Patent Law (UK) - Exlusions Flashcards
An overview of exclusions in patent law.
What does TRIPS Article 27(1) establish?
Patents must be granted for all new inventions that meet novelty, inventive step, and industrial application criteria.
Explanation: TRIPS Article 27(1) mandates non-discrimination in patent eligibility for all fields of technology, provided these core criteria are met.
What is required for an invention to demonstrate industrial applicability under the Patents Act 1977 and EPC Article 57?
It must operate within an industrial or agricultural context.
Explanation: Industrial applicability covers any practical use, including agriculture, as defined by the broad interpretation in UK and European laws.
What is the key focus of the “balancing test” in evaluating ordre public or morality exclusions?
Advantages to society versus ethical concerns like suffering or harm.
Explanation: The Oncomouse/Harvard case highlighted the use of a balancing test to weigh societal benefits of an invention against moral risks and harm.
Which case allows the patenting of transgenic animals under specific requirements?
Oncomouse/Harvard Case (T 19/90).
Explanation: This case allowed patentability of transgenic animals provided the invention wasn’t restricted to a specific animal variety.
When are surgical methods excluded as a claim under medical methods in EPC Article 53(c)
Surgical methods are excluded when they involve high risk or invasive procedures, as indicated in cases like Blood Flow Measurement.
For e.g. blood reintroduction after circulation outside the body for testing.
The TRIPS Agreement requires non-discrimination for patent rights based on the country where the product was created.
True or False
True
Explanation: TRIPS Article 27(1) prohibits discrimination based on the place of invention or production.
An invention must operate under physical laws to demonstrate industrial application.
True or False
True
Explanation: Industrial applicability rejects inventions that contradict established laws of physics (e.g., perpetual motion).
The exclusion of a scientific discovery from patent eligibility can be overcome if the discovery provides a useful application.
True or False
True
Explanation: Discoveries with practical applications, such as in Genentech Inc(1985), can be patentable.
Computer programs cannot be patented unless they produce a technical effect extending beyond mere data processing.
True or False
True.
Explanation: Technical effects make computer programs patentable, as seen in COMVIK cases.
Biological processes for breeding plants and animals are patentable under TRIPS Article 27(3)(b).
True or False.
False
Explanation: Such processes are explicitly excluded unless they involve non-biological or microbiological techniques.
What are the steps involved in the Aerotel test to identify excluded subject matter?
- Properly construe the claim.
- Identify the actual contribution.
- Determine if it falls solely within excluded categories.
- Check whether the contribution is technical in nature.
What does the Patents Act of 1977 Section 1(3) state regarding ordre public and morality exclusions?
It prohibits patents for inventions whose exploitation would be contrary to public policy or morality.
Prohibitions cannot be based solely on unlawful exploitation (e.g., inventions contrary to environmental safety).
Why are diagnostic methods typically excluded under European patent law, and what conditions must be met to qualify as such an exclusion?
Diagnostic methods are excluded to ensure free use in medical practice. To qualify, all diagnostic phases (data collection, comparison, deviation identification, and clinical diagnosis) must involve the human or animal body.
Explain the difference between ‘Swiss form’ and the modern purpose claims used in medical method patents under EPC Article 54(5).
Swiss form: “Use of X for preparing a medicament to treat Y.”
Modern claim: “X for use in treating Y.”
Modern claims are clearer and no longer rely on manufacturing language.
