FD1 - Patentability extras Flashcards
How are oral disclosures treated?
UK courts use balance of probabilities
EPO uses the higher beyond reasonable doubt standard
How can you evidence an oral disclosure?
Publication of conference proceedings
Subsequent scientific publication where a prior presentation can be assumed to have disclosed the salient points
Contemporaneous notes
Witness statement
Minutes from a meeting (was it confidential?)
What must be considered for internet publications?
Accessibility - can it be found using a search engine and keywords relating to the essence of the content of the document?
Did it remain online long enough to be found by a member of the public to have direct and unambiguous access?
What are the requirements for a selection invention?
Cannot be an arbitrary selection and must be sufficiently far removed from the end points of a disclosed range
Is a hope to succeed enough to destroy inventive step?
No - must have been a reasonable expectation of success
How is inventive step assessed in the UK?
Windsurfing/Pozzoli
Identify the skilled person and their CGK
Identify the inventive concept of the claim (i.e. construe it)
Identify the difference between the SOTA and inventive concept
Decide whether the differences would have been obvious to the skilled person
Cannot combine documents unless it would have been obvious to do so
What is the approach to excluded subject matter?
Aerotel
Properly construe the claims
Identify the actual contributions
Ask whether this falls solely within the exclusions
Check if the actual or alleged contribution is actually technical in nature
How might you see a technical effect in a computer programme?
The computer programme may:
Have a technical effect on a process which continues outside the computer
Operate at the level of architecture of the computer
Result in the computer operating in a new way
Make the computer better, e.g. more efficient
Overcome rather than circumvent a problem
