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Combination of Small Steps Provides Patent Validity

Air travellers will be familiar with the X-ray scanners used as part of the security measures in airports, and the international market for such systems is massive.

One of the leading names in the industry is Rapiscan, whose devices are widely used in many areas of security screening.

When a competitor launched a mobile (covert) screening device, based on 'photon backscatter imaging', Rapiscan alleged that the patent the other company had been given for its system was invalid on the basis of 'obviousness'. Obviousness is the name for the situation in which the development being patented is a clear next-step application of an existing technology. Where this is the case and there is no inventive concept involved, a patent will not be valid.

The judge in the High Court held that the combination of the core X-ray technology with a relative motion sensor was certainly a non-obvious step and, when combined with the design features to enable the screening to be done covertly, the patented system was sufficiently non-obvious to justify patent protection.

The case attracted much coverage in the legal press because both sides had instructed expert witnesses and, in each case, given them a brief that would make it difficult for them not to produce a report which supported 'their side's' point of view, despite the fact that expert witnesses are bound to the court to present an unbiased opinion.

One factor that the Court regarded as evidence of the 'non-obviousness' of the application was that several years had passed between a published paper regarding the technology used and the development of the new system. The judge considered that if the development was an obvious step, it would have taken place much earlier.

For intellectual property (IP)-based businesses, the case has two lessons. The first is that a relatively small innovative step may be sufficient to enable the IP that step represents to be protected. The second is that appointing an expert should always be done in a way that allows a 'balanced' view to be taken of the probable outcome.

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