14. Patents - general

Question 1

IDA v Uni of Southampton

Answer 1

actual devisor = person who came up with the inventive concept (the heart of the invention)

Question 2

Henry Bros v MOD

Answer 2

if invention is a combination of elements

inventor = combiner (not inventor for each bit)

Question 3

Yeda Research v rHONE

Answer 3

PRESUME APPLICANT IS INVENTOR
- if dispute: ask who the actual devisor is

court can resolve deadlocks

Question 4

Hughes v Paxman

Answer 4

comptroller can resolve deadlock

confirmed Yeda

Question 5

Greater Glasgow Application

Answer 5

doctor invented something to make treating patients faster

• not part of normal course of duties
• not employed to invent

DOCTOR OWNED PATENT

Question 6

LIFFE Administration

Answer 6

COE can help determine normal course of duties
- can also look at what duties are in practice

HERE: expectation of invention

Question 7

Harris’s Patent (s.38(1)a)

Answer 7

NOT normal course of duties

• work was non-inventive tasks
• non-creative, routine application
• no research laboratory, not involved in R&D

NOT employed to invent
- R turned E’s suggestions before

Question 8

Harris Patent (s.38(1)b)

Answer 8

NOT special obligation

• no share of business profit
• cannot sign off holding request
• couldn’t hire staff

Question 9

Staeng’s Patent

Answer 9

YES special obligation

• senior employee
• board meetings
• control over budget
• party to company’s profit bonus scheme

Question 10

Kelly v GE

Answer 10

s.40 gives compensation to employees if OUTSTANDING BENEFIT

• this is rare
• got it in this case (gave R leverage in corporate deals)
• got 2%

MUST BE SUBSTANTIALLY SIGNIFICANT

Question 11

Telegraph & Mills v Rockley

Answer 11

Skilled addressee = a geek

• read all the literature
• forgetful
• not inventive

Question 12

Lily Icos v Pfizer

Answer 12

SA: “not a real person, he is a legal creation”

• read documents
• understands all languages
• never misses the obvious
• never thinks laterally

Question 13

Dyson v Hoover

Answer 13

SA: practical interest in subject matter
- more complicated the patent the more knowledge SA knows

SA CAN BE A MULTI-DISCPLINED TEAM

Question 14

Rockwater v Technip

Answer 14

“nerd”

• no inventive capacity
• forgetful
• shares common prejudice of trade

Question 15

General Tire v Firestone

Answer 15

CGK of SA is “common stock of knowledge”

Question 16

Dyson v Hoover

Answer 16

CGK of SA

- vacuum cleaner industry is blind to anything that isn’t a replaceable bag so need that to make a vacuum

Question 17

Eli Lily

Answer 17

CGK is what is generally known or regarded as a good basis for further action (uni teaching = helpful)

Question 18

SEB v De’ Longh

Answer 18

plastic skirt used (because used an insulating ring)

CGK includes melting points of plastic and metal and things accepted without question

Question 19

Generics (UK)

Answer 19

NO NEED TO disclose all the ways product might be made (just need to disclose 1 way)

as long as PSITA can make it with CGK = that’s fine

Question 20

Mentor v Hollister

Answer 20

SA can be required to do routine trial and error (but not experiments requiring inventiveness)

• no need to disclose ALL things
• i.e. no need to disclose which adhesive to use

Question 21

Novartis v Johnson

Answer 21

“made from combination of polymer A and polymer B”

each list v long

• SA can be required to do trial and error but patent instructions must inevitably lead to sucess
• here they do not

SA MUST BE ABLE TO MAKE INVENTION WITHOUT UNDUE BURDEN OR INVENTIVE SKILL

Question 22

Kiren Amgen

Answer 22

claimed method of making EPO
- claimed all methods but only disclosed 1 method

NOT SUFFICIENT

Question 23

Generics v Warner

Answer 23

assertion that invention works must be plausible and credible