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Patents Confidentiality Notes

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Patents Confidentiality Revision

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PATENT & CONFIDENTIAL INFORMATION Relevant legislation: Patents Act 1977 (PA) INTRODUCTION - IP RIGHTS AVAILABLE STATE: The invention is potentially protectable by a patent and also confidentiality, which may protect it from disclosure by employees. The client would have a choice of either protecting the invention through the monopoly offered by a patent (at the cost of disclosing the invention) or the potentially open-ended protection offered to a trade secret. The invention cannot attract the protection of both. WHY IP RIGHTS AVAILABLE - PATENT?
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)). 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:

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