Patent Statutes

Question 1

Article 53, EPC 2000

[Excluded Subject Matter/Bio]

Answer 1

European patents shall not be granted in respect of:

(a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such 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;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
(c) methods for treatment of 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 products, in particular substances or compositions, for use in any of these methods.

Question 2

Article 6, Biotech Directive 98/44

[Excluded Subject Matter/Bio]

Answer 2

1. Inventions shall be considered unpatentable where their commercial exploitation would be contrary to ordre public or morality; however, exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation. [Art 53(a), EPC 2000]
2. On the basis of paragraph 1, the following, in particular, shall be considered unpatentable:
   (a) processes for cloning human beings;
   (b) processes for modifying the germ line genetic identity of human beings;
   (c) uses of human embryos for industrial or commercial purposes;
   (d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

Question 3

Article 52, EPC 2000

[Excluded Subject Matter]

Answer 3

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

Question 4

Article 1(2) UK Patents Act 1977

[Excluded subject matter]

Answer 4

t is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—

(a) a discovery, scientific theory or mathematical method;
(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;
(d) the presentation of information;

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 5

Article 2(1)(2)(3), EPC 2000

[Novelty]

Answer 5

2(1) An invention shall be taken to be new if it does not form part of the SotA.

2(2) The SotA in the case of an invention shall be taken to comprise all matter (product, process, information about either or anything else), which at any time before the PD of the invention has been made available to the public (UK or elsewhere), whether by written or oral description, by use or in any other way.

2(3) The SotA in the case of an invention to which a patent or patent application relates shall also be taken as to comprise matter contained in an application for another patent that was published AFTER the PD of that invention, wherein: (a) the matter contained in the published application was that which was contained in its application; and (b) the PD of the published matter was earlier than that of the invention.

Question 6

UK PA 14(3)

[Suffiency]

Answer 6

The specificiation of an application must be disclosed in a manner that is clear enough and complete enough for the PSintheA to perform the invention.

Question 7

UK PA 14(5)

[Claims]

Answer 7

The claims shall:

(a) define the matter for which protection is sought
(b) be clear and concise
(c) be supported by the description
(d) relate to 1 invention, or 1 group of inventions that are linked by a single inventve concept.

Question 8

Art 83, EPC 2000

[Sufficiency]

Answer 8

The patent application must be sufficiently clear and complete for it to be carried out by the PSA.

Question 9

UK PA 76(1)

[Added Matter]

Answer 9

(1) Where, in relation to an application for a patent:
(a) a reference to an earlier relevant application has been filed AND
(b) the description discloses additional matter extending beyond that disclosed in the earlier relevant application.

shall not be allowed to proceed unless it is amended so as to exclude additional matter.

Question 10

UK PA 76(2)

[Added Matter]

Answer 10

No amendment of the application for a patent shall be allowed if it results in the application disclosing additional matter extending beyond that disclosed in the application as originally filed.

Question 11

UK PA 76(3)

[Added Matter]

Answer 11

No amendment of a specification of a patent shall be allowed if it:

(a) results in the specification disclosing additional matter.
(b) extends the protection conferred by the patent

Question 12

UK PA 64(1)(2)(3)

[(Secret) Prior Use]

Answer 12

1. Where a patent is granted for an invention, a person who in the UK before the PD of the invention:

(A) does in GOOD FAITH an act which would constitute and infringement of the patent if it were in force.

(B) makes in good faith effective and serious preparation to do such an act

Has the right to do or continue to do the act, notwithstanding the grant of the patent; BIG BUT this does not extend to granting another person a licence.

2. If the act was done in the course of business, the person of 64(1) may:

(A) authorise partners of theirs, in that business, to do the act

(B) assign the right, transmits the right upon death to anyone who acquires that part of the business

3. Where the product was disposed of (by exercise of (1) or (2)) the receiving party may deal with the product as if it had been disposed of by the registered proprietor.

Question 13

UK PA 72(1)

[Grounds for revocation]

Answer 13

(A) The invention is not a patentable invention

(B) The patent was granted to a person who was noted entitled to be granted that patent

(C) The patent spec does not disclose the invention sufficiently (clear enough nor complete enough for the PSA to perform the invention without undue burden)

(D) There is added matter which extends to scope of protection sought in the application.

(E) There was an improper amendment that extended the scope of protection.

Question 14

UK PA 15(1)

[Date of Filing]

Answer 14

Date of filing will be the earliest date at which the patent office receives:

(A) documents indicating that a patent is sought;

(B) documents identifying the person applying for a patent, or documents that contain information sufficient for that person to be contacted by the patent office;

(C) documents containing either (i) a description of the invention for which a patent is sought or (ii) a reference, complying with relevant rules, to an earlier relevant application made by the applicant or a predecessor of their title.

Question 15

UK PA 15(2)

[Date of Filing: Who even cares about the details]

Answer 15

It is immaterial for the purposes of section 15(1)(c)(i) whether the thing is:

(A) in, or accompanied by a translation into, a language accepted by the patent office

(B) otherwise complies with the other provision of the patents acts and any relevant rules.

Question 16

UK PA 36(1)

[Co-ownership]

Answer 16

Where a patent is granted to 2om persons, each of them shall be entitled to an equal undivided share of the patent in the absence of an agreement to the contrary.

Question 17

UK PA 36(3)

[Co-ownership]

Answer 17

For the time being in force, when 2om persons are the proprietors of a patent, one of them shall not without the consent of the others:

(A) amend the spec or apply to amend the spec, or apply for the patent to be revoked.

(B) grant a licence under the patent or mortgage a share in the patent or in Scotland cause or permit security to be granted over it.

Question 18

UK PA 20(A)(2)

[Reinstatement of terminated patent application]

Answer 18

A comptroller shall reinstate an application if:

(a) the applicant requests it
(b) the request complies with the relevant rules
(c) the comptroller is satisfied that the failure to comply was unintentional.

Question 19

Art 69 EPC (1)(2)

[Scope]

Answer 19

(1) The extent of protection conferred by a patent is determined by the claims. However, the description and pictures can be used to interpret the claims.
(2) Before grant, the extent of protection is conferred by the claims, but after grant, the extent may be updated retroactively based on amendments, oppositions, limitations, and revocations.

Question 20

UKPA 60(1)

[Direct Infringement:Product/Process]

Answer 20

A person infringes only if, while the patent is in force, they do any of the following things IN THE UK in relation to the invention without the consent of the proprietor:

(A) where the invention is a product, M, D, Od, U, I, K (for disposal or otherwise)

(B) where the invention is a process, O, Ou when they know or it is obvious for a reasonable person to know that use in the UK without consent would be infringement.

(C) where the invention is a process, D, Od, U, I, K any product obtained directly by means of that process.

Question 21

UKPA 60(2)(3)

[Indirect Infringement:Supply]

Answer 21

(2) A person also infringes if, while the patent is in force and without the consent of the proprietor:
S, Os IN THE UK to someone who isn’t a licensee or entitled to work the invention, an essential element of the invention for putting the invention into effect when they know, or it would be obvious to know, that those means are suitable for putting the invention into effect in the UK.

(3) UKPA 60(2) doesn’t apply to the S or Os of staple commercial products, unless the person to whom the S or Os is made to infringe under UKPA60(1).

Question 22

UKPA 60(5)

[Infringement: Permitted Acts]

Answer 22

3 ex’s, Pc, Aircraft, Harvest

(a) private and non-commercial;
(b) experimental purposes relating to the subject matter of the invention;
(c) extemporaneous prep in a pharmacy of a medicine for an individual in accordance with a prescription given by a registered medical practitioner.
(d) use exclusively for the needs of a relevant ship and/or it’s accessories, where the ship has temporarily/accidentally entered UK waters.
(e) use of a product or process in the body of a aircraft/hovercraft/vehicle that is temporarily/accidentally in the UK
(f) use of an exempted aircraft that’s lawfully entered/crossing the UK, or the importation and use/storage of the aircraft and/or its accessories into the UK
(g) use by a farmer of the product of their harvest for propagation or multiplication by them on their own holding, where there has been a sale of plant propagating material to the farmer by the proprietor of the patent or with their consent for agricultural use
(h) same as harvest but for animal/animal reproductive material and breeding stock (no land requirement).

Question 23

UKPA 7(2)

[Entitlement]

Answer 23

A patent may be granted for:

(a) the inventor or joint inventor;
(b) some who was at the time of making of the invention entitled to it;
(c) the successor(s) in title of anyone mentioned in (a) or (b);

and no other person.