1. The law relating to patentable inventions in the UK Flashcards
What are the key requirements for a patent to be granted on an invention?
- New
- Inventive step
- Capable of industrial application
- Not excluded by subsections (2, discovery, musical, etc) and (3, immoral, public policy). Or section (4A, methods of diagnosis)
What are not classified as inventions (S 1) and other exclusions to patentability (S 4A and 76A)?
Not inventions, method of treatment etc, biotech
Section 1 exclusions (non-exhaustive list of non-inventions):
- Discovery, scientific theory, mathematical method
- Literary, dramatic, musical, or artistic work or other aesthetic creation (copyright applies)
- Scheme, rule or method for: performing a mental act, playing a game or doing business; or a computer program
- Presentation of information
- Only to the extent that the app. relates to that thing as such (i.e. must be something more to the invention)
- Secretary of State may vary list to conform with science and tech developments.
- No patent is granted for an invention if its commercial exploitation is against public policy or morality (just because something is against UK law, it does not means it is against public policy or morality).
Section 4A(1) exclusions:
- Method of treatment of human or animal body by surgery or therapy, or
- Method of diagnosis practised on animal or human body
Section 76A exclusions (PA Schedule A2(3)):
- List of biotech. inventions which are not patentable. See below.
Key novelty requirement to grant a patent/what makes an invention new?
S 2(1)
Invention is new if it doesn’t form part of state of the art
Define state of the art, i.e. is a document prior art?
S 2(2)
State of the art comprises all matter made available to public (anywhere in world) by written or oral description (or other use) at any time before the priority date
What is a novelty only citation?
S 2(3)
(Novelty only) state of the art comprises matter from another patent or application (X), published on or after priority date of the invention, if:
- The matter was present in patent X as filed and published; and
- The priority date of patent X’s matter is earlier than the invention application
- (To prevent double patenting)
When may you disregard disclosure of invention-defining matter in a patent/application?
S 2(4, 5)
If disclosure happened within 6 month period before UK filing date (FD-6M) (not PD) of app, and disclosure made either:
- By person obtaining matter unlawfully or in breach of confidence from inventor, or anyone holding the invention in confidence; or
- Inventor displaying invention at an officially recognised international exhibition. Applicant must: state on filing that invention was displayed, file written evidence within FD+4M (certificate issued by authority responsible for exhibition including the opening date of the exhibition, authority authenticated statement) (PR5).
If filing PCT(GB): inform RO on filing, give UKIPO evidence within 2 months of national phase entry (R67)
“Inventor” includes “proprietor” for this section.
Define the key inventive step requirement for a patent to be granted on an invention.
S 3
Invention involves an inventive step if it is not obvious to a person skilled in the art when faced with matter forming part of Section 2(2) state of the art
I.e. disregard patents/applications published on/after priority date
Skilled person = expert/competent in that technical field, no ‘inventive spark’
Define the key industrial applicability requirement for a patent to be granted on an invention.
PA 1977, Section 4
Invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture.
As well as what is outlined in Section 1, what are the other inventions excluded from patentability?
(Methods of treatment and diagnosis, biotech inventions)
PA 1977, Section 4A(1), Section 76A
PA 1977, Section 4A(1):
1) Patent not granted for:
a. Method of treatment of human or animal body by surgery or therapy, or
b. Method of diagnosis practised on animal or human body
PA Section 76A, PA Schedule A2(3):
Lists specific biotechnological inventions which are not patentable
Describe the available patent protection for methods of treatment or diagnosis
PA 1977, Section 4A(1, 2, 3, 4)
1) Patent not granted for:
a. Method of treatment of human or animal body by surgery or therapy, or
b. Method of diagnosis practised on animal or human body
2, 3, 4) Substances/compositions for use in such methods is allowable. If the substance is known, it can still be novel if the use/specific use is new.
Describe the available patent protection for biotechnological inventions (what can be patented)?
PA 1977, Schedule A2(1, 2, 4, 5)
1) An invention shall not be considered unpatentable solely on the ground that it concerns:
(a) a product consisting of or containing biological material; or
(b) a process by which biological material is produced, processed or used.
2) Biological material which is isolated from its natural environment or produced by a technical process may be an invention even if it previously occurred in nature.
Patentable:
4) Inventions concerning plants or animals, if technical feasibility is not confined to a particular plant/animal variety.
5) An element isolated from the human body or otherwise produced by means of a technical process (including gene sequence) even if the structure of that element is identical to that of a natural element.
Which biotechnological inventions are not patentable?
PA 1977, Schedule A2(3)
(a) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
(b) processes for cloning human beings;
(c) processes for modifying the germ line genetic identity of human beings;
(d) uses of human embryos for industrial or commercial purposes;
(e) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit;
(f) any variety of animal/plant or any essentially biological process for producing an animal/plant.
What are the steps of the Windsurfer/Pozzoli approach?
i) identify person skilled in the art (ordinary skill, not inventive) and relevant general knowledge
ii) identify inventive concept in claim
iii) identify any differences between state of art and the invention as identified/construed
iv) would these differences have been obvious to the skilled person
Why is “as such” used when defining exclusions to patentability, and what is the Aerotel Test?
Current process for determining whether a claim is related to an excluded category (Aerotel/Macrossan):
properly construe the claim -> identify actual contribution -> see whether this falls solely within exclusion -> check if actual contribution is technical
