1. Misc
    1. TR
      1. Charles Dickens
        1. Patent
      2. Ld Oliver's opinion in Re Asahi's Patent (1991)
      3. Eli Lilly (genome)
  2. Arguments
    1. pro
      1. natural rights - labour
      2. incentive to disclose new technology
      3. incentive to produce new inventions
      4. links research and commerce
      5. good for advertising
  3. Patents v confidentiality
    1. patents
      1. pro
        1. wide protection
        2. monopoly
        3. form or property
      2. contra
        1. publication
        2. only 20y
        3. territorial
        4. cost to obtain a patent
        5. disclosure can ruin novelty
        6. ever higher fees
        7. implied right when selling a product
    2. condifentiality
      1. pro
        1. unlimited time
      2. contra
        1. how much people in business must know? How difficult to suppress?
        2. not if easy to reverse-engineer
        3. not if m.b. independent invention
        4. patent is better for marketing
        5. patent is easier to licence
  4. Systems
    1. PCT
      1. single application, then international search and preliminary examination, then bundle of national applications
        1. harmonizes national procedures for grant
        2. good if national office cannot carry out examination
    2. EPC --- (Council of Europe)
      1. centralised European patent (EPO in Munich)
      2. m.b. central challenge
    3. EU Patent
      1. in development
    4. Biotechnology Directive
      1. requires MSs to protect biotech inventions
      2. patentability
        1. patentable even if concerns a product consisting of a biological material
        2. patentable even if procedure produces biological material
        3. isolated bio material is patentable even if occurs in nature
  5. Registration
    1. application
      1. specification
        1. abstract
          1. functions
          2. search tool
          3. alerts competitors
        2. description
        3. claims
          1. content
          2. preamble
          3. characterizing portion
          4. functions
          5. demarcates monopoly
          6. to compare with prior art
          7. compare with the alleged infringement
        4. drawings
      2. must be sufficient
        1. explain how it works, not why
    2. procedures
      1. search
        1. identify documents for substantive examination
      2. prelimnary examination
        1. formal documents
      3. substantive examination
        1. novel and inventive step
      4. amendment
        1. at discretion of the court
          1. deny if not innocent
    3. grant --- s 18(4)
      1. 20 y
        1. annual fees from 5th y
  6. Skilled addressee
    1. role
      1. construe claims
      2. determine novelty
      3. determine inventive step
      4. description sufficient?
      5. impermissible amendment?
      6. infringement?
    2. characteristics
      1. depends on field
        1. mechanical patents
          1. graduate engineer with practical experience
        2. genetic engineering
          1. team of postdoctoral researches experienced in recombinant DNA
        3. hand-held devices with Internet access
          1. Master's degree in information technology
      2. common characteristics
        1. read publicly available documents, knows public uses in prior art, understands all languages, never misses the obvious, no private dislikes
        2. no spark of inventiveness
          1. BUT!
          2. interested in his work and wants to improve the prior art
        3. will try experiments which are technically worthwhile 'worthwhile to try'
        4. where advanced field, has time and the best available equipment, team
        5. different fields? - can consult other for technical help in understanding the patent --- (toxicologist or a fish health expert would consult one the other)
        6. has common knowledge BUT! must be common and general to the average person in that field of technology
  7. Priority
    1. priority
      1. earlier Convention application?
        1. no
          1. filing date
        2. yes
  8. Infringement
    1. since what moment can sue?
      1. after publication and before grant
  9. History
    1. Patent
      1. open letter with a seal
    2. Statute of Monopolies 1623
    3. Dacy v Allin 1602
    4. Clothworkers of Ipswitch Case 1615
    5. PA 1977
      1. influenced by
        1. Patent Co-operation Treaty
        2. European Patent Convention
        3. Community Patent Convention
          1. necessary for future signing of EPC
  10. Theory
    1. Exception from a general rule that monopolies are bad
  11. Interpretation
    1. s 130(7)
      1. same meaning as in conventions
      2. same interpretation as in foreign courts
  12. Registration
    1. Steps
      1. filing the application
        1. sufficient disclosure
        2. claims
          1. demarcates monopoly
          2. functions
          3. defines the invention
          4. purposive construction (person skilled in the art)
          5. determines whether the infringement has taken place
      2. publication
        1. in 18 months
      3. search and preliminary examination
      4. substantive examination
      5. grant
      6. not more than 4.5 years
    2. Amendments can only narrow down the application
  13. Duration
    1. after 5 years
      1. each 1 year
        1. up to 20 years
  14. Patentability
    1. requirements
      1. invention
        1. EPO
          1. presence of technical character
          2. must be a physical entity or concrete product, man-made for a utilitarian purpose
        2. UK
          1. must have made an invention
      2. no excluded matter
        1. as such
          1. UK
          2. 'whole contents' approach
          3. test
          4. as a whole - see if achieves a technical advantages
          5. NOT subtract and then check
          6. e.g.
          7. NOT technical
          8. merely a quicker way of performing a task which has been done previously by hand or by the human mind. Efficiency is not patentable
          9. EPO
          10. moved from VICOM
          11. if technical contribution is obvious
          12. e.g.
          13. technical
          14. method for determining pensions benefits - not patentable. Apparatus was technical, but lacked inventive step.
        2. types
          1. s 1(2)
          2. general tests
          3. UK
          4. old approach
          5. view as a whole, without subtraction
          6. technical effect 4 step test
          7. construe the claim
          8. as a whole
          9. identify the contribution
          10. substance, not form
          11. what the invention does
          12. what the inventor really added to human knowledge?
          13. ask whether the contribution falls within one of the excluded categories
          14. patentable, if physical change
          15. e.g.
          16. (new system for making telephone calls - not method of doing business - 'new physical combination of hardware')
          17. NOT patentable
          18. 'pure manipulation of data without the production of any physical or real-world effect"
          19. check to see whether the invention is technical
          20. likely to merge with 3
          21. technical effect must be over and above from mere loading of a program into a computer
          22. EPO
          23. any hardware approach --- (method and apparatus claims - method no - apparatus ok)
          24. arguments
          25. contra
          26. merges with novelty, inventive step, industrial applicability
          27. pro
          28. still have to satisfy novelty, etc.
          29. test
          30. whether embodies any form of technology (hardware), produces a physical change in things
          31. issues
          32. rejected in Aerotel
          33. hardware is ok, method of using hardware is ok
          34. any program on a carrier is ok --- (application for facilitating data exchange across different formats)
          35. physical means must be described in the application, mere possibility is not enough --- (responding by message when email was not delivered - failed)
          36. elements
          37. scheme, rule or method for performing a mental act
          38. discovery
          39. NOT discovery
          40. process which allows to isolate a substance found in nature
          41. isolated natural substance, if can be characterised by structure or by process to obtain --- (natural substance - to relax uterus is ok)
          42. discovery
          43. substance in nature
          44. e.g.
          45. NOT discovery
          46. kits to identify Hepatitis C were patentable. Although identification of Hepatitis C was discovery
          47. programs
          48. EPO
          49. computer program
          50. set of instructions as an abstract thing, m.b. on a piece of paper
          51. test
          52. any hardware approach
          53. UK
          54. computer program
          55. instructions on some medium which allows to execute the program (CD, etc.)
          56. test
          57. patentable if as a whole makes a technical contribution to the art --- (device for monitoring computer components - ok)
          58. 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)
          59. test
          60. is there an invention (something tangible)
          61. is it new, inventive, industrial application?
          62. e.g.
          63. NOT patentable
          64. ROM with a program is not distinguishable from the program itself
          65. allowed to produce digital models of hybrid chemicals - merely faster
          66. methods of doing business
          67. UK
          68. test
          69. as a whole
          70. e.g.
          71. NOT patentable
          72. (automatic share-trading system operated by a PC program)
          73. EPO
          74. test
          75. any hardware
          76. e.g.
          77. patentable
          78. patentable because related to the way the components of the system interacted - technical rather than business problem
          79. presentation of information
          80. UK
          81. test
          82. distinguish between ordinary (cognitive) inf and special (functional - m.b. patentable) inf
          83. cognitive
          84. directed to the presentation of inf per se
          85. functional
          86. e.g. interaction between the machines
          87. e.g. snow on a TV screen
          88. EPO
          89. test
          90. any hardware
          91. methods for performing a mental act
          92. UK
          93. test
          94. method if covers arrival at a particular result by the exercise of rational process alone
          95. types
          96. text editing
          97. patentable
          98. technical, not merely linguistic --- (method for transforming printer control items in documents from one format to another)
          99. NOT patentable
          100. only relates to the internal, linguistic elements --- (program identified linguistic expressions that were difficult to understand - not pat - straightforward application of conventional techniques)
          101. expert systems
          102. NOT patentable
          103. automation of operations that could otherwise be performed by humans. Even if the invention could not be carried out by the unaided human mind
          104. EPO
          105. test
          106. any hardware
          107. e.g.
          108. patentable
          109. (matching the tastes of the public to the design of perfumes - presented odours with a visual - ok)
          110. problems
          111. have to pass judgment over complex and rapidly changing technologies
          112. power struggle between the EU and EPO
          113. USA patents non-technical business methods
          114. contrary to public policy
          115. test
          116. PERFORMING of the invention contravenes ordre public
          117. EPO
          118. test
          119. opposing party must prove conclusively and with objective scientific evidence that the patent will cause harm
          120. must be shown that an overwhelming majority of people find such an activity abhorrent
          121. excluded
          122. cloning humans
          123. modifying the germ line genetic identity of human beings
          124. human embryos for industrial or commercial purposes
          125. process for modifying genetic identity of animals likely to cause them suffering without any substantial medical benefit to human or animal
          126. utilitarian balancing test
          127. e.g.
          128. patentable
          129. Relaxin
          130. poll evidence m.b. doubtful, permission in some contracting states will not automatically influence
          131. animal varieties
          132. issues
          133. depends on wording
          134. genetically engineered mouse is not an animal variety - patentable
          135. plant varieties
          136. EPO
          137. issues
          138. hybrid plants and their seeds are not plant variety
          139. essentially biological processes
          140. EPO
          141. test
          142. whether relate to human, technical intervention or traditional cross-breeding methods
          143. even if single artificial element - not essentially bio
          144. issues
          145. death or destruction of animals or plants - pat
          146. BUT!
          147. micro-biological processes are patentable
          148. test
          149. not visible to the human eye. Also development of new micro-organisms. Judged as a whole, not enough if only one step is micro.
          150. methods of treatment
          151. test
          152. any non-significant intentional physical of psychic intervention performed directly or indirectly by one human being on another using means of medical science
          153. either
          154. surgery
          155. test
          156. UK
          157. depends on the nature of intervention - rather than the purpose
          158. rejected EPO approach
          159. EPO
          160. focus on purpose
          161. suitable for maintaining or restoring health, the physical integrity of the physical well being of a person or animal
          162. e.g.
          163. NOT excluded from patentability
          164. (hair-removal using optical radiation)
          165. tatooing
          166. piercing
          167. characteristics
          168. even if only one step involves surgical procedure --- (injecting gas into heart, etc.)
          169. therapy
          170. test
          171. 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
          172. e.g.
          173. NOT deceases
          174. pregnancy
          175. removed lice
          176. diagnosis
          177. broad
          178. if includes features relating to diagnosis for curative purposes
          179. methods
          180. examination
          181. comparison
          182. identification
          183. deviation from the norm
          184. diagnosis
          185. only diagnosis is enough
          186. issues
          187. NOT excluded
          188. if only interim results
          189. e.g.
          190. taking a sample
          191. determining internal temperature
          192. issues
          193. not necessary by doctor or vet
          194. NOT excluded from patentability
          195. cosmetic --- (slimming treatment)
          196. known substance used for the 1st time in treatment
          197. also second and subsequent medical uses
          198. BUT!
          199. not just for optimum dosage
          200. BUT!
          201. new dosage regime is ok if not related to a method of treatment
          202. use of known substances for the manufacture of a medicament or treatment
          203. on or in the human body. Invasive or non-invasive.
          204. NOT excluded
          205. if method on substances that are removed from the body
          206. methods of technical nature
          207. NOT excluded
          208. purely intellectual
          209. only direct treatment is excluded
          210. NOT excluded
          211. BUT!
          212. m.b. excluded if functional link between between the invention and human or animal health
          213. e.g.
          214. (programming pacemaker)
      3. Novelty
        1. steps
          1. what is invention?
          2. what information in prior art?
          3. inf in prior art
          4. 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
          5. issues
          6. m.b. by use
          7. (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)
          8. the public
          9. test
          10. at least one member of the public who was free in law and equity to use/see
          11. e.g.
          12. novelty NOT destroyed
          13. (private property - through a fence)
          14. joint venture
          15. BUT!
          16. when large number of members - the word 'confidential' in front of the document had no effect
          17. no geographical limitations
          18. includes applications for other patents
          19. excluded
          20. inf obtained unlawfully or was disclosed in breach of confidence
          21. international exhibition
          22. interpretation
          23. documents interpreted as if they were being read at the date of their publication no mosaicing --- (NOT anticipated by old patents)
          24. limited ability to extend meaning beyond literal
          25. person skilled in the art can correct obvious mistakes
          26. cannot combine together different documents (no mosaicing)
          27. BUT!
          28. ok if Doc 1 leads to Doc 2
          29. is invention part of the state of the art?
          30. prior art is enough?
          31. would the skilled addressee be able to work the invention from disclosed inf?
          32. anticipation
          33. tests
          34. would the prior use infringe if carried out today? Reverse infringement test WILL BE APPLIED - IS IT THE TEST?! (BS - 542) --- (Paroxetine - treat depression)
          35. elements
          36. prior disclosure
          37. enablement
          38. e.g.
          39. NOT enabling
          40. (formula for chemical compound - but no means by which compound can be produced - not enabling)
          41. is the claimed subject matter derivable directly and unambiguously from the (prior) publication
          42. does the earlier material point inevitably to the later invention?
          43. issues
          44. new purpose
          45. ok, new purpose of old product used in the old way can be novel --- (earlier used as a rust inhibitor)
          46. instructions only sometimes/normally produce the product - NO anticipation must be inevitable result - 99/100
          47. secret/inherent use
          48. 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)
          49. product-by-process
          50. 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.
          51. second and subsequent uses
          52. medical
          53. can be new
          54. not necessary Swiss-type
          55. non-medical
          56. can be new even if old product used in the old way
          57. BUT!
          58. (use of aromatic esters in deodorants - in prior art - application merely disclosed inf about an existing purpose - merely post-factum explanation)
          59. selection patents
          60. conditions --- (although invalid in the case)
          61. selection was based on substantial advantage resulting from the use of selected members and
          62. all members of the selected class possessed the advantage in question and
          63. if selection in respect of a quality or character - if only peculiar to the selected group
        2. old reform
          1. 1949 Act
          2. only information in UK
          3. inf through publication must be enabling, through use - need not
      4. Inventive step
        1. EPO
          1. test
          2. problem-solution approach
          3. solution must be non-obvious
          4. steps
          5. determine the closest prior art
          6. establish the problem
          7. can solution be derived by skilled person (obvious?)?
          8. arguments
          9. contra
          10. if invention broke new ground - no close prior art to formulate the problem
          11. based on hindsight
          12. rejected in UK
          13. BUT!
          14. must be implied reference to the problem
        2. UK
          1. test
          2. steps
          3. identify the person skilled in the art and their common general knowledge
          4. notional interpreter equipped with the attributes, skills, background knowledge, and qualifications relevant to the field in which he works
          5. identify the inventive concept, bearing in mind the problem
          6. identify the differences between the prior art and the inventive concept
          7. issues
          8. prior art
          9. obscure prior art should be ignored
          10. mosaicing
          11. m.b. collocation - if combination of known elements in the invention produces a synergy
          12. BUT!
          13. if each part performs its own function - two independent inventions - must consider inventive step in each separately
          14. m.b. not if not a closely related field --- (pencil sharpeners + saving boxes - PSiA would not have used solution from saving boxes - too different)
          15. factors
          16. the age of documents
          17. the role of references in linking one document to others
          18. the proximity of fields from which the prior art comes
          19. the amount of effort or analysis required in identifying the relevant features in the prior art
          20. the ubiquity of some documents in the field such that they form part of common knowledge
          21. prejudices
          22. person skilled in the art may put greater emphasis on certain types of inf.
          23. decide whether those differences, viewed without knowledge of the invention would have been obvious to the skilled man
          24. issues
          25. PSiA can use common general knowledge
          26. in itself
          27. for mosaicing
          28. subsidiary arguments about inventive step
          29. should be considered carefully
          30. length of time taken to develop the invention --- (6 years to develop the next gen. antibiotic)
          31. BUT!
          32. NOT if merely question of throwing time and money at the problem
          33. long-felt want
          34. must be interest in developing the field
          35. commercial success
          36. BUT!
          37. m.b. other factors
          38. extent of choice in inventive process
          39. m.b. research if one-way street, no risk or uncertainty
          40. PSiA will try all avenues with good prospects of result
          41. cost and resources do not matter
          42. not necessary 100% prospect of success
          43. enough if deems likelihood of success as sufficient to warrant actual trial
          44. even if there a lot of routes
          45. combining is not enough, unless synergy --- (sausage machine - cutting + filling)
          46. arguments
          47. contra
          48. hindsight
          49. unnecessarily artificial
          50. inappropriate for innovations which satisfy latent needs
      5. capable of industrial application
        1. test
          1. 'useful'
          2. used in any kind of industry, for profit or not
          3. BUT!
          4. application of a contraceptive composition to the cervix denied Private and personal activity
          5. criticised in Bently and Sherman
        2. e.g.
          1. NO industrial application
          2. speculative --- (protein identified using bioinformatics - no clear application - no clear idea - included every possibility)