Patent I Flashcards
What is a patent?
Article 28 TRIPS
- An exclusive right
- Granted by the state to an inventor
- For a limited term of protection
- In exchange for the disclosure of the protected invention to the public
Requirements of Patentability
Section 9(1) Patents Act 1992
There are three main requirements of patentability:
- Novelty
- Inventive Step
- Industrial Applicability
Term of Patent Protection
Article 36(1) PA 92: 20 years
Article 63(1) EPC: 20 years
TRIPS: 20 years
Supplementary Protection Certificates (SPCs): Available for pharmaceuticals to make up for the time taken in clinical trials while under patent protection (Maximum of 5 years)
The Patent Application
The application consists of:
- Abstract – 150 words. Usually used as a search tool.
- Description – summary of prior art and disclosure of the invention.
- Claims – define the scope of protection (are usually changed during the procedure)
- Drawings – visual representation of the claims, used for interpretation
- Search & Examination – The application is sent to an examining office which will conduct a search for prior art and examine the application for inventiveness and industrial applicability etc.
Phases of the International Patent System (PCT)
There are two phases:
- International phase
- National phase
No international patent granted – simplification of application only.
National Phase
National Phase:
- Reports sent to national offices
- Assist the national office in determining whether a patent should be granted
Novelty
PA 92:
Section 9(1)
An invention in all fields of technology shall be patentable under this Part if it is susceptible of industrial application, is new and involves an inventive step.
Section 9(2)
Any of the following in particular shall not be regarded as an invention within the meaning of subsection (1):
(a) a discovery, a scientific theory or a mathematical method,
(b) an aesthetic creation,
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer,
(d) the presentation of information.
Section 9(3)
The provisions of subsection (2) shall exclude patentability of subject-matter or activities referred to in that subsection only to the extent to which a patent application or patent relates to such subject-matter or activities as such.
Novelty - What is new ?
Section 11(1) Patents Act 1992:
An invention shall be taken to be new if it does not form part of the state of the art.
Section 11(2) Patents Act 1992:
The state of the art shall be held to comprise everything made available to the public (whether in the State or elsewhere) by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application.
Test for knowing if the invention is novel
The task of determining whether an invention is novel can be broken down into three questions:
1. What is the invention?
2. What information is disclosed by the prior art?
3. Is the invention novel in light of this? i.e. is the invention part of the state of the art?
EPO Approach to Novelty
If the prior invention has been “made available”
UK Approach to Novelty
Synthon v Smithkline Beecham [2006] RPC 10, enabling disclosure consists of two separate requirements which need to be fulfilled if an objection of lack of novelty is to succeed.
These are:
- Prior disclosure - for the purpose of disclosure, the prior art must disclose an invention which, if performed would necessarily anticipate the patent. If it is an inevitable consequence of following the information disclosed in the prior art that the invention is made, the invention will have been disclosed. If the instructions probably, normally, or only sometimes produce the product there will be no anticipation.
- Enablement - a disclosure will be enabling and thus destroy novelty if the public is given sufficient information to enable the invention to be ‘worked’. The person skilled in the art is assumed to be willing to make trial and error experiments to get it to work without additional inventive activity.
Irish approach to novelty
Wavin Pipes Ltd v Hepworth Iron Co Ltd [1982]
“To determine whether a patentee’s claim has been anticipated by an earlier publication, it is necessary to compare the earlier publication with the patentee’s claim … if the earlier publication … discloses the same device as the device which the patentee by his claim … asserts that he has invented, the patentee’s claim has been anticipated, but not otherwise … When the prior inventor’s publication and the patentee’s claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and the expressions used in the art and so forth, the question whether a patentee’s claim is new … falls to be decided as a question of fact. If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty…”
Inventive step - Pozzoli test
- Step 1: Identify the person skilled in the art and their relevant common general knowledge (CGK)
- Step 2: Identify the inventive concept of the claim in question or if that cannot readily be done, construe it
- Step 3: Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept
- Step 4: Viewed without any knowledge of the alleged invention claimed, do those differences constitute steps which would have been obvious to the person skilled in the art?
