketable machine. It was not until some 27 years have elapsed that the successful machine is forthcoming which achieves the object at which Newland aimed. My Lords, if during that long period it only required a workman to be told to adapt Newland to upward pressure, for him to produce a machine as claimed in the Plaintiff's patent, it is hard to understand why the production was so long delayed. There can, I think, be only one explanation, and it is that before such a machine could be produced an inventive step had to be taken, and that those who took out the Plaintiff's patent were the first to take it"
Counsel for the plaintiff submitted that the present case fell outside the ambit of the principles laid down in these cases. His argument was that the commercial success of the 2-point Numout mounting was due to factors extraneous to the invention, such as extensive advertising and the inducement of high profits held out to the dispensers of the mountings; that there was no evidence of any problem or long-felt want; and that if there was any such problem or want there was no evidence that it had been solved or met by the alleged invention.
I am not able to agree. There is no evidence of any unusual or excessive advertising. The defendant's mounting was advertised by the American Optical Company and by individual licensees and, no doubt, a large amount of money was spent in promoting sales, but there is nothing to show that there was any unusually extensive promotional campaign."
At p. 46:
"But while advertising, the inducement of large profits to dispensers and the wide licensing of them account for some of the commercial success they cannot account for all of it...
It is, I think, reasonable to say that a substantial part of the commercial success of the mounting was due to the fact that it had succeeded in overcoming the disadvantages of the heavy rate of breakage and the tendency to loosening of lenses to which rimless spectacles were subject without sacrificing their advantages and had thus given satisfaction to its users who by the end of 1946 numbered over 20 million."
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