-
Misc
-
TR
-
Charles Dickens
- Patent
- Ld Oliver's opinion in Re Asahi's Patent (1991)
- Eli Lilly (genome)
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Arguments
-
pro
- natural rights - labour
- incentive to disclose new technology
- incentive to produce new inventions
- links research and commerce
- good for advertising
-
Patents v confidentiality
-
patents
-
pro
- wide protection
- monopoly
- form or property
-
contra
- publication
- only 20y
- territorial
- cost to obtain a patent
- disclosure can ruin novelty
- ever higher fees
- implied right when selling a product
-
condifentiality
-
pro
- unlimited time
-
contra
- how much people in business must know?
How difficult to suppress?
- not if easy to reverse-engineer
- not if m.b. independent invention
- patent is better for marketing
- patent is easier to licence
-
Systems
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PCT
-
single application, then international search and preliminary examination, then bundle of national applications
- harmonizes national procedures for grant
- good if national office cannot carry out examination
-
EPC
---
(Council of Europe)
- centralised European patent (EPO in Munich)
- m.b. central challenge
-
EU Patent
- in development
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Biotechnology Directive
- requires MSs to protect biotech inventions
-
patentability
- patentable even if concerns a product consisting of a biological material
- patentable even if procedure produces biological material
- isolated bio material is patentable even if occurs in nature
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Registration
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application
-
specification
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abstract
- functions
- search tool
- alerts competitors
- description
-
claims
- content
- preamble
- characterizing portion
- functions
- demarcates monopoly
- to compare with prior art
- compare with the alleged infringement
- drawings
-
must be sufficient
- explain how it works, not why
-
procedures
-
search
- identify documents for substantive examination
-
prelimnary examination
- formal documents
-
substantive examination
- novel and inventive step
-
amendment
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at discretion of the court
- deny if not innocent
-
grant
---
s 18(4)
-
20 y
- annual fees from 5th y
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Skilled addressee
-
role
- construe claims
- determine novelty
- determine inventive step
- description sufficient?
- impermissible amendment?
- infringement?
-
characteristics
-
depends on field
-
mechanical patents
- graduate engineer with practical experience
-
genetic engineering
- team of postdoctoral researches experienced in recombinant DNA
-
hand-held devices with Internet access
- Master's degree in information technology
-
common characteristics
- read publicly available documents, knows public uses in prior art, understands all languages, never misses the obvious, no private dislikes
-
no spark of inventiveness
- BUT!
- interested in his work and wants to improve the prior art
- will try experiments which are technically worthwhile
'worthwhile to try'
- where advanced field, has time and the best available equipment, team
- different fields? - can consult other for technical help in understanding the patent
---
(toxicologist or a fish health expert would consult one the other)
- has common knowledge
BUT! must be common and general to the average person in that field of technology
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Priority
-
priority
-
earlier Convention application?
-
no
- filing date
- yes
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Infringement
-
since what moment can sue?
- after publication and before grant
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History
-
Patent
- open letter with a seal
- Statute of Monopolies 1623
- Dacy v Allin 1602
- Clothworkers of Ipswitch Case 1615
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PA 1977
-
influenced by
- Patent Co-operation Treaty
- European Patent Convention
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Community Patent Convention
- necessary for future signing of EPC
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Theory
- Exception from a general rule that monopolies are bad
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Interpretation
-
s 130(7)
- same meaning as in conventions
- same interpretation as in foreign courts
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Registration
-
Steps
-
filing the application
- sufficient disclosure
-
claims
- demarcates monopoly
- functions
- defines the invention
- purposive construction (person skilled in the art)
- determines whether the infringement has taken place
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publication
- in 18 months
- search and preliminary examination
- substantive examination
- grant
- not more than 4.5 years
- Amendments can only narrow down the application
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Duration
-
after 5 years
-
each 1 year
- up to 20 years
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Patentability
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requirements
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invention
-
EPO
- presence of technical character
- must be a physical entity or concrete product, man-made for a utilitarian purpose
-
UK
- must have made an invention
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no excluded matter
-
as such
- UK
- 'whole contents' approach
- test
- as a whole - see if achieves a technical advantages
- NOT subtract and then check
- e.g.
- NOT technical
- merely a quicker way of performing a task which has been done previously by hand or by the human mind.
Efficiency is not patentable
- EPO
- moved from VICOM
- if technical contribution is obvious
- e.g.
- technical
- method for determining pensions benefits - not patentable.
Apparatus was technical, but lacked inventive step.
-
types
- s 1(2)
- general tests
- UK
- old approach
- view as a whole, without subtraction
- technical effect
4 step test
- construe the claim
- as a whole
- identify the contribution
- substance, not form
- what the invention does
- what the inventor really added to human knowledge?
- ask whether the contribution falls within one of the excluded categories
- patentable, if physical change
- e.g.
- (new system for making telephone calls - not method of doing business - 'new physical combination of hardware')
- NOT patentable
- 'pure manipulation of data without the production of any physical or real-world effect"
- check to see whether the invention is technical
- likely to merge with 3
- technical effect must be over and above from mere loading of a program into a computer
- EPO
- any hardware approach
---
(method and apparatus claims - method no - apparatus ok)
- arguments
- contra
- merges with novelty, inventive step, industrial applicability
- pro
- still have to satisfy novelty, etc.
- test
- whether embodies any form of technology (hardware), produces a physical change in things
- issues
- rejected in Aerotel
- hardware is ok, method of using hardware is ok
- any program on a carrier is ok
---
(application for facilitating data exchange across different formats)
- physical means must be described in the application, mere possibility is not enough
---
(responding by message when email was not delivered - failed)
- elements
- scheme, rule or method for performing a mental act
- discovery
- NOT discovery
- process which allows to isolate a substance found in nature
- isolated natural substance, if can be characterised by structure or by process to obtain
---
(natural substance - to relax uterus is ok)
- discovery
- substance in nature
- e.g.
- NOT discovery
- kits to identify Hepatitis C were patentable.
Although identification of Hepatitis C was discovery
- programs
- EPO
- computer program
- set of instructions as an abstract thing, m.b. on a piece of paper
- test
- any hardware approach
- UK
- computer program
- instructions on some medium which allows to execute the program (CD, etc.)
- test
- patentable if as a whole makes a technical contribution to the art
---
(device for monitoring computer components - ok)
- if produces additional technical effects going beyond physical interaction between hardware and software
---
(information in one window altered if that window obscured by another window)
- test
- is there an invention (something tangible)
- is it new, inventive, industrial application?
- e.g.
- NOT patentable
- ROM with a program is not distinguishable from the program itself
- allowed to produce digital models of hybrid chemicals - merely faster
- methods of doing business
- UK
- test
- as a whole
- e.g.
- NOT patentable
- (automatic share-trading system operated by a PC program)
- EPO
- test
- any hardware
- e.g.
- patentable
- patentable because related to the way the components of the system interacted - technical rather than business problem
- presentation of information
- UK
- test
- distinguish between ordinary (cognitive) inf and special (functional - m.b. patentable) inf
- cognitive
- directed to the presentation of inf per se
- functional
- e.g. interaction between the machines
- e.g. snow on a TV screen
- EPO
- test
- any hardware
- methods for performing a mental act
- UK
- test
- method if covers arrival at a particular result by the exercise of rational process alone
- types
- text editing
- patentable
- technical, not merely linguistic
---
(method for transforming printer control items in documents from one format to another)
- NOT patentable
- only relates to the internal, linguistic elements
---
(program identified linguistic expressions that were difficult to understand - not pat - straightforward application of conventional techniques)
- expert systems
- NOT patentable
- automation of operations that could otherwise be performed by humans.
Even if the invention could not be carried out by the unaided human mind
- EPO
- test
- any hardware
- e.g.
- patentable
- (matching the tastes of the public to the design of perfumes - presented odours with a visual - ok)
- problems
- have to pass judgment over complex and rapidly changing technologies
- power struggle between the EU and EPO
- USA patents non-technical business methods
- contrary to public policy
- test
- PERFORMING of the invention contravenes ordre public
- EPO
- test
- opposing party must prove conclusively and with objective scientific evidence that the patent will cause harm
- must be shown that an overwhelming majority of people find such an activity abhorrent
- excluded
- cloning humans
- modifying the germ line genetic identity of human beings
- human embryos for industrial or commercial purposes
- process for modifying genetic identity of animals likely to cause them suffering without any substantial medical benefit to human or animal
- utilitarian balancing test
- e.g.
- patentable
- Relaxin
- poll evidence m.b. doubtful, permission in some contracting states will not automatically influence
- animal varieties
- issues
- depends on wording
- genetically engineered mouse is not an animal variety - patentable
- plant varieties
- EPO
- issues
- hybrid plants and their seeds are not plant variety
- essentially biological processes
- EPO
- test
- whether relate to human, technical intervention or traditional cross-breeding methods
- even if single artificial element - not essentially bio
- issues
- death or destruction of animals or plants - pat
- BUT!
- micro-biological processes are patentable
- test
- not visible to the human eye.
Also development of new micro-organisms.
Judged as a whole, not enough if only one step is micro.
- methods of treatment
- test
- any non-significant intentional physical of psychic intervention performed directly or indirectly by one human being on another using means of medical science
- either
- surgery
- test
- UK
- depends on the nature of intervention - rather than the purpose
- rejected EPO approach
- EPO
- focus on purpose
- suitable for maintaining or restoring health, the physical integrity of the physical well being of a person or animal
- e.g.
- NOT excluded from patentability
- (hair-removal using optical radiation)
- tatooing
- piercing
- characteristics
- even if only one step involves surgical procedure
---
(injecting gas into heart, etc.)
- therapy
- test
- curing of a disease or malfunction of the human or animal body, includes prophylactic treatments with a view to maintaining health by preventing ill effects that would otherwise arise
- e.g.
- NOT deceases
- pregnancy
- removed lice
- diagnosis
- broad
- if includes features relating to diagnosis for curative purposes
- methods
- examination
- comparison
- identification
- deviation from the norm
- diagnosis
- only diagnosis is enough
- issues
- NOT excluded
- if only interim results
- e.g.
- taking a sample
- determining internal temperature
- issues
- not necessary by doctor or vet
- NOT excluded from patentability
- cosmetic
---
(slimming treatment)
- known substance used for the 1st time in treatment
- also second and subsequent medical uses
- BUT!
- not just for optimum dosage
- BUT!
- new dosage regime is ok if not related to a method of treatment
- use of known substances for the manufacture of a medicament or treatment
- on or in the human body.
Invasive or non-invasive.
- NOT excluded
- if method on substances that are removed from the body
- methods of technical nature
- NOT excluded
- purely intellectual
- only direct treatment is excluded
- NOT excluded
- BUT!
- m.b. excluded if functional link between between the invention and human or animal health
- e.g.
- (programming pacemaker)
-
Novelty
-
steps
- what is invention?
- what information in prior art?
- inf in prior art
- antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity for making further experiments and gaining further inf before the inf can be made useful
- issues
- m.b. by use
- (traffic lights - new infra-red detector tested in a public place - even though no evidence that anybody examined the inside of the device - skilled addressee could have deduced from observation how the device worked)
- the public
- test
- at least one member of the public who was free in law and equity to use/see
- e.g.
- novelty NOT destroyed
- (private property - through a fence)
- joint venture
- BUT!
- when large number of members - the word 'confidential' in front of the document had no effect
- no geographical limitations
- includes applications for other patents
- excluded
- inf obtained unlawfully or was disclosed in breach of confidence
- international exhibition
- interpretation
- documents interpreted as if they were being read at the date of their publication
no mosaicing
---
(NOT anticipated by old patents)
- limited ability to extend meaning beyond literal
- person skilled in the art can correct obvious mistakes
- cannot combine together different documents (no mosaicing)
- BUT!
- ok if Doc 1 leads to Doc 2
- is invention part of the state of the art?
- prior art is enough?
- would the skilled addressee be able to work the invention from disclosed inf?
- anticipation
- tests
- would the prior use infringe if carried out today?
Reverse infringement test
WILL BE APPLIED - IS IT THE TEST?! (BS - 542)
---
(Paroxetine - treat depression)
- elements
- prior disclosure
- enablement
- e.g.
- NOT enabling
- (formula for chemical compound - but no means by which compound can be produced - not enabling)
- is the claimed subject matter derivable directly and unambiguously from the (prior) publication
- does the earlier material point inevitably to the later invention?
- issues
- new purpose
- ok, new purpose of old product used in the old way can be novel
---
(earlier used as a rust inhibitor)
- instructions only sometimes/normally produce the product - NO anticipation
must be inevitable result - 99/100
- secret/inherent use
- NOT necessary anticipation
---
(drug for hay fever - previous use in clinical trials conveyed no inf - NO anticipation - bi-product created - isolated bi-product - not known previously)
- product-by-process
- process only novel if the product itself is novel.
Isolated material and process - both m.b. patentable.
New material m.b. patentable per se if can be identified without reference to the process, by which it was obtained.
- second and subsequent uses
- medical
- can be new
- not necessary Swiss-type
- non-medical
- can be new even if old product used in the old way
- BUT!
- (use of aromatic esters in deodorants - in prior art - application merely disclosed inf about an existing purpose - merely post-factum explanation)
- selection patents
- conditions
---
(although invalid in the case)
- selection was based on substantial advantage resulting from the use of selected members and
- all members of the selected class possessed the advantage in question and
- if selection in respect of a quality or character - if only peculiar to the selected group
-
old reform
- 1949 Act
- only information in UK
- inf through publication must be enabling, through use - need not
-
Inventive step
-
EPO
- test
- problem-solution approach
- solution must be non-obvious
- steps
- determine the closest prior art
- establish the problem
- can solution be derived by skilled person (obvious?)?
- arguments
- contra
- if invention broke new ground - no close prior art to formulate the problem
- based on hindsight
- rejected in UK
- BUT!
- must be implied reference to the problem
-
UK
- test
- steps
- identify the person skilled in the art and their common general knowledge
- notional interpreter equipped with the attributes, skills, background knowledge, and qualifications relevant to the field in which he works
- identify the inventive concept, bearing in mind the problem
- identify the differences between the prior art and the inventive concept
- issues
- prior art
- obscure prior art should be ignored
- mosaicing
- m.b. collocation - if combination of known elements in the invention produces a synergy
- BUT!
- if each part performs its own function - two independent inventions - must consider inventive step in each separately
- m.b. not if not a closely related field
---
(pencil sharpeners + saving boxes - PSiA would not have used solution from saving boxes - too different)
- factors
- the age of documents
- the role of references in linking one document to others
- the proximity of fields from which the prior art comes
- the amount of effort or analysis required in identifying the relevant features in the prior art
- the ubiquity of some documents in the field such that they form part of common knowledge
- prejudices
- person skilled in the art may put greater emphasis on certain types of inf.
- decide whether those differences, viewed without knowledge of the invention would have been obvious to the skilled man
- issues
- PSiA can use common general knowledge
- in itself
- for mosaicing
- subsidiary arguments about inventive step
- should be considered carefully
- length of time taken to develop the invention
---
(6 years to develop the next gen. antibiotic)
- BUT!
- NOT if merely question of throwing time and money at the problem
- long-felt want
- must be interest in developing the field
- commercial success
- BUT!
- m.b. other factors
- extent of choice in inventive process
- m.b. research if one-way street, no risk or uncertainty
- PSiA will try all avenues with good prospects of result
- cost and resources do not matter
- not necessary 100% prospect of success
- enough if deems likelihood of success as sufficient to warrant actual trial
- even if there a lot of routes
- combining is not enough, unless synergy
---
(sausage machine - cutting + filling)
- arguments
- contra
- hindsight
- unnecessarily artificial
- inappropriate for innovations which satisfy latent needs
-
capable of industrial application
-
test
- 'useful'
- used in any kind of industry, for profit or not
- BUT!
- application of a contraceptive composition to the cervix denied
Private and personal activity
- criticised in Bently and Sherman
-
e.g.
- NO industrial application
- speculative
---
(protein identified using bioinformatics - no clear application - no clear idea - included every possibility)