MONSANTO COMPANY (BRIGNAC'S) APPLICATION

153 [No.8) 1st July, 1971 [1971] R.P.C. IN THE ApPEAL TRIBUNAL Before: MR. JUSTICE WHITFORD 14th and 15th January and 9th March, 1971. MONSANTO COMPANY (iBRIGNAC'S) ApPLICATION 5 Patent application-Opposition-Prior publication-Whether document handed to salesmen for distribution to customers published-Prior publication establishedAppeal by applicants dismissed. Prior user-Whether manufacture without special secrecy precautions constituted prior user-Whether prior user necessitated public acquiring means of knowledge10 Prior user of product but not of process established-Appeal by opponents partly successful. A patent application related to a process for the production of nylon. having finely divided carbon black of a particular oxygen content uniformly dispersed therein, and to nylon so produced. The application contained several process claims 15 and also a ' product by process' claim appendant thereto. In opposition proceedings the opponents relied, inter alia, upon the alleged prior publication of a bulletin, some 30 or 40 copies of which had in 1957 been supplied to salesmen of the C. Co. with instructions that they could be handed out freely to any customer or potential customer who might be interested. 'The hearing officer held that this document was 20 a prior publication, and the applicants appealed from this decision to the Patents Appeal Tribunal. The opponents also relied on prior user as a ground of objection, the evidence being that nylon polymer incorporating carbon black had been manufactured, in the manner claimed, by the opponents at one of their factories without the taking of 25 special secrecy precautions, that such polymer had been supplied to B.N.S. Ltd. (a company with which the opponents were in association) for spinning into continuous filament, and that filament thus spun had been sold to the trade. It was, however, not established that anyone could have ascertained from examination of the bulk nylon or 01 the filament what was the oxygen content of the carbon black 30 used in its manufacture. Moreover, although no special precautions had been taken to keep the process secret, a mere observer passing through the factory could not have ascertained the relevant facts. The hearing officer held that in these circumstances no case of prior user had been made out, and the opponents appealed to the Patents Appeal Tribunal. Before the Tribunal the opponents were not prepared to 40 concede that they would have been content that any employee engaged in working 154 Mr. Hudson Monsanto Company (Brignac's) Application [1971] R.P.C. their process should take to some fresh employer information about the carbon blacks they were using, and asserted that there were certain aspects of their process which they did regard as secret. On the appeal and cross-appeal to the Patents Appeal Tribunal: Held, (1) that the salesmen to whom the bulletin had been handed ought on the 5 facts of the case to be considered members of the public, and there had been no fetter upon them in respect of the information contained in that bulletin. It had been put in the hands of the salesmen to make the information contained therein available to the public. Prior publication was established. Tecalemit's Application [1967] F.S.R. 387; Bristol-Myers CO.'s Application [1969] 10 R.P.C. 146; Fomento Industrial S.A. v..Mentmore Manufacturing Co. Ltd. [1956] R.P.C. 87; Humpherson v. Syer (1887) 4 R.P.C. 407 referred to. (2) That there had been prior user of the' product by process' claim, in that the nylon sold by B.N.S. Ltd. to customers had been made by the process of claim 1. It was unnecessary in these circumstances to decide whether the transaction between the 15 opponents and B.N.S. amounted to a prior use. (3) That it was not the case that there could not be prior user unless the prior use gave means of knowledge to the public, but that, on the facts disclosed in relation to the manufacture by the opponents at their factory, the Tribunal was not satisfied that the opponents' user could not be described as secret. In these circumstances the 20 attack on the process claims based on prior user failed. Carpenter v. Smith (1841) 1 W.P.C·. 541; Stahlwerk Becker A.G.'s Patent (1919) 36,R.P.C. 13; Miller's Patent (1898) 15 R.P.IC. 205; Strachan and Henshaw Ltd. v. Pakcel Ltd. (1949) 66 R.P.C. 49 considered, Wikmanshytte Bruks A.B.'s Application [1961] R.P.C. 180 disapproved. 25 This was fan appeal by Monsanto Company, applicants for letters patent No. interim decision of Mr. J. V. Hudson, 'Superintending examiner acting for the Comptroller, dated 20th October 1969, whereby he held that the invention so far as claimed in, inter alia, claims 1 and 8 'was prior published; and· by opponents, Imperial Chemical Industries Ltd., from the finding in the same decision 30 'that there was no prior user. The case is .reported on1y on 'the issues as to whether the document relied on could, irrespective of its contents, constitute a prior publication. and as to whether the acts relied on could constitute prior user. The facts so far as relevant to these issues appear sufficiently from 'the following decisions. 1,016~466, from an At the Patent, Office, Anthony Walton, instructed byF. J. Cleveland & Co., 35 appeared for the applicants, Amedee. Turner, instructed byW. Brown, appeared for ,the opponents. Mr. Hudson-The grant of' a patent is opposed on the following .grounds : (1) That the invention so far as claimed in any of claims 1 to 6 or 8 of the complete specification.Jias been published in the United Kingdom before the 40 priority date of the claim in (a) Technical Information Bulletin No. 8 of Cabot Carbon Limited of Stanlow, Cheshire (author R. I." Wood), entitled 'Pigmentation of Synthetic Fibres' and dated 13th September 1957. 155 [No.8] Comptroller General Mr. Hudson (b) Pages 82 and 83 of Modern Plastics for April 1960. (c) Pages 56 to 59 of Applied Plastics for November 1961. (d) Pages 258 and 259 of the 1st Supplementary Volume and pages 651 and 5 652 of Volume 10 of Kirk-Othmer's 'Encyclopedia of Chemical Technology'. (2) That the invention, so far as claimed in any of claims 1, 3, 4, 5 and 8 of the complete specification, was used in the United Kingdom before the priority date of the claim by Imperial Chemical Industries Limited at their works at Huddersfield during June 1959 and at various subsequent dates. 10 (3) That the invention, so far as claimed in claim 2 of the complete specification, was used in the United Kingdom before the priority date of that claim by Imperial Chemical Industries Limited at their works at Huddersfield and by British Nylon Spinners Limited at their works at Pontypool during June 1959 and at various subsequent dates. 15 (4) That the invention, so far as claimed in every claim of the complete 20 specification, is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (1), (...truncated)