Patent Law

Question 1

Asahi Kasei Kogyo (1991)

Answer 1

1) a description in an earlier application which contained no enabling disclosure (i.e. did not disclose the invention in a way which enabled it to be performed by a person skilled in the art) did not “support” the invention so as to enable it, as an invention, to claim priority from the date of that application, under s.5(2)(a) of the 1977 Act;
3) for anticipation under s.2(2), published information needed to contain an enabling disclosure

Question 2

Nestec SA v Dualit Ltd (2013)

Answer 2

In deciding that a manufacturer had not infringed a patent for a range of capsule-based coffee machines by producing capsules compatible with the machines, the court considered the interpretation and application of the phrases “means relating to an essential element of the invention” and “staple commercial products” in the Patents Act 1977 s.60.

Question 3

Chiron v. Murex (1996)

Answer 3

Test for useful purpose when determining industrial applicability.

Question 4

Eli Lilly & Co v Human Genome Sciences Inc (2012)

Answer 4

A claim in a patent for an antibody that bound specifically to a human protein called Neutrokine-a was sufficient and was not to be read as subject to a further limitation that the antibody should be “useful”, assuming that that had a sufficiently precise meaning. Claims for pharmaceutical and diagnostic compositions were claims to products, not uses, and were also sufficient.

Question 5

MEDI-PHYSICS/Treatment by surgery (G1/07)

Answer 5

A claimed imaging method consisting of a substantial physical intervention on the body, which required professional medical expertise to be carried out and entailed a substantial health risk even when carried out with the required professional care and expertise, was excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to the European Patent Convention 2000 art.53(c).

Question 6

CYGNUS/Diagnostic methods (G1/04)

Answer 6

Therapeutic and diagnostic methods - The President of the the European Patent Office referred questions to the Enlarged Board of Appeal as to the scope of the exclusion from patentability for diagnostic methods practised on the human or animal body as contained in the European Patent Convention 1973 Art.52(4). The referral followed conflicting decisions by the Technical Board of Appeal.

Question 7

Vicom - Computer Related Invention (1987)

Answer 7

The use of ==technical character== as a way of determining whether an invention falls within the scope of the excluded subject matter is set out in the leading EPO decision of Vicom.169 In deciding that an application that related to a method of digitally filtering images using a device called an ‘operator matrix’, which aimed at producing enhanced images was patentable, the Technical Board of Appeal (TBA) stressed that even if the idea underlying an invention was a mathematical method, it could still be patentable if the invention as a whole made a technical contribution to the known art.

Question 8

Aerotel v. Telco Holdings (2007)

Answer 8

The Comptroller General urged the court to consider a four-stage approach in order to determine whether Art.52(2) applied, namely: to properly construe the claim; to identify the actual contribution; to ask whether it fell solely within the excluded subject matter, and to check whether the actual or alleged contribution was actually technical in nature.

Question 9

Symbian v Comptroller General of Patents (2009)

Answer 9

the proper approach to be taken was a staged approach that required the court to properly construe the claim, identify the actual contribution, and ask whether it fell solely within the excluded subject matter. There was no reason why that latter test should not involve asking whether the contribution could not be characterised as “technical”

Question 10

Pension Benefits Systems Partnership - Pension Benefit Systems (2002) expanded in Hitachi

Answer 10

Under the ‘any hardware’ approach (in its expanded form), an invention will not fall within any of the excluded categories in Article 52(2) if it embodies or is implemented by some technical means (such as a computer). This is the case even if the technical means are used in relation to a non-technical activity. In effect, under the ‘any hardware’ approach, the tribunal will stand back from the invention—whether a method or an apparatus—and ask whether it can be classified as a form of technology (irrespective of whether it is novel or inventive); all that matters is that the invention makes use of, or embodies, some form of technology (or hardware).

Question 11

Howard Florey/Relaxin v (Oppositions by Fraktion der Grünen Im Europäischen Parlament; Lannoye)

Answer 11

The Opposition Division of the EPO held that the invention was not a discovery and, as such, was not excluded from patentability. Following the EPO Guidelines, the Opposition Division said that because a process had been developed to obtain Relaxin and the DNA that encoded it they were patentable under Article 52(2). This was because the substance Relaxin had not previously been recognized, because the products were characterized by their chemical structure, and because the products had a use.

Question 12

Gale’s Application (1991)

Answer 12

1) a claim to electronic circuitry in the form of a ROM, distinguishable from other ROMs only by a sequence of instructions it contains, is not patentable because it constitutes a computer program; (2) G had devised an improvement in programming, not a new way of operating the computer in a technical sense and s.1(2) of the 1977 Act excluded it from the grant of a patent

Question 13

AT&T Knowledge Ventures {2009)

Answer 13

producing a different or better user interface was not a (relevant) technical effect.

Question 14

Fujitsu (1997)

Answer 14

it was held that the concept for performing a mental act should be construed widely to include all methods of the type performed mentally, even if the particular method in question would not be carried out by the human mind. This was because a method ‘remains a method for performing a mental act, whether a computer is used or not’.

Question 15

Halliburton Energy Services Inc’s Patent Applications (2011)

Answer 15

The correct scope of the “mental act” exclusion under the Patents Act 1977 s.1(2)(c) was a narrow one; its purpose was to make sure that patent claims could not be performed by purely mental means. The Comptroller’s Practice Note 2008, supporting a wide construction of the mental act exclusion, was wrong in law and should not be followed.

Question 16

Harvard/Onco-Mouse (1990)

Answer 16

Article 53(b) did not exclude the patenting of animals as such.

Question 17

Novartis - Transgenic Plant (2000)

Answer 17

according to Art.53(b) a patent was “in respect of plant varieties” if the claimed subject matter was directed to plant varieties and a claim that did not refer to specific varieties was not excluded

Question 18

Tomatoes II

Answer 18

a claim for a tomato fruit of the species Lycopersicon esculentum, which is naturally dehydrated, was not a ‘plant variety’ and thus not excluded by Article 53(b). What was important here was that the claimed tomatoes were not defined by a multitude of characteristics resulting in a given genotype, but only by one particular trait—that is, (natural) dehydration.

Question 19

Plant Genetic Systems - Glutamine synthetase inhibitors (1995)

Answer 19

a plant variety ‘is characterized by at least one single transmissible characteristic distinguishing it from other plant groupings and which is sufficiently homogeneous and stable in its relevant characteristics’.

Question 20

Oliver Brustle v. Greenpeace (2012)

Answer 20

A “human embryo” for the purposes of Directive 98/44 art.6(2)(c) was any human ovum after fertilisation, any non-fertilised human ovum into which the cell nucleus from a mature human cell had been transplanted, and any non-fertilised human ovum whose division and further development had been stimulated by parthenogenesis.

Question 21

International Stem Cell Corp v Comptroller General of Patents, Designs and Trade Marks (2014

Answer 21

Unfertilised human ova which, in contrast to fertilised ova, contains only pluripotent cells and were incapable of developing into human beings are not included within the term “human embryo” in Directive 98/44 art.6(2)(c) and thus uses of such an organism for industrial or commercial purposes could, as a rule, be patented.

Question 22

DUNS LICENSING ASSOCIATES/Estimating sales activity (T154/04)

Answer 22

Methods of business research were excluded from patentability under the European Patent Convention 2000 Art.52(2)(c) and Art.52(3).

Question 23

Synthon BV v. SmithKline Beecham (2006)

Answer 23

in Synthon. The patent in question identified and claimed a crystalline chemical. The prior art contained both a description of such a product and a recipe for making it. If the skilled person tried to follow the recipe using their ordinary skill and knowledge, they would have failed. The recipe as such was not enabling. But even without it, the skilled man would have been able, with a little trial and experiment, to make the described product. So the prior art satisfied both the ‘necessary result’ and the ‘enablement’ requirements.

Question 24

General Tire v Firestone

Answer 24

in determining whether or not a claim had been anticipated by an earlier publication, the publication and the claim had each to be construed as at their respective relevant dates by a reader skilled in the art, which reader could, if the art was one having a highly developed technology, be a team. If the prior publication contained a direction which was capable of being carried out in a manner which could infringe, but would be at least as likely to be carried out in a way which would not do so, the claim would not be anticipated, although it might be obvious;

Question 25

Merrell Dow v. Norton Healthcare (1996)

Answer 25

Secret use. Held, dismissing the appeal, that a chemical composition could be judged to be part of the state of the art only if it was part of a process which had been disclosed as a specification of an invention. The composition of acid metabolite was therefore not new because it was already part of the 1972 patent for terfenadine, even though it was not appreciated at the time the patent was granted. If the specifications of the patent were followed then the production of acid metabolite was inevitable and therefore it was not novel, which was the main precondition for the grant of a patent.

Question 26

Eisai - Second medical indication (1979-85)

Answer 26

In [[Eisai - Second medical indication (1979-85)]] the Board decided that as well as protecting first uses, Article 54(5) also applied to second and subsequent medical uses. The EBA went on to say, however, that this was conditional on the fact that claims were drafted in a style known as the ‘Swiss form of claims’. Basically, this meant that the patent had to claim the ‘use of a substance for the manufacture of a medicine for a specified new therapeutic use’. [[Swiss-type Claims]]

Question 27

Mobil - Friction Reducing Additive (1990)

Answer 27

Novelty of purpose confers novelty on a patent claim directed to a non-medical use, even if the technical realisation remains the same.

Question 28

G1/92 Availability to the Public (1993)

Answer 28

(i) The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
(ii) The same principle applies mutatis mutandis to any other product.

Question 29

Actavis UK Ltd v Merck & Co Inc (2008)

Answer 29

Swiss-type claims were allowable where the novelty was conferred by a new dosage regime or other form of administration of a substance. There was no clear ratio to the contrary in Bristol Myers Squibb Co v Baker Norton Pharmaceuticals Inc [2000] E.N.P.R. 230, [2000] 5 WLUK 659. Even if there was a clear ratio in Bristol Myers Squibb, in the special case of questions of law about patentability, the Court of Appeal should follow clear European Patent Office authority where it was contrary to the ratio of one of its own previous decisions, as an exception to the rule in Young v Bristol Aeroplane Co Ltd [1944] K.B. 718, [1944] 7 WLUK 50.

Question 30

Abbott Respiratory - Dosage regime (2010)

Answer 30

Where it was already known to use a medicament to treat an illness, the European Patent Convention 2000 art.54(5) did not exclude the patentability of that medicament be patented for use in a different treatment by therapy of the same illness; neither was patentability excluded where a dosage regime was the only feature claimed which was not comprised in the state of the art.

Question 31

Comvik - Two identities (2003)

Answer 31

Inventive step - requires the tribunal to: ascertain the technical field of the invention (which is used, amongst other things, to determine the field of expertise of the person skilled in the art); identify the closest prior art in the field; identify the technical problem that can be regarded as solved in relation to the closest prior art; and finally, ascertain whether the technical feature(s) that form the solution claimed could be derived by the skilled person in a manner obvious from the state of the art.

Question 32

Alcan - Aluminium alloys

Answer 32

Article 56 did not prescribe any one particular method for the assessment of inventive step.

Question 33

Pozzoli v BDMO (2007)

Answer 33

(1)
(a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require a degree of invention?

Question 34

Windsurfer International v Tabur Marine (1985)

Answer 34

Answering the question on obviousness required four steps to be taken:

• (i) identifying the inventive concept embodied in the patent;
• (ii) imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
• (iii) identifying the differences if any between the matter cited and the alleged invention; and
• (iv) deciding whether those differences, viewed without any knowledge of the *61 alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

Question 35

Comvik - Two identities (2003)

Answer 35

[The] skilled person will be an expert in a technical field. If the technical problem is concerned with a computer implementation of a business, actuarial or accountancy system, the skilled person will be someone in data processing, and not merely a businessman, actuary, or accountant.

Question 36

Haberman v Jackel International Ltd (1999)

Answer 36

Some insight into the thinking of those in the art at the priority date could be provided by evidence of commercial success. To be of value in helping to determine whether a development was obvious or not the following matters were relevant:

(a) What was the problem which the patented development addressed?
(b) How long had that problem existed?
(c) How significant was the problem seen to be?
(d) How widely known was the problem and how many were likely to have been seeking a solution?
(e) What prior art would have been likely to be known to those expected to have been involved in finding a solution?
(f) What other solutions were put forward in the period leading up to the publication of the patentee’s development?
(g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious?
(h) How well had the patentee’s development been received?
(i) To what extent could it be shown that the commercial success was due to the technical merits of the development?

Question 37

Beloit v Valmet (1997)

Answer 37

Evidence that a fact was known or even well known to a witness did not establish that that fact formed part of the common general knowledge. Neither did it follow that it would form part of the common general knowledge if it was recorded in a document. The first and most important step was to look at the sources from which the notional skilled addressee could have acquired his information, varying from instruction at university to description in obscure patent specifications. Whatever the source, it was necessary to have in mind the observations of the Court of Appeal in General Tire. The mere fact that a concept had not been used did not mean that it could not have formed part of the common general knowledge, but it made it unlikely.

Question 38

Technip France SA’s Patent (2004)

Answer 38

Test for person skilled in the art and expert witness. The person skilled in the art is a nerd and could be a team of nerds.

Question 39

Schlumberger Holdings Limited (a company incorporated in the British Virgin Islands) v Electromagnetic Geoservices as (a company incorporated in Norway)

Answer 39

A dispute about patents for electromagnetic seabed surveying. A key issue in the case was the identity of the person skilled in the art. Both the High Court and the Court of Appeal considered this topic in detail, the Court of Appeal giving a judgment, as surprising as it was unexpected, that the person skilled in the art could be different for the purposes of obviousness and sufficiency. This was despite Jacob LJ, the leading member of the Court of Appeal on this case, having said the exact opposite previously. The case settled on appeal to the Supreme Court so the correctness of the Court of Appeal decision remains unresolved.

Question 40

Human Genome Sciences v. Eli Lilly (2011)

Answer 40

Applying Human Genome Sciences v. Eli Lilly (2011) identification of a proposed function of a gene or protein based on homology will be enough to give rise to industrial applicability according to the Supreme Court.

Question 41

Generics (UK) Ltd v H Lundbeck A/S (2009)

Answer 41

The reasoning of Lord Hoffmann in Biogen Inc v Medeva Plc [1997] R.P.C. 1, [1996] 10 WLUK 486 was limited to the very unusual nature of the claim in that case and did not apply to any product claim. A patent whose claim related to a product rather than a method was not liable to revocation on the ground of insufficiency under the Patents Act 1977 s.72(1)(c) even if the only inventive step consisted in the method by which the product was made available and even if its description and specification disclosed only that inventive method.

Question 42

Biogen v Medeva (1997)

Answer 42

insufficient disclosure - There was more than one way in which the breadth of a claim might exceed the technical contribution to the art embodied in the invention. The patent might claim results which it did not enable, such as making a wide class of products when it enabled only one of those products and disclosed no principle which would enable others to be made. Or it might claim every way of achieving a result when it enabled only one way and it was possible to envisage other ways of achieving that result which made no use of the invention ( page 51 ).

Question 43

Exxon - Fuel Oils (1994)

Answer 43

2. To fulfil Article 83, the application must contain sufficient information to allow a person skilled in the art, using his common general knowledge, to carry out the invention within the whole area that is claimed.
3. The question whether the disclosure of one way of performing the invention is sufficient to enable a person skilled in the art to carry out the invention in the whole claimed range is a question of fact to be determined in each individual case on the available evidence and balance of probabilities.

Question 44

Kirin-Amgen v Hoechst Marion Roussel Ltd (2005)

Answer 44

The claims of a patent should be construed under the Protocol on the Interpretation of the European Patent Convention Art.69 in a way which attempted so far as possible to give the patentee the full extent, but no more than the full extent, of the monopoly which the person skilled in the art would think he was intending to claim.

Question 45

Catnic Components Ltd. v. Hill & Smith Ltd. (1982)

Answer 45

Claims should be read purposively rather than literally

Question 46

Improver Corp v Remington Consumer Products Ltd (1990)

Answer 46

(1) That, if the issue was whether a feature embodied in the alleged infringement which fell outside the primary, literal or acontextual meaning of a descriptive word or phrase in the claim (“a variant”) was nevertheless within its language as properly interpreted, the court should ask itself the following questions (“Lord Diplock’s three questions”):
(i) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no:—
(ii) Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes:—
(iii) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

Question 47

Schütz v Werit (2013)

Answer 47

The mere fact that an activity involved replacing a constituent part of an article did not mean that the activity involved “making” a new article rather than repairing it.

Question 48

United Wire Ltd v Screen Repair Services (Scotland) Ltd (2000)

Answer 48

[A]‌s a matter of ordinary language, the notions of making and repair may well overlap. But for the purposes of the statute, they are mutually exclusive. The owner’s right to repair is not an independent right conferred upon him by licence, express or implied. It is a residual right, forming part of the right to do whatever does not amount to making the product.

Question 49

Actavis v Lilly (2017)

Answer 49

(i) notwithstanding that it was not within the literal meaning of the relevant claim of the patent, the variant achieved substantially the same result in substantially the same way as the inventive concept revealed by the patent; (ii) to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieved substantially the same result as the invention, it would be obvious that the variant did so in substantially the same way as the invention; and (iii) such a person skilled in the art would have concluded that the patentee none the less intended that strict compliance with the literal meaning of the relevant claim of the patent was an essential requirement of the invention; that in order to establish infringement in a case where there was no literal infringement, a patentee would have to establish that the answer to the first two questions was “yes” and that the answer to the third question was “no”

Question 50

Grimme Landmaschinenfabrik GmbH & Co KG v Scott

Answer 50

example of indirect infringment, also an example of claims being contrued too widely.

Question 51

Rhone-Poulenc Rorer International Holdings Inc v Yeda Research & Development Co Ltd

Answer 51

[[Section 7(2) and (3) of the Patents Act 1977]] and [s.7(3)] provided an exhaustive code for determining who was entitled to the grant of a patent. The first step in any dispute over entitlement was to decide who the inventor of the claimed invention was. The inventor was the actual deviser of the invention. The effect of [[Section 7(4) of the Patents Act 1977]]was that a person who sought to be added as a joint inventor bore the burden of proving that he contributed to the inventive concept underlying the claimed invention, and a person seeking to be substituted as sole inventor bore the additional burden of proving that the inventor named in the patent had not contributed to the inventive concept. There was nothing in the statute that said that entitlement depended on anything other than being the inventor. There was no justification, in a dispute over who was the inventor, for importing questions of whether one claimant had some personal cause of action against the other. Whilst the result in Markem was the correct one, the broad principle laid down therein, that any claim to entitlement to a patent, even by someone claiming simply to have been the inventor, required reliance upon “some other rule of law”, was wrong, Markem overruled. The first set of amendments was, therefore, unnecessary.

Question 52

IDA Ltd v University of Southampton

Answer 52

Where two patents for an insect trap were essentially the same apart from the use of a different material, the person who had suggested the use of the new material was the sole devisor of the new invention because the inventive step had been his idea.

Question 53

Henry Brothers v The MOD (1999)

Answer 53

Where an invention consisted of a combination of elements, it was not right to divide up the claim and then seek to identify who had contributed which element. One must seek to identify who in substance had been responsible for the inventive concept, namely the combination: whose idea it had been which turned a useless collection of elements into something which would work.

Question 54

Kelly v GE Healthcare Ltd

Answer 54

Where two research scientists had devised an invention which was later patented, and that patent had been of outstanding value to their employer, it was just that they should receive an award of compensation under the Patents Act 1977 s.40 amounting to a total of three per cent of the value of the benefit of the patent to the employer.

Question 55

Coco v AN Clark Ltd (1968)

Answer 55

the plaintiff must prove:

1. that the information was confidential
2. that the circumstances imposed an obligation of confidence
3. that there was unauthorised use of the information

Question 56

CMI Centers for Medical Innovation v Phytopharm (1999)

Answer 56

Trade secrets must be identified with precision in any action to enforce.

Question 57

Faccenda Chicken Ltd v Fowler (1986)

Answer 57

(1) an ex-employee did not owe the same duty of fidelity as an employee, and confidential information short of a trade secret was not protected, so long as the ex-employee had not abused his duty of fidelity whilst an employee by memorising or recording it then. Furthermore, such information short of a trade secret could not be protected by a restrictive covenant; (2) in considering whether information was a trade secret or the equivalent of a trade secret, the court should have regard to (a) the nature of the employment and the status of the employee, (b) the nature of the information, (c) whether the employer had stressed the confidentiality of the information to the employee and (d), whether the information could be isolated from other non-confidential information.