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Patents Notes

LPC Law Notes > International Intellectual Property Notes

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REGISTRATION OF A PATENT Relevant legislation: Patents Act 1977 (PA) IP RIGHTS AVAILABLE STEP 1: Is the invention new?
STATE: Under s1(1)(a), the invention must be new. It shall be taken to be new if it does not form part of the 'state of the art' (s2(1)). The 'state of the art' comprises all matter which at any time before the priority date (date of filing) is available to the public (whether in the UK or elsewhere), by written or oral description, by use or in any other way (s2(2)). According to Art.54(2) of the European Patent Convention, the essential question is whether the subject of the patent application is new information or whether it can be found in an existing source. WHY IP RIGHTS AVAILABLE?
STEP 2: Has there been an enabling disclosure (preventing novelty)?
STATE: It is necessary to consider whether the invention has been disclosed to the public before the priority date. Disclosure is only deemed to have occurred where there has been an 'enabling disclosure'. An enabling disclosure is one that would, at the priority date, enable a skilled worker to reproduce the applicant's invention from the disclosure in question, by observation or analysis. Where there has been an enabling disclosure, the patent application would fail. Examples of enabling disclosures?disclosure of the product, e.g. where the product is already on the market before the filing date a report divulging the process by which the invention works/can be reproduced self publication, e.g. where the applicant markets/exhibits the product before the filing date

In some cases, exhibiting the product may not amount to an enabling disclosure, i.e. where simply viewing the product would not provide sufficient information regarding how the invention operates. STEP 3: Is there an inventive step?
STATE: Under s1(1)(b), the invention must involve an inventive step. It shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art (s3). The invention needs to be a quantum leap over existing technology. The key question is whether the invention would be obvious to a somewhat unimaginative technician skilled in the art, taking into account the state of the art at the priority date. An 'unimaginative technician' is someone who is knowledgeable but lacking that inventive spark. Windsurfing International v Tabur Marine [1985] - 4 stage test:

1. identify the inventive concept

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