eCigarette patent goes up in smoke 

Nicocigs has successfully claimed that Fontem’s eCigarette patent is invalid for added matter, obviousness and lack of novelty.

In Nicocigs v Fontem Holdings, eCigarette supplier Nicocigs brought a patent invalidity claim brought against Fontem. They argued that Fontem’s eCigarette patent was invalid. Among other grounds, it lacked novelty. The High Court ruled in Nicocigs’ favour, and held that Fontem’s patent was invalid. If Fontem’s patent had been valid, Nicocigs’ eCigarettes supply activities would have been infringing it.

When assessing the validity of Fontem’s eCigarette patent, the court considered whether the added matter in the application provided new teaching to the ‘skilled person’. They referred to the case of Napp Pharmaceutical v Ratiopharm (2009). They confirmed that, if added matter did not provide any new teaching, a claim can be broadened without invalidating a patent. However, new teaching will invalidate a patent.

The court applied a test from Richardson-Vicks Patent. They looked at “whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the un-amended specification”.

Although highly fact-specific, this ruling gives an interesting insight into patent invalidity proceedings. It provides a useful reminder about how the courts assess the rules for revocation because of a patent failing on the grounds of added matter, novelty and obviousness.