Final Flashcards
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?
Merrell Dow v Baker Norton (terfinadine metabolite patent, invalided for disclosure not prior (secret) use).
Synthon v SmithKlineBeecham
Enabling disclosure must be obtained “without undue burden” - what is the EBA decision regarding this?
Availability to the Public EBA Decision
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?
Philips/Public availability of an email transmitted via the internet [2012]
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?
Lubrizol v Esso
Merrel Dow v Baker Norton
Synthon v SmithKlineBeecham
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.
Philips/Public availability of an email transmitted via the internet [2012]
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.
Lubrizol v Esso
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.
Availability to the Public EBA Decision
Enabling disclosure must be obtained “without undue burden”
The UK approach to Inventive step is outlined in what two cases?
Windsurfing/Pozzoli
With regards to novelty, it is not possible to ‘mosaic’ more than one piece of prior art.
What is the case law for this?
Bayer/Diastereomers
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?
Biotech Directive Article 3(2)
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?
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.
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?
THOMPSON/Cornea [1995]
Windsurfing/Pozzoli
UK Approach to Inventive step.
Initially from Windsurfing International v Tabur Marine [1985]
then refined in Pozzoli v BDMO
Bayer/Diastereisomers
With regards to novelty, it is not possible to ‘mosaic’ more than one piece of prior art.
THOMPSON/Cornea [1995]
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
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?
PBS/Pension Benefit System (2001)
Howard Florey/Relaxin (1995)
A new process developed for isolated substances found in nature may be a patentable process (the isolated substance is also novel)
PBS/Pension Benefit System (2001)
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
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?
Merrill Lynch’s Application [1989]
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?
Actavis UK Limited and others v Eli Lily and Company [2017]
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?).
Catnic = purposive not literal
Equivalents = Article 69 EPC and also Kirin Amgen?
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?
LIFFE v Pinkava
Merrill Lynch’s Application [1989]
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’
