Patents - collocations as inventions: The House of Lords' decision in Sabaf SpA v MFI Furniture Centres Ltd

The House of Lords' decision in the Sabaf case provides guidance on the patentability of collocations (combinations of known features).

This claim for patent infringement concerned a type of burner for gas cookers and hobs.

At first instance, Justice Laddie had held that the patent was invalid, as he considered that both of the alleged inventive features were obvious in light of the prior art.

The alleged inventive features were:

1. the drawing of primary air in from above the hob unit; and



2. the use of a flow path under the flame spreader in which the "Venturi effect" would be present. (The Venturi effect is the increase in pressure that results from slowing down the stream of gas.)

According to Justice Laddie, it would have been obvious to the skilled person to:

1. use a radial Venturi to attain the desirable goal of a low hob unit for use on a work surface;



2. have an air intake which intruded into the space beneath the hob but to take the air from above.

On the basis of these findings, Justice Laddie applied what he called the "law of collocation" as formulated by Lord Tomlin in British Celanese Ltd v Courtaulds (1935) 52 RPC 171, 193:

". . . the mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of a working inter-relation brought about by the collocation of the integers."

The UK Court of Appeal, however, did not favour Justice Laddie's references to the "law of collocation".

They regarded them as an illegitimate gloss on section 3 of the Patents Act 1977 (UK) which states that an invention is to be taken to involve an inventive step if:

". . . it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art . . ..

Lord Gibson said:

"[I]t seems to us inevitable that in a case said to involve a mere collocation of two known concepts, the question is whether it will be obvious to the skilled person, using his common general knowledge, to combine those concepts."

However, the House of Lords disagreed, saying that the approach of the Court of Appeal was contrary to well-established principles both in England and at the European Patent Office.

While the Lords agreed that there is no "law of collocation" in the sense of a qualification, or gloss upon or exception to, the test for obviousness stated in section 3 of the UK Act, they said that before you can ask whether an invention involves an inventive step, you first have to decide what the invention is.

Lord Hoffmann, delivering the judgment with which the other four Lords agreed, stated:

"In particular, you have to decide whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware. A compact motor car may contain many inventions, each operating independently of each other but all designed to contribute to the overall goal of having a compact car. That does not make the car a single invention."

It is clear from the judgment, that the way to decide whether there is a single invention is to determine whether the two elements interact upon each other:

" . . . if there is synergy between them, they constitute a single invention having a combined effect and one applies section 3 to the idea of combining them. If each integer performs its own proper function independently of any of the others, then each is for the purposes of section 3 a separate invention and it has to be applied to each one separately."

On this basis, the House of Lords found that Justice Laddie had correctly applied the relevant legal principles and that the patent was indeed invalid.

We anticipate that this decision will be followed in New Zealand, particularly as it is consistent with current practice in this area.

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