1) Patentability and Extent of Protection

Question 1

Complete A69(EPC) = s125(PA):

The extent of the protection conferred by a patent or application shall be determined by the terms of the […1].

Nevertheless, the […2] and […3] shall be used to interpret the claims.

Answer 1

1. Claims
2. Description
3. Drawings

Question 2

According to Actavis v Eli Lilly, which 2 issues must be addressed when approaching a problem of infringement?

Answer 2

i) Does the variant infringe any of the claims as a matter of normal interpretation? (Literal)

If not,

ii) Does the variant nonetheless infringe because it varies from the invention in a way which is immaterial? (Equivalent)

Question 3

What are the excluded SM

Answer 3

a) discovery, scientific theory or mathematical methods

b) literary, dramatic, musical or artistic work and any other aesthetic creation

c) a scheme, rule or a method for performing a mental act, playing a game or doing business, or a program for a computer

d) presentation of information

NB. Only to the extent that the P/App relates to that thing as such

Question 4

Which UK Case Law provides the test for determining if SM of claim is excluded?

Answer 4

Aerotel/Macrossan

Question 5

What are the steps of the Aerotel test?

Answer 5

1) Properly construe the claim
2) Identify the actual contribution = What has the inventor really added to human knowledge?
3) Does this fall solely within an exclusion
4) Check if the ‘actual contribution’ is technical? [technical contribution]

Question 6

If an invention doesn’t fall entirely in the s1(a-d) exclusions and makes a technical contribution to the art, would it be patentable?

Answer 6

Yes

Question 7

Are Biological material patentable?

Answer 7

Only if isolated from their natural environment by a technical process