Patent Protection Flashcards
Synthon v SmithKline Beecham
On considering the concept of enabling disclosure in a patent specification a clear distinction should be made between the “disclosure” element and the “enablement” requirement. For assessing disclosure “the prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. For enablement - would a skilled person be willing to conduct trial and error experiments to get the invention to work?
Windsurfing/Pozzoli
Approach to non-obviousness step - identification of a person skilled in the art, identification of inventive concept of the claim in question, identification of differences between the above and the state of the art, do these differences appear obvious to a person skilled in the art? Can consider - exercise of mental labour and effort, technical improvement which is also commercially feasible, no reasonable expectation of success of invention, overcoming obstacles to realisation of final goal, unexpected result.
Oncomouse
EPO technical board of appeal - inappropriate for technicians to deal with morality/public order issues. Application of Art 53(a) would require a careful weighing up of the suffering of the animals and the possible risks to the environment on the one hand, and the potential usefulness to mankind on the other. Approach not endorsed by Examining Division.
Transgenic Animals
EPO technical board of appeal - oncomouse test is appropriate, allows matter other than animal suffering and medical benefit to be taken into account (such as availability of non-animal methods and possible risks to the environment). Rejected consideration of degree of suffering - distasteful to attempt to distinguish between acceptable and non-acceptable pain,
Brustle
No definition in Biotech directive for human embryos - yet (1) need for autonomous and uniform EU definition, and (2) need for broad definition.
Any human ovum, as soon as fertilised, must be regarded as a human embryo. Classification must also apply to ovums where a mature human cell has been transplanted into them, or ovums where the division and further development has been stimulated by parthenogenesis, not been the object of fertilisation but they might be capable of becoming human beings.
International Stem Cell
An unfertilised human ovum which has been subject to parthenogenesis does not constitute a human embryo, doesn’t in itself have capability to become human being.
Lux Traffic Controls v Pike Signals
Product had been made available to the public in a paper, by oral disclosure and by use of a prototype tested on the public. Held - prior publications must contain clear and unmistakable instructions to do what the patentee claims to have invented. Where prior use is concerned, was person of skill free in law and equity to examine product, and would they have been able to understand the inventive concept?
Conor Medsystmes v Angiotech Pharmaceuticals
Application said drug “might” work, objection to application contended that any skilled person could say that a drug “might” work and there wasn’t an inventive step, sufficient to show that it was plausible.
Human Genome Sciences v Eli Lilly
Application lacked specific information on potential uses of the information. Held - where a new substance has a plausible claimed use, this can satisfy industrial application requirement.
