We are in luck, Donald! – unusual prior art finds

Helen Christie | December 2019

The world of patent prosecution may be to a large extent about trawling through long technical documents. Sometimes, however, these references can come from more obscure and light-hearted sources.

The process leading up to grant often involves at least some back and forth with the patent office in whichever jurisdiction protection is desired. One aim of this correspondence is to reach an agreement regarding the scope of the claims on file and whether any prior art of note falls within this scope, the term prior art referring to any earlier disclosure of the invention. The prior art discussed is usually comprised of several patents or technical documents which can take time and effort to decipher, however there is no such restriction in law about what can constitute a disclosure. The famous example given to patent attorneys-in-training is that of a dusty book in the very back of a library which has never been read (perhaps a local library on the periphery of some out of the way Scottish village). The book is nevertheless there in the library and available to someone with the wherewithal and the intent to find it. 

The test used in the UK to analyse whether the subject matter of a set of claims is inventive arose from a court battle in 1985 between Windsurfing International Inc. and Tabur Marine. In this case the decisive piece of prior art was the use of a sailboard fashioned by a 12 year old boy from a wooden board. The boy who, incidentally, is now hailed as “the godfather of windsurfing” had used the board on a beach next to a caravan site near Hayling Island one summer. The fact that a passing holiday maker would have been able to see the boy on his board meant that its use was considered to be a disclosure relevant in deciding the novelty and inventive step of the patent at issue. 

Some of the more wacky inventions for which patent applications are filed also seem to have made appearances in comic strips over the years. Donald duck, in a strip dating from 1949 (shown below) and along with his young nephew, attempted to raise a shipwreck by filling it through a tube with ping pong balls. The “toil pays off” for Donald and the huge ship creaks its way out of the mud and begins to rise to the surface. A patent was later filed for a similar method (see figure 1 of the application below). Legend has it that the Donald duck strip was the reason that the patent was refused by the Dutch patent office. 

“The Beano, No. 2015 page 1” is actually cited as prior art on the front page of a UK patent application describing a type of doorbell for pets. The device itself is extremely simple and works when the animal depresses a panel located at the bottom of a door causing an alarm to be sounded. Although the examiner did cite the below edition of the Beano as prior art the patent eventually granted, so there was clearly found to be some distinction (possibly that the device is not “movably attachable” to a door front as the patent claims require).

The take home message here is that it pays to be aware, for both patentee and opponent, that there are other sources of prior art aside from patent databases which on occasion can prove fruitful, or problematic, depending on your position.