Folding Attic Stairs Ltd v The Loft Stairs Company Ltd [2009] EWHC 1221 (Pat) 9 June 2009. In upholding the validity of a patent for folding attic stairs, Mr Peter Prescott QC considered whether disclosure of a prototype to a non-skilled observer, who did not know what he was looking at, would destroy the novelty of the invention.

BACKGROUND

The patent in suit related to the construction of attic stairs intended for occasional use, which was pivotally mounted on the sides of the loft ope, and folded for storage behind the loft hatch. (“Ope”, meaning an aperture or opening in the structure of a building”.) The structural frame to which the ladder is mounted must be attached to the ceiling joists either side of the loft ope.

A problem arises out of the fact that ceiling joists are not a fixed width apart. Traditionally, this problem was solved by means of metal arms, which formed the pivotal mounting for the attic stairs, and which were attached to angle-brackets to form the appropriate angle to fit the requisite size of ope. However, the metal arms were prone to failure and it is this problem that Mr Burke, who was running a business, Folding Attic Stairs Ltd, decided to address. He managed this by pivoting the ends of the metal support arms to the long sides of an inner frame, instead of angled brackets attached to the sides of the ladder.

Some time later, Mr Burke realised that the inner frame could then be manufactured to fit the relevant ceiling ope and applied for a patent for the manufacturing process of his folding staircase.

Prior to the application for a patent, Mr Burke wished to publicise the fact that he had achieved his ISO accreditation, so he invited the Irish Minister for Trade and Tourism and a photographer from the Irish Times to attend his factory. The prototype for the new staircase was set up in the factory and the photographer, without knowing what it was, decided that the prototype made an artistic backdrop for a photograph of Mr Burke, and this picture was published in the Irish Times.

DISPUTE

The Loft Stairs Company began to market a competing product and Folding Attic Stairs sued for infringement of its patent. Loft Stairs challenged the validity of the patent, on the basis that the visit by the Minister and the photographer and the publication of the photograph of the prototype destroyed the novelty in the invention.

DECISION

Mr Prescott held that the novelty in the invention was not destroyed by the publication in the Irish Times of the photograph of Mr Burke in front of the test staircase, because the relevant parts of the staircase were not visible in the photograph. He found no evidence that the Minister and the photographer inspected the prototype and that it seemed unlikely on the balance of probabilities that they would have had any interest or motivation to do so.Having found that the patent was valid, Mr Prescott went on to consider whether or not Loft Stairs had infringed its claims. Finding that it was infringed did not cause him much difficulty.

COMMENT

Mr Prescott said, in his judgment, that he had not found it easy to answer the question of whether novelty was destroyed by the visit to the factory of the Minister and the photographer, not least because he was aware that it cut both ways.

The decision came down to the fact that the visitors to the factory had no particular interest in folding staircases although if they had such an interest, Mr Prescott stated that he would have taken a very different view.