Exclusions to patentability - Concepts

Question 1

TRIPS Art 27(1)

Answer 1

Subject to the provisions of paras 2 and 3, patents shall be available for any inventions, in any field of technology, provided that they are new, involve an inventive step and are capable of industrial application.

Question 2

s.4(1) PA77,

Art 57 EPC

Answer 2

An invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.

Question 3

Biotech Directive 98/44/EC, Art 5(3)

Answer 3

The industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application.

Question 4

Paris Convention Art 4quater

Answer 4

The grant of a patent shall not be refused on the grounds that the product or process is subject to restrictions due to domestic law.

Question 5

TRIPS Art 27(2)

Answer 5

Members may exclude inventions from patentability which go against ordre public or morality, including in order to protect human, animal or plant life or to avoid serious prejudice to the environment.

Question 6

s.1(3) PA77

Answer 6

A patent shall not be granted if it is contrary to public policy or morality.

Question 7

Art 53(a) EPC

Answer 7

A patent shall not be granted if it is contrary to ordre public or morality.

Question 8

s.2(2) of the Landmines Act 1988

Answer 8

No person shall assist or encourage or induce any other person to engage in any conduct [to develop or produce anti-personnel mines]

Question 9

Biotech Directive Art 6(2)

Answer 9

The following in particular shall be considered unpatentable:

(a) processes for cloning human beings;
(b) processes for modifying the germ line genetic identity of human beings;
(c) uses of human embryos for industrial or commercial purposes;
(d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal.

Question 10

TRIPS Art 27(3)(b)

Answer 10

Members may exclude from patentability plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

Members can protect plant varieties either by patent or a sui generis system, or any combination thereof.

Question 11

Biotech Directive Art 4

Answer 11

(1) The following shall not be patentable:
(a) plant and animal varieties;
(b) essentially biological processes for the production of plants or animals.

(2) Inventions which concern plants or animals shall be patentable provided they are not confined to a particular plant or animal variety.
(3) Paragraph (1)(b) is without prejudice to microbiological products and processes.

Question 12

Biotech Directive Art 5

Answer 12

(1) The human body and the discovery of one of its elements including the sequence or partial sequence of a gene cannot be patented.
(2) An element isolated from the human body including the sequence or partial sequence of a gene may be patented, even if the structure is identical to the naturally occurring version.
(3) The industrial application of a sequence or partial sequence must be disclosed in a patent application.

Question 13

Community Plant Varieties Regulation

Answer 13

To be protected a variety has to be:

• Distinct
• Uniform
• Stable
• New

Question 14

Rule 28(2) EPC

Answer 14

Patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

Question 15

TRIPS Art 27(3)(a)

Answer 15

Members may exclude:

(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals.

Question 16

Rationale for exclusion of medical methods

Answer 16

Based on socio-ethical and public health considerations.

Medical and veterinary practitioners should be free to take the actions they consider suited to diagnose illnesses by means of investigative methods.

The policy ensures that those who carry out diagnostic methods are not inhibited by patents.

Question 17

s.4A PA77

Answer 17

Methods of treatment or diagnosis.

(1) A patent shall not be granted for the invention of:
(a) a method of treatment of the human or animal body by surgery or therapy, or
(b) a method of diagnosis practised on the human or animal body.
(2) Subsection (1) above does not apply to an invention consisting of a substance or composition for use in any such method.

Question 18

Art 53(c) EPC

Answer 18

Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods

Question 19

Second medical use (UK)

Answer 19

s.4A(3) and (4)

For an invention consisting of a substance in a method, the fact that the substance is known in the prior art shall not prevent the invention from being taken as new if the use of the substance does not form part of the state of the art.

Question 20

Second medical use (EPO)

Answer 20

Art 54(4) and (5) EPC

For an invention consisting of a substance in a method, the fact that the substance is known in the prior art shall not prevent the invention from being taken as new if the use of the substance does not form part of the state of the art.

Question 21

Mobil Oil Claims

Answer 21

A claim is patentable if a technical feature of a product has not been previously made available to the public by any means, then the claimed invention is novel even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public.

Question 22

Infringement of Mobil Oil claims

Answer 22

When the alleged infringer knows or foresees that the product/process will be used for the new purpose.

Question 23

UK excluded matters

Answer 23

s. 1(2) PA77
(a) a discovery, scientific theory or mathematical method
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation
(c) a scheme rule or method for performing a mental act, playing a game or doing business, or a computer program
(d) the presentation of information

BUT the foregoing provisions shall prevent anything from being treated as an invention for the purposes of the Act to the extent that a patent or application relates to that thing AS SUCH.