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LPC Law Notes Intellectual Property Law Notes

Patents Notes

Updated Patents Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 524 pages

A collection of the best Intellectual Property notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor". In short these are what we believe to be the strongest set of Intellectual Property notes available in the UK this year. This collection is fully updated...

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:

Patents

  • 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:

    1. Invention is new (can’t patent something that already exists)

    2. Involves an inventive step (not going to emerge as a natural consequence)

    3. 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:

    • 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. 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

    2. A literary, dramatic, musical or artistic work or other aesthetic creation

      • The main reason is it does not create a technical contribution copyright

    3. 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

    4. 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)

    1. 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:

    1. Properly construe the claim (method, process, product etc.)

    2. Identify the actual contribution

    3. Ask whether it falls solely within the excluded subject matter

    4. 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...

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