Final

Question 1

For a disclosure to be novelty-destroying, it must be enabling disclosure: it discloses the invention and provides enough information to enable a person skilled in the art to work it.

What are two case laws for this?

Answer 1

Merrell Dow v Baker Norton (terfinadine metabolite patent, invalided for disclosure not prior (secret) use).

Synthon v SmithKlineBeecham

Question 2

Enabling disclosure must be obtained “without undue burden” - what is the EBA decision regarding this?

Answer 2

Availability to the Public EBA Decision

Question 3

Mere transmission via the Internet does not amount to making available to the public, notwithstanding that there is the possibility of the email being intercepted both legally and illegally.

This was noted by the TBA in what?

Answer 3

Philips/Public availability of an email transmitted via the internet [2012]

Question 4

A defence against patent infringement suits (if infringing activity [or good faith effort to begin] began before patent publication but not before the priority date) may be available under s64(1) PA.

What a case law reference for this?

Answer 4

Lubrizol v Esso

Question 5

Merrel Dow v Baker Norton

Synthon v SmithKlineBeecham

Answer 5

For a disclosure to be novelty-destroying, it must be enabling disclosure: it discloses the invention and provides enough information to enable a person skilled in the art to work it.

Question 6

Philips/Public availability of an email transmitted via the internet [2012]

Answer 6

Mere transmission via the Internet does not amount to making available to the public, notwithstanding that there is the possibility of the email being intercepted both legally and illegally.

Question 7

Lubrizol v Esso

Answer 7

A defence against patent infringement suits (if infringing activity [or good faith effort to begin] began before patent publication but not before the priority date) may be available under s64(1) PA.

Question 8

Availability to the Public EBA Decision

Answer 8

Enabling disclosure must be obtained “without undue burden”

Question 9

The UK approach to Inventive step is outlined in what two cases?

Answer 9

Windsurfing/Pozzoli

Question 10

With regards to novelty, it is not possible to ‘mosaic’ more than one piece of prior art.

What is the case law for this?

Answer 10

Bayer/Diastereomers

Question 11

Biological material which is isolated from its natural environment may be the subject of an invention even if it has previously occurred in nature.

This is provided by what directive?

Answer 11

Biotech Directive Article 3(2)

Question 12

A new process developed for isolated substances found in nature may be a patentable process (the isolated substance is also novel) - what is the case law for this?

Answer 12

Howard Florey/Relaxin (1995)

If [an isolated] substance [that previously existed in nature] can be properly characterised by its structure and it is new in the sense of having no previous existence [in its isolated form], then the substance per se may be patentable.

Question 13

Methods of treatment of the human or animal body by surgery or therapy are excluded from patentability under Sec4A(1) and EPC art 53(c).

“Therapy” is broadly defined as “any treatment which is designed to cure, alleviate, remove or lessen the symptoms of or prevent or reduce the possibility of contracting any disorder or malfunction of the animal body” in what case law?

Answer 13

THOMPSON/Cornea [1995]

Question 14

Windsurfing/Pozzoli

Answer 14

UK Approach to Inventive step.

Initially from Windsurfing International v Tabur Marine [1985]

then refined in Pozzoli v BDMO

Question 15

Bayer/Diastereisomers

Answer 15

With regards to novelty, it is not possible to ‘mosaic’ more than one piece of prior art.

Question 16

THOMPSON/Cornea [1995]

Answer 16

Methods of treatment of the human or animal body by surgery or therapy are excluded from patentability under Sec4A(1) and EPC art 53(c).

“Therapy” is broadly defined as “any treatment which is designed to cure, alleviate, remove or lessen the symptoms of or prevent or reduce the possibility of contracting any disorder or malfunction of the animal body” in

Question 17

Methods for doing business are excluded under Sec1(2)(c) and EPC Art 52(2).

A business method is only patentable if it can be shown that it has a technical character - as stated in what case law?

Answer 17

PBS/Pension Benefit System (2001)

Question 18

Howard Florey/Relaxin (1995)

Answer 18

A new process developed for isolated substances found in nature may be a patentable process (the isolated substance is also novel)

Question 19

PBS/Pension Benefit System (2001)

Answer 19

Methods for doing business are excluded under Sec1(2)(c) and EPC Art 52(2).

A business method is only patentable if it can be shown that it has a technical character

Question 20

A system consisting in a scheme of ordering and selling is unlikely to have any technical character and will be rejected as a business method ‘as such’ as was the case in what?

Answer 20

Merrill Lynch’s Application [1989]

Question 21

In a recent case, Lord Neuberger said that notwithstanding Catnic, a problem of infringement is best approached by addressing two issues each of which is to be considered through the eyes of PSA. Those issues are:

(i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not,
(ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?

what is this case?

Answer 21

Actavis UK Limited and others v Eli Lily and Company [2017]

Question 22

Prior to Actavis v Eli Lily [2017], the UK courts used a purposive approach (what case law?) whilst asking what the PSA with the CGK would understand the claims to mean in light of the description and the drawings (what Article EPC?).

Answer 22

Catnic = purposive not literal

Equivalents = Article 69 EPC and also Kirin Amgen?

Question 23

According to UK law (Section 39(1), an invention belongs to an employer only when made in the course of the employee’s normal or specifically assigned duties AND in circumstances where an invention might reasonably have been expected from the carrying out of those duties, OR the employee’s position is such that they are committed to a “special obligation to further the interests of the employer’s undertaking’.

However, employment obligations evolve over time, so we have to look beyond the wording of an employment contract, as stated in what case?

Answer 23

LIFFE v Pinkava

Question 24

Merrill Lynch’s Application [1989]

Answer 24

A system consisting in a scheme of ordering and selling is unlikely to have any technical character and will be rejected as a business method ‘as such’

Question 25

In Actavis v Eli Lily 2017, Lord Neuberger said that notwithstanding Catnic, a problem of infringement is best approached by addressing two issues each of which is to be considered through the eyes of PSA. Those issues are (2)?

Answer 25

(i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not,
(ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?

If the answer to either issue is “yes”, there is an infringement; otherwise, there is not. Such an approach complies with Article 2 of Protocol RE Art 69, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variation from the invention.

Issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence.

Question 26

Case law for ownership of patents RE employee inventions wherein inventing occurred outside employees normal duties

Answer 26

Harris Patent [1985] - manager in sales department of company.

Greater Glasgow Health Board application [1996] - Junior Doctor, Dr would not have failed in his duties if he had not invented.

Electrolux Ltd v Hudson [1977]

Question 27

Case law for experimental use that relates to the subject-matter of the invention as a defence to patent infringment

Answer 27

SKF v Evans

A person who wished to test a cure for cancer they had developed by applying it to a genetically modified mouse could not use this as a defence against a claim by the patentee of the mouse.

Question 28

Case law for patentability of previously unknown feature of previously disclosed compound

Answer 28

Mobil Friction Reducing Additive Case
Previous patent was for a compound for use as a rust inhibitor - new one for use as friction reduction.

Objected to on grounds of novelty/prior disclosure as the friction-reducing property was inherent in, but not explicitly described by, the prior patent.

Was eventually granted as the technical features of the claimed invention were not communicated to the public but remained hidden/secret in the prior application.

Question 29

Case law for inventive step RE prejudices of industry

Answer 29

Dyson v Hoover

Question 30

Case law for Common General Knowledge not being limited to material the PSA has memorised and is at the front of his mind, it includes all the material in the field he is working in etc.

Answer 30

Raychem

Question 31

Case law for experimental use defence RE patent infringement not applying if commercial benefit or purpose

Answer 31

Monsanto v Stuaffer Chemical

Question 32

Case law for industrial applicability

Answer 32

Human Genome Sciences v Eli Lilly

Held that a new protein in a known family can be assigned the same role/function as other family members without experimental evidence to directly support this.

Question 33

Case Law for UK approach to computer inventions

Answer 33

Aerotel/Symbian

Technical Effect Test

1) Construe the invention (i.e. what is the scope of the claim; the courts look at the way the PSA would construe the claim);
2) identify the contribution made by the invention (i.e. what has the inventor really added to human knowledge? Aerotel)
3) determine whether the contribution is technical and does not fall within one of the areas excluded by Section 1(2).
- can it be shown that the invention brings about a tangible physical change, as opposed to creations that are abstract.

is the contribution technical basically

Question 34

Case law for Computer Programs being ineligible for patent protection, per se (UK)

Answer 34

Gale’s Application [1991]

There needs to be a technical effect resulting from the software in the physical sense.

Question 35

Case law for exclusion from patentability of an invention where the subject-matter of the patent requires prior destruction of human embryos or their use as base material

Answer 35

Brustle v Greenpeace

Question 36

Case law for EPO approach to Computer Programs, what is the EPO approach?

Answer 36

Pension Benefits System

‘The Any Hardware Approach’

An invention will not fall within any of the excluded categories if it embodies or is implemented by some technical means (such as a computer).

In the boards view, a computer system suitably programmed for use in a particular field, even if that is the field of business and economy, has the character of a concrete apparatus in the sense of a physical entity, man-made for a utilitarian purpose and is thus an invention within the meaning of Article 52(1) EPC.

Question 37

Case law for product claims only requiring one disclosed method of producing the product disclosed in the specification to cover products produced via any procedure

Answer 37

Generics V Lundbeck

Question 38

Case law for the common general knowledge not generally including the detail of individual patent specs. scientific papers etc.

Answer 38

General Tire v Firestone Tyre

Question 39

Case law(s) for the PSA being able to make routine workshop improvements but not to exercise inventive ingenuity or think laterally - a boring, nerd.

Answer 39

Pfizer’s Patent [2001]

Technip France SA’s Patent [2004]