Lecture 1.2

Question 1

What section of the Patent Act 1977 describes what is patentable?

Answer 1

Section 1 (1) of the PA 1977

Question 2

What Article of the EPC describes what is patentable?

Answer 2

Article 52(1) and (2)

Question 3

Section 1(1) of PA 1977 states that a patent may only be granted when what 4 criteria are met?

Answer 3

Novelty
Inventive step
IA
not excluded subject matter

Question 4

What section of the PA 1977 describes excluded subject matter?

Answer 4

Section 1(2) or (3)

Question 5

Take home message of T154/04 Duns Licensing Associates/Estimating Sales Activity [2007]

Answer 5

Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must actually be an invention and it must be novel, inventive and have IA.

Having technical character is an implicit requisite of an invention.

Must have technical contribution to the art.

Question 6

According to Section 1(2) PA 1977 (and also Article 52(2) & (3) EPC) what 4 things are not inventions?

Answer 6

(a) a discovery, scientific theory or mathematical model;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;

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

Question 7

How can you get protection for a discovery?

Answer 7

Genetech Inc’s Patent [1987]

‘It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. That in my view would be the case, even though once you had made the discovery, the way in which it can be usefully employed is obvious enough. Let me take an example: you discover that a length of iron treated in a certain way will always point to the north. The way in which you can use this discovery to make a direction finding instrument may well be obvious art, but based on your discovery you can get a patent for it.’ Whitford J

Cant get a composition of matter patent for a naturally occuring compound.
Can patent a process of isolating it or using it to create something else etc. so long as those processes are novel, inventive etc.

Question 8

What did Howard/Relaxin [1995] patent relate to?

Answer 8

DNA sequences of a naturally occurring substance that relaxes the uterus during childbirth, which was obtained from the human ovary.

Question 9

What was the EPO decision RE Howard Florey/Relaxin [1995]?

Answer 9

To find a substance freely occurring in nature is mere discovery and therefre unpatentable. However, if a substance found in nature has first to be islated from its surroundings and a process for obtaining it is developed, that process is patentable. Moreover, if this substance can be properly characterised by its structure and it is new in the absolute sense of having no previously recognised existence, then per se may be patentable.

Question 10

What does Art 3(2) Biotech Directive state?

Answer 10

Biological material which is isolate from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature.

Question 11

What does Art 5(1) Biotech Directive state?

Answer 11

The human body, at various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions

Question 12

What does Biotech Directive 5(2) state?

Answer 12

An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.

Question 13

What was the judgement in Gale’s Application [1991] RPC 305?

Answer 13

Computer programs ‘as such’ are not patentable subject matter.
There needs to be a technical effect resulting from the software in the physical sense etc.

Question 14

How do UK courts approach ‘computer programs/software’ patents?

Answer 14

UK courts apply the ‘Technical Effect’ approach/test, developed in Aerotel [2007] 1 ALL ER 225 and reformulated in Symbian [2008] EWCA Civ 1066.

The key questions is whether the invention, when considered as whole, makes a technical contribution to the known art that does not fall within one of the areas excluded by Section 1(2) of the Patent Act.

Question 15

What is the Aerotel/Symbian “Technical Effect Test”? (3)

Answer 15

(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). (i.e. if it can be shown that the invention brings about a tangible physical change, as opposed to creations that are abstract.)

Question 16

In ATT Knowledge Ventures LP v Comptroller of Patents [2009] EWHC 343 Lewson J stated that it would be impossible to define the meaning of ‘technical’ but indicated a number of signposts including what? (5)

Answer 16

1. Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
2. Whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
3. whether the claimed technical effect results in the computer being made to operate in a new way;
4. Whether there has been an increase in the speed or reliability of the computer;
5. Whether the perceived problem is overcome by the claimed invention as opposed to being merely circumvented.

Question 17

What is the name of the approach the EPO applies to Computer Programs, developed in Pension Benefits System, T 931/95?

Answer 17

The Any Hardware approach, under this 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).

E.g. what is important is that the invention makes use of, or embodies, some form of technology (or hardware).

‘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 18

Are the approaches taken by the EPO and the UKIPO to computer programs really different?

Answer 18

There has been little to suggest that the different approaches adopted in the two jurisdictions have led to different results.

Given that many applications excluded in the UK via the ‘technical effect’ approach under section 1(2) would be excluded under the ‘any hardware’ approach at the EPO because they do not meet other patentability requirements (e.g. inventive step), it is unlikely that the different approaches will lead to different results.

Kitchin J in HTC v Apple [2013] EWCA 476 ‘whichever route is followed, one ought to end up at the same destination’.

Question 19

What was developed in Aerotel [2007] 1 ALL ER 25 and reformulated in Symbian [2008] EWCA Civ 1066?

Answer 19

UK courts apply the ‘Technical Effect’ approach/test to software/computer program patents, developed in Aerotel [2007] 1 ALL ER 225 and reformulated in Symbian [2008] EWCA Civ 1066.

Question 20

Under Article 53 EPC patents shall not be granted in respect of (Section 1(3), 4A and schedule A2 PA) for (a) inventions the publication or exploitation of which would be contrary to ‘ordre public’ or morality, provided that the exploitation shall not be deemed to be so contrary merely because of what?

Answer 20

(a) inventions the publication or exploitation of which would be contrary to ‘ordre public’ or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;

Question 21

Under Article 53 EPC patents shall not be granted in respect of (Section 1(3), 4A and schedule A2 PA) for (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to what?

Answer 21

Microbiological processes or the products thereof.

Question 22

Under Article 53 EPC patents shall not be granted in respect of (Section 1(3), 4A and schedule A2 PA) for (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on 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 what?

Answer 22

Products, in particular substances or compositions, for use in any of these methods.

Question 23

What is the meaning of contrary to ordre public or morality?

Answer 23

T356/93 [1995] O.J. EPO 545 , Reasons, paras 5 and 6:

5. …the concept of ‘ordre public’ covers the protection of public security and the physical integrity of individuals as part of society. This concept encompasses also the protection of the environment. Accordingly, under Art.53(a) EPC , inventions the exploitation of which is likely to breach public peace or social order (for example, through acts of terrorism) or to seriously prejudice the environment are to be excluded from patentability as being contrary to ‘ordre public’.
6. The concept of morality is related to the belief that some behaviour is right and acceptable whereas other behaviour is wrong, this belief being founded on the totality of the accepted norms which are deeply rooted in a particular culture. For the purposes of the EPC , the culture in question is the culture inherent in European society and civilisation. Accordingly, under Art.53(a) EPC , inventions the exploitation of which is not in conformity with the conventionally-accepted standards of conduct pertaining to this culture are to be excluded from patentability as being contrary to morality.”

Question 24

The concept of ordre public (Article 53 EPC (a)) covers the protection of public security and the physical integrity of individuals as part of society. What also does this concept encompass? What are the implications of this?

Answer 24

This concept of ordre public also encompasses the protection of the environment. Accordingly, under Art.53(a) EPC, inventions the exploitation of which is likely to breach public peace or social order (for example, through acts of terrorism) or to seriously prejudice the environment are to be excluded from patentability as being contrary to ‘ordre public’.

Question 25

What was the take home message of T19/90 Harvard/Onco-mouse [1990]?

Answer 25

The genetic manipulation of mammalian animals is undeniably problematical in various respects, particularly where activated oncogenes are inserted to make an animal abnormally sensitive to tumours, which necessarily causes suffering. There is also a danger that genetically manipulated animals, if released might entail unforseeable and irreversible adverse effects…

The decision as to whether or not Article 53(a) EPC is a bar to patenting the present invention would seem to depend mainly on a careful weighing up of the suffering of animals and possible risks to the environment on the one hand, and the inventions usefulness to mankind on the other.

Question 26

Is technical teaching to be considered unpatentable pursuant to Article 6(2)(c) of the Biotech Directive, even if the use of human embryos does not form part of the technical teaching claimed with the patent, but is a necessary precondition for the application of that teaching?

Answer 26

C-434/10 Brustle v Greenpeace

The directive excludes an invention from patentability where the technical teaching which is the subject-matter of the patent application requires the prior destruction of human embryos or their use as base material, whatever the stage at which that takes place and even if the description of the technical teaching claimed does not refer to the use of human embryos.

Question 27

What constitutes a human embryo in Art 6(2) of the biotech directive?

Answer 27

C-434/10 Brustle v Greenpeace

‘Any human ovum after fertilisation, any non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted and any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitute a “human embryo”’

Question 28

Does the exclusion from patentability concerning the use of human embryos for industrial or commercial purposes also cover uses for purposes of scientific research?

Answer 28

Yes

C-434/10 Brustle V Greenpeace

Question 29

Are unfertilised human ova whose division and further development have been stimulated by parthenogenesis*, and which, in contrast to fertilised ova, contain only pluripotent cells and incapable of developing into human beings, included in the term “human embryos” in Article 6(2)?

*Parthenote - an organism produced from an unfertilised ovum, which is incapable of developing beyond the early embryonic stages

Answer 29

TBC