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Unit 5 – Patents Notes

LPC Law Notes > International Intellectual Property Notes

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A more recent version of these Unit 5 – Patents notes – written by Cambridge And Oxilp And College Of Law students – is available here.

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Unit 5 - Consolidation IP PATENTS What is protected?
What benefit is there?
How is it obtained?
How long does it last?
What owner must do?

New invention (even if TP comes up with something independently they are sill infringing) Monopoly right Registration 20 years from application Disclose how invention works on patent reg

? A monopoly right granted by the Government to protect inventions under the Patents Act 1977 (PA77)
? If granted, inventor gets monopoly over his invention for (generally) 20 years
? Details of the invention go onto a public register at the Intellectual Property Office, so a patented invention cannot be kept secret
? After 20 years, the invention is available for anyone to use

What is it?

OUTCOME 1 - Evaluate whether a clients invention is patentable OUTCOME 2 - Criteria for patentability in multiple jurisdictions Obtaining a patent

Conditions required for invention to be patentable

1. New

First to file not first to invent
- In the UK patents obtained by: a) applying to UK IP office b) applying to the European patent office under Euro patent convention EPC o Not a true EU patent, awards a bundle of national patents for sig countries but high cost c) Via international app under Patent Coop Treaty 1970 (PCT) d) Applying to the European patent office for a Unitary patent (when the Unified patent court is set up) o Will be a single patent with validity in all EU MS (except Italy and Spain) A invention will be patentable if is satisfies four conditions:

1. Be new

2. Constitute an inventive step

3. Be capable of industrial application

4. Not be within any exclusions s.1(1)(a)
- Invention is not new if it forms part of the state of the art - s.2(1)
- The state of the art comprises all matter which at any time before priority date is available to the public (whether in UK or elsewhere) by written/ oral description, by use in any other way s.2(2)
- Art 54(2) EPC - The essential question is: Is this subject of the patent application new information, or can we find the information in an existing source?
The information sources utilised would be: a) Other granted patents, published applications (national/international) b) Published descriptions of relevant technology (scientific journals, PhD theses) c) Existing products/processes in the public domain
? Factual investigation undertaken by the IPO in its initial examination Interrelationship between novelty and exclusion of patentability for discoveries s.1(2)(a)
- Sometimes using radically different dosages of drugs leads to different effects, is this patentable? EPC and national courts say yes, a claim directed to the practical application of the technical effect of a discovery may very well be patentable, distinct from trying to patent the discovery itself Has the invention been disclosed to the public before the date of filing of the app (priority date)?


2. Inventive step

3. Capable of industrial application

Only treated as disclosed if there is an enabling disclosure (ED) - a disclosure that would enable somebody to make the product or work the process, in which case the app would fail E.g. to be an ED a report would have to describe the process in a way that would allow others to reproduce it (newspaper unlikely to do so)

When do ED's arrive?
- For product patents on disclosure of the product (especially where there is already a product on the Markey which discloses the invention)
- Could arise from TP product where TP thought of the idea first
- Self publication - where applicant markets/exhibits the product before filing date
- Synthon v Smithklein Beecham 2006 - ED where C disclosed novelty of invention in earlier patent application which was abandoned
- Van Der Nely 1963- newspaper printed photo disclosed novelty of invention
- Product may not disclose the invention. May be possible to disclose the existence of the product without showing how the process works o Quantel v Spaceward 1990 - demonstration of a visual effects computer not sufficient to constitute an ED s.1(1)(b)
- 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 s.3 Invention needs to be a quantum leap over existing technology (i.e. shows thinking that has not been seen before) Key question: is the invention obvious to the 'unimaginative technician' who is skilled in the art, taking into account the state of the art at the priority date?
- Amersham Pharmacia Biotech v Amicon 2001 - prior art being used to strike out a patent has to be highly relevant to patent in question, rather than just anything, anywhere that happens to cover same matter
- Windsurfing International v Tabur Marine 1985 - four stage test:

1. identify the inventive concept

2. assume the mantle of skilled yet unimaginative man and tell him the state of the art

3. identify difference between state of art and invention

4. man decides whether it is obvious or constitutes an invention First, identify what the invention adds to the state of the art. If this new bit is not obvious to the uninventive technician then you have an inventive step
- Generics v Lundbeck 2008 - patent may success, where the product is the invention, if the manufacturing process was the only inventive step - the inventive step taken was in being able to make, for the first time, that new product even if the manufacturing process had been used to make many earlier different products
- Williams v Nye 1890 - combination of two existing machines is not an inventive step
- IDA v Southampton University 2006 - similar designs only distinguishable because inventor had used a new and different material
= inventive step
- Commercial success of the product = good indicator of patent having inventive step
- So is plugging a gap in the market. If it was such an obvious step from existing technology, why had no one before the patentee done it before?
It must be possible to make the product/carry out the process s.4 - can be made or used in any kind of industry, including agriculture
- Also taken care of by exclusions in s.1(2) and (3) see below
- Rex v Arkwright 1785 - temptation to avoid disclosing too much detail which may cause objections based on insufficiency s.72(1)(c)
- Duckett v Patent Office 2005 - objections that the device cannot be built or may not work at all (perpetual motion device)
- Mechanical arrangements (linking generator with battery) would fail for

4. Not be within any of the exclusions

- May also cause objections on ground of added material i.e. where the details extend beyond that disclosed in the filed app for patent s.72(1)(d) s.1(2)(a) - discoveries of a natural phenomena, these have not been invented by any human so not patentable o Also excludes methods of doing things, e.g. Citibank v Comptroller of General Patents 2006 - computerised method of checking data not excluded as a business method within s.1(2)(c), but was excluded as a mathematical method by s.1(2)(a) o In the US, judicial interpretation of patent law excludes natural phenomena from being patentable s.1(2)(b) deals with aesthetic creations which are protected by another IP right (copyright) s.1(2)(c) deals with mental acts, it is not possible to tell if someone is performing the act in question s.1(3) would be contrary to public policy or morality Where is the borderline between non-patentable method and patentable technical contribution to a known art?
- Aerotel v Telco Holdings; Macrossan's 2006 - Methodology for assembling docs for a company formation was excluded methodology; other appeal successful as it involved new physical combination of hardware items, comprising technical contribution - patentable
- Computer programme are in theory excluded by s.1(2)(c) but they can be patented if they have technical effect (e.g. practical application) o Vicom's application 1987 - CAD program patentable o Must bring about some effect or consequence, where the consequence, separate from the program, is new and brings an inventive step o IBM/Computer Programs 1999 - technical effect requirement = to be patentable, the application had to go beyond the mere routine operation of a computer Aerotel v Telco Holdings Macrossans 2006 - approach for dealing with s.1(2) exclusions: a) properly construe the claim b) Identify the actual contribution to the known art c) Ask whether it falls solely within the excluded subject matter (excluded if it does) d) Check whether the actual/alleged contribution is actually technical in nature (excluded if it does not) s.1(2)(d) deals with presentation of information o Could not construe an invention in itself, but a mechanism or a process of presentation could be patented o Genetic engineering inventions are patentable o Producing new varieties of plants patentable o No such exclusion in the US
- Diamond v Chakrabarty - US supreme court: anything under the sun apart from a human being should be regarded as patentable Directive 98/44/EC - amended PA77 ? legal protection of biotechnological inventions

Patents in the US

Patent specification

? Two types: utility patents (similar to patents in other jurisdictions); design patents (protect ornamental design of an article, similar to design right)
? Patent grant presumptive in the US - the burden is on the Patent Office to prove why a patent should not be granted Required docs:

1. a doc asking for patent to be granted

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