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Patents Notes

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Chapter 23


Objective: protect inventions. Section 30: it is a type of personal property
An invention is a new and inventive solution to a technical problem
The patent gives a right of exclusivity in exchange for full disclosure
Technical contribution presupposes human intervention. Must cause a technical effect meaning producing real-world change in state, operation, or function of something tangible
What about the finding of penicillin where he had stumbled on the invention by accident?
Found that yes of course it is still a technical contribution even if it was not the purpose.

Duration: 20 years from filing date (non-renewable)

Why grant patents?
 Natural rights (ethical/ moral obligation)
 Incentive to invent/ invest (monopoly lure - can profit from creation in next 20 years, and internalize the market value of the invention)
 Patent bargain: reward for information disclosure
 Encourage technology transfer through creation of a database kept by the
Patent Office
Main Statute: Patents Act 1977
Section 1 lists the criteria:
a. Invention is new (can't patent something that already exists)
b. Involves an inventive step (not going to emerge as a natural consequence)
c. Capable of industrial application

1(2) There are some areas where the incentive does not apply or where monopoly does not work -
Excluded Fields (see below non-patentable SM)

TRIPS Agreement established a minimum standard of protection. Patents were required to be able for any inventions in all fields of technology and the minimum standards are the same ones set out in section 1 Patents Act 1977
S7(2) - the owner is entitled to apply for the grant of the patent (see ownership chapter)
Patent Application - see it as a procedural hurdle: 'first to file' system  creating priority date
Section 14(2) of Patents Act 1977, application for a patent shall contain:
o A request for the grant of a patent

A specification containing description of invention, a claim and any drawing referred to in the description of any claim

An abstract (Norbook: need sufficient detail)
Section 14 (3) - specification in application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art
Around 18 months to examine and then publish patent. Around 6 months (maximum 36 months) given after publication of patent for any objections before granting. This time all eats into the 20 years monopoly protection. s15 - send outline application for earlier priority date

Non-patentable SM (Exclusions)

Section 1(2) PA 1977, Article 52(2) EPC subjects that cannot be patented are:
1 Chapter 23

a. A discovery, scientific theory or mathematical method
 Exception: biological material which is isolated from its natural environment or produced by means of a technical process - even if occurred prev. in nature
 Cannot patent something like Newton's law of motions but can patent a particular application of it
 Mathematical measures, like 1+1 do not give a technical result. Exception with T
208/84, where binary system of communication with humans based on math b. A literary, dramatic, musical or artistic work or other aesthetic creation
 The main reason is it does not create a technical contribution  copyright c. A scheme, rule or method for performing a mental act, playing a game or doing business
 Fujitsu - came up with a computer programme where one can create synthetic crystals. Easier way to play the game, a mental act but is not a technical effect.
Have to find a mental act that goes beyond human capacity. E.g. method for rotating and manipulating graphic images on screen with high precision;
methods for creating documents compatible with different word processors
 Merrill Lynch - automatic trading platform. Contribution of business method are non-patentable. Other such business methods that are non-patentable: method for ordering food online; computerized method for purchasing ringtones per sms; payment method per online vouchers
 Gale - computer program calculating square roots not patentable even though the claim contained technical elements (hardware)
 Macrossan - do not want to block the carrying out of mental acts that can be carried out by humans
 Automated Auction - any hardware cannot be patented. Wanted to patent a computerized auction method. Inventive step must relate d. A program/ software for a computer (more and more found to be patentable)
 At&T - need five signposts to be able to patent computer implemented inventions:

1. Technical effect carried outside the computer (IBM - more than mere routine operation of a computer)

2. Technical operating at level of computer architecture

3. Technical effect result in computer operating in new way

4. Invention increasing speed, reliability of CPU/ other device

5. If invention overcome identified technical problem

6. ( plus normal restrictions: New and innovative)
e. The presentation of information
 Crawford v Jones - a display system for buses, where the objective of invention to prevent 'bus bunching', where buses arrive in groups rather than regular intervals. Indicate to driver and customer that next bus is empty and will come soon. Solves technical problem through technical solution so was patentable!
Aerotel v Telco - dealt with a method for making a telephone call from any available station using a prepaid code. Created the Aerotel test for non-patentable subject matter. Need to:
a. Properly construe the claim (method, process, product etc.)
b. Identify the actual contribution 2 Chapter 23

c. Ask whether it falls solely within the excluded subject matter d. Check whether the actual or alleged contribution is actually technical in nature
(producing a technical effect - instead of circumventing it).
 See Lantana - computers have constant internet connection so that you can access certain files from home on a work computer. However, process was not actually a technical solution to the problem.
Section 1(3) requires a moral provision: 'whether or not exploitation of the invention in question would be contrary to moral or public order'
Why these things? Concerns arising from mixing human and animal species; perceived denigration of human dignity; using women's eggs for commercial purpose; possible ownership of humans. Have to look at future exploitation.
For a long time, thought that IP patent courts should be solely a technical forum that does not consider moral values. More and more, found moral principles are important in the overall assessment of patentability.
Schedule A2, of PA 1977 includes these inventions as being:
o Processes for cloning humans (concerns of eugenics: controlled breeding to increase desirable traits)
o Modifying germ line genetic identity of human beings

Using human embryos for industrial or commercial purposes
 Brustle - Patent law does not stand in a moral vacuum….need to consider all consequences. However, Court wanted to ensure they were not taking a moral stance. COJ attempts to define what an embryo is, which included non-fertilized human ovum (an idea rejected in UK law - International Stem Cell Corp) as long as it is 'capable of commencing the process of development of human being'.
Wanted to protect human dignity in the shared European values. This definition is very weak and unclear - leaves too broad a scope potentially? Another concern was defining what commercial exploitation was. Found even if research did not mention destruction of human embryos, so long as there was actual such destruction there would be exploitation. Found there was a difference between research and commercial use but then this research would ultimately lead to industrial application.
 Relaxin - deals with DNA sequences of a substance to relax the uterus during childbirth. Found that DNA was a chemical substance, not 'life', the tissues were donated to the operations and that patenting does not give property rights over a human being (say if a child is born from this). Thus no moral obligations so patent was allowed

Modifying genetic identity of animals
 OncoMouse - Initially said patent was not the right forum to discuss ethical issues. Dealt with using GM mouse to find a cure for cancer. Later courts found modifications would cause suffering and have unforeseeable irreversible effects,
morality concerns arose in the publication and exploitation of publication of invention; have to look for non-animal methods first and the degree of animal suffering. Balance against utilitarian usefulness to mankind (benefit). Found cure of cancer was highly desirable and so was patentable.

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