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Law Notes Intellectual Property Law Notes

Patent Law Patentability Notes

Updated Patent Law Patentability Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 1014 pages

IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).

These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property Law Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Requirements for a patentable invention

Novelty

  • For an invention to be patentable it must be new

    • PA s1(1)(a)

    • EPC 2000 Art 52(1)

  • An invention is not new if it does not form part of the “state of the art” (PA s2(1), EPC Art 54(1))

  • State of the art – broadly framed – includes all matter that is available anywhere in the world before the priority date of the invention

  • Where an invention is disclosed or “anticipated” by the state of the art, a patent will not be granted, or, if it has been granted, the parent is liable to be revoked

Novelty v inventive step

  • Novelty requires that the invention be “qualitatively different” from what has previously been disclosed – that the technical information disclosed by the patent is not already available to the public

  • Novelty is diff to the requirement that the invention must have involved an “inventive step” – this is a qualitative examination of whether the contribution is creative enough to warrant a monopoly

Why do we have novelty?

  • Novelty ensures that patents are not used to stop people from doing what they had already done before the patent was granted

    • This “right to work” argument has been modified as a result of how novelty is determined

  • Overall rationale for the grant of patents is supported by novelty – that the public is willing to pay the costs of patenting if and only if they are able to get access to information that would not otherwise have been available to them

    • Contract analogy – novelty provides the consideration necessary to warrant the patent being granted in the first place

  • Britain’s entry into the EPC introduced some changes in the way the novelty requirement is applied in the UK

    • The 1977 Act and EPC operate on the principle of “objective novelty” so as to avoid subjective judgments that lead to uncertainty

    • Both British and European law have adopted the principle of “absolute novelty” – meaning that the novelty of an invention is judged against all the information which is available at the priority date of the invention, irrespective of where the info was released or the form that it was released in

      • Criticised – allowing obscure materials to anticipate – harsh results

      • BUT absolute novelty – provides a “bright line” test thus “avoiding subjectivity and most questions of degree” - Milliken Denmark AS [1996]

The task of determining whether an invention is novel

  • What is the invention?

  • What information is disclosed by the prior art?

  • In light of the above, is the invention novel/ is the invention part of the state of the art?

What is an invention?

  • This Q has received little attention

What information is disclosed by the prior art?

  • What material forms part of the state of the art?

  • State of the art defined in broad and inclusive terms to include all matter (products, process, information) which, at the priority date of the application, has been made available to the public by written or oral description, by use or in any other way – PA s2(2), EPC Art 54(2)

  • No geographical limits on where the state of the art must be disclosed – info that is available anywhere in the world

  • No restrictions on the mode of disclosure – info part of the state of the art irrespective of how it is made available to the public

  • No requirements on how widely the info must be published – a single copy of a document is sufficient

  • Material is part of the state of the art if it is capable of being accessed – no need to demonstrate a person actually had access to the info, only that if they wanted to, they could have

  • The date at which novelty is assessed = the priority date of the invention – state of the art only includes info made available before this date

    • In contrast with other patent regimes, applicants for UK and European patents are not provided with a “grace period” – a period prior to filing where they are able to practice their inventions

    • Consequently, patents are frequently anticipated and rendered invalid for want of novelty as a result of the applicant’s own acts and disclosures

    • Priority date is therefore important because it is the date from when inventors are able to exploit their inventions without jeopardising potential patents

    • NOTE - US used to require novelty at the date of invention not the date of application

      • Leahy-Smith America Invents Act 2011 adopted the date of application

      • BUT US still have a “grace period” – during which a scientist can disclose his invention without depriving a later patent application of novelty

      • America Invents Act 2011 – 102(2)

        • 2) EXCEPTIONS.—‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

        • (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

      • SO the invention will not enter into the state of the art by virtue of your own disclosure

      • Benefits of this – the fact that scientists don’t have to keep their inventions secret allows for more scientific discussion

      • The Manchester Manifesto: Who owns science? – “Restrictions on access to information at any stage of the innovative process obstruct the flow of scientific information and thereby impede scientific progress”

  • Material obtained unlawfully or disclosed into the public as a breach of confidence is not taken into account

  • Info is also excluded from the state of the art where the disclosure was sue to the inventor displaying the invention at an “international exhibition”

  • BUT these exclusions only apply to disclosures that are made in the 6-month period immediately preceding the date of filing

What info is disclosed by the prior art?

  • The info disclosed by the prior art is restricted to the info that a person skilled in the art is able to derive form the prior art in Q

  • Documents

    • Documents are interpreted...

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