Brainscape's Knowledge GenomeTM

Browse over 1 million classes created by top students, professors, publishers, and experts.


See full index

FD1 Right to apply for and obtain a patent and be mentioned as inventor (7-13) > Patentability (1-6) > Flashcards

Patentability (1-6) Flashcards

1
Q

Section 1 (2) states what and is not what?

A

It 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.

NOT exhaustive list

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
2
Q

What section outlines exclusions based upon methods of treatment or diagnosis?

A

Section 4A

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
3
Q

Schedule A2 ‘Biotech Inventions’ excludes what from patentability?

A

human body + genes discovered in it (though an isolated gene may be patented in conjucntion with an IA of it)

cloning humans

modifying human germ line

industrial or commercial exploitation of human embryos including stem cells where harvested from embryos (parthenotes [being non-viable due to lack of paternal DNA] are not excluded.

genetic modifications of animals likely to cause suffering without significant medical benefits arising; patenting the animals themselves

inventions relating to individual plant or animal varieties (covered by UPOV).

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
4
Q

Schedule A2 explicitly states that an invention shall not be considered unpatentable simply because

A

it concerns a product comprising biological material, or a process using, producing or processing biological material.

it similarly allows patentability of biological material isolated from its natural environment by a technical process.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
5
Q

The exclusions to patentability set out in Section 1(2) are limited to where the invention relates to those things ‘as such’.

What is the current process for determining whether a claim is related to an excluded category as such?

A

Aerotel/Macrossan [2006]

i. Properly construe the claim;
ii. Identify the actual contribution;
iii. Ask if this fall solely within an exclusion;
iv. (Check if the actual contribution is technical)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
6
Q 
Section 2 (3) a)b) 
Matter in patents/patent applications having an earlier priority date than an inventions application, but published on or after its own priority date, constitutes what type of art?
A

Novelty only prior art, not to be used for assessment of inventive step

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
7
Q

There is a 6 month window in the UK for disclosure which was unlawful/breach of confidence/exhibition at official international exhibition.

What section of the PA details this?

A

Section 2(4)

RE international exhibits, must state on filing this has occured and supply supporting evidence within 4 months of filing (R5)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
8
Q

Which of the following is and isnt Section 2(3) novelty only prior art?

All published on or after your priority date (but with their own priority dates earlier than yours)

GB application
EP application
PCT application validly entering GB national phase
PCT application not entering GB national phase
PCT entering EP regional phase
Any other non-GB, EP or PCT application

A

GB application - YES (except for its abstract, which is not part of the state of the art for purposes of Section 2(3) - see Section 14(7)

EP application - YES

PCT application validly entering GB national phase - YES

PCT application not entering GB national phase - NO

PCT entering EP regional phase - YES

Any other non-GB, EP or PCT application - NO

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
9
Q

Does an EP application filed after 13/12/2007 with the GB designation withdrawn prior to publication count as Section 2(3) novelty only prior art?

A

For EP applications filed after 13/12/2007, even if the GB designation is withdrawn before publication then that publication is still Section 2(3) art as all states are automatically designated by default and hence any EP application with an earlier priority and later publication is treated as citable for Section 2(3).

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
10
Q

For s2(3) novelty-only prior art, ‘published’ means what?

A

It means validly published - an application is not validly published if a request for withdrawal of the application was receieved too late to prevent publication. The purpose of s2(3) is to prevent double patenting which withdrawal also avoids.

However, for applications after such an invalida publication it is still citable under s2(2), as it has nonetheless been made available to the public.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
11
Q

Section 2(3) novelty only prior art also counts when an earlier application has been kept secret/prior publication prevented under what section?

A

Section 22(3).

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
12
Q

The deadline under Section 2(4) is six months before the filing date of what?

A

The UK application - irrespective of any priority filing made elsewhere after the disclosure.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
13
Q

Section 2(4)

A

There is a 6 month window in the UK for disclosure which was unlawful/breach of confidence/exhibition at official international exhibition.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
14
Q

When using Section 2(4)(c) WRT to a PCT(GB), an applicant must inform the receiving Office of any exhibition on filing, and must then provide the UKIPO with confirmatory evidence within what period of time from entry into the national phase?

A

within two months

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
15
Q

Aerotel/Macrossan [2006]

A

Exclusions to patentability set out in Section 1(2) are limited to where the invention relates to those things ‘as such’.

i. Properly construe the claim;
ii. Identify the actual contribution;
iii. Ask if this fall solely within an exclusion;
iv. (Check if the actual contribution is technical)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
16
Q

Section 4A

A

exclusions based upon methods of treatment or diagnosis

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
17
Q

Schedule A2

Industrial or commercial exploitation of human embryos including stem cells where harvested from embryos (_________ [being non-viable due to lack of paternal DNA] are not excluded).

A

industrial or commercial exploitation of human embryos including stem cells where harvested from embryos (parthenotes [being non-viable due to lack of paternal DNA] are not excluded.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
18
Q

When using Section 2(4)(c) WRT to a PCT(GB), an applicant must inform the receiving Office of any exhibition on filing, and must then provide the UKIPO with confirmatory evidence within _________ from entry into the national phase.

A

two months

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
19
Q

What did Emson v Hozelock [2019] say about public disclosure?

A

Availability to public must be reasonable; for example, if it required ‘the public’ to loiter deliberately or visit on multiple occasions in order to glean an enabling disclosure, then this would not be considered a public disclosure.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
20
Q

Case law for public disclosure required to be enabling

A

Lux Traffic [1993], Asahi [BL O/98/89]

Test is whether enough information is revealed to enable a person in the relevant field to replicate the invention.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
21
Q

Availability to public must be reasonable; for example, if it required ‘the public’ to loiter deliberately or visit on multiple occasions in order to glean an enabling disclosure, then this would not be considered a public disclosure.

A

Emson v Hozelock [2019]

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
22
Q

What is the test derived in T1553/06 (Phillips) WRT the possibility that a document may be online but unfindable by public?

A

A document having its own URL is available to the public if -

i. it can be found using a public search engine and keyword(s) related to ‘the essence of the content of the document’; and
ii. it remains online long enough for a member of the public to have direct and unambiguous access to the document.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
23
Q

Lux Traffic [1993], Asahi [BL O/98/89]

A

Case law for public disclosure required to be enabling

Test is whether enough information is revealed to enable a person in the relevant field to replicate the invention.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
24
Q

Case law for emails not being made available to the public just by virtue of being conveyed via the internet

A

T2/09 (Phillips)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
25
Q

A document having its own URL is available to the public if -

i. it can be found using a public search engine and keyword(s) related to ‘the essence of the content of the document’; and
ii. it remains online long enough for a member of the public to have direct and unambiguous access to the document.

A

T1553/06 (Phillips)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
26
Q

A breach of confidence requires an ‘___ __ _______’ at the time that the infromation is imparted or acquired that causes the recipient to understand that the information is confidential.

A

Air of confidence

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
27
Q

When there is no air of confidence and a disclosure has occured an inventor may not get a patent in the UK, what other options are there?

A

There is a one-year grace period for UK and European designs, which may provide some last-resort complementary protection.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
28
Q

T2/09 (Phillips)

A

Case law for emails not being made available to the public just by virtue of being conveyed via the internet

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
29
Q

T1553/06 (Phillips)

A

A document having its own URL is available to the public if -

i. it can be found using a public search engine and keyword(s) related to ‘the essence of the content of the document’; and
ii. it remains online long enough for a member of the public to have direct and unambiguous access to the document.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
30
Q

What used to be the default assessment for inventiveness?

A

Windsurfing v Tabur Marine [1985]

Then slightly reformulated in Pozzoli v BDMO [2007]

31
Q

Pozzoli v BDMO [2007]

A

Reformulated test for inventiveness from Windsurfing v Tabur Marine [1985]

32
Q

What are the reformulated Windsurfing v Tabur Marine [1985] steps from Pozzoli v BDMO [2007]?

A

i. identify the notional PSA and the relevant CGK of that person;
ii. identify or construe the inventive concept in the claim;
identify what, if any, differences there are between the material forming the state of the art and the invention as identified or construed; and
decide, without any knowledge of the proposed invention as claimed, whether these differences would have been obvious to the skilled person or whether they required any defree of invention.

33
Q

Windsurfing v Tabur Marine [1985]

A

old test for inventiveness, reformulated in Pozzoli v BDMO [2007]

34
Q

Virgin Atlantic Airways v Premium Aircraft Interiors UK [2009]

A

Previous failure of anyone to implement a simple alternative seating pattern for aircraft suggested its inventiveness.

35
Q

Section 4 details industrial applicability (IA), for the specific case of gene sequences, what is required to confer IA?

A

Section 4: IA, for the specific case of gene sequences, a plausible use for the resulting protein is required to confer IA. Eli Lilly v Human Genome Sciences [2011].

The use must then actually occur in a subsequent product for that product to also be patentable - see Monsanto v Cefetra C-428/08.

36
Q

Section 4A:

A

Methods of treatment or diagnosis

37
Q

Previous failure of anyone to implement a simple alternative seating pattern for aircraft suggested its inventiveness.

A

Virgin Atlantic Airways v Premium Aircraft Interiors UK [2009]

38
Q

Monsanto v Cefetra C-428/08

A

Section 4: IA, for the specific case of gene sequences, a plausible use for the resulting protein is required to confer IA. Eli Lilly v Human Genome Sciences [2011].

The use must then actually occur in a subsequent product for that product to also be patentable - see Monsanto v Cefetra C-428/08.

39
Q

Section 4A details that a patent shall not be granted for methods of treatment of human/animal body by surgery or therapy, methods of diagnosis practiced on the human/animal body, however what is allowed?

A

Substances and compositions for use in such methods are allowed. The use of a substance or composition in such a method is considered new even if the substance or composition is known in the art.

A further specific use of a known substance for such a method is considered new if the specifc use is new.

40
Q

Eli Lilly v Human Genome Sciences [2011]

A

Section 4: IA, for the specific case of gene sequences, a plausible use for the resulting protein is required to confer IA.

The use must then actually occur in a subsequent product for that product to also be patentable - see Monsanto v Cefetra C-428/08.

41
Q

Which of the following falls under S4A?

A method purifying donated blood plasma to go in packs.

A method of purifying a patients blood through a dialysis machine.

A

A method purifying donated blood plasma to go in packs. NO

A method of purifying a patients blood through a dialysis machine. YES

42
Q

Are purely cosmetic treatments excluded from patentability under S4A?

A

No - purely cosmetic treatments are not considered therapeutic, and therefore do not fall under the exclusion.

Euorpean case law (T144/83) seems to suggest that treatments where the primary intent is purely cosmetic are allowable, any incidental or potential therapeutic effect can militate against this.

43
Q

Section 4: IA, for the specific case of gene sequences, a plausible use for the resulting protein is required to confer IA.

The use must then actually occur in a subsequent product for that product to also be patentable - see ______________

A

Section 4: IA, for the specific case of gene sequences, a plausible use for the resulting protein is required to confer IA.

The use must then actually occur in a subsequent product for that product to also be patentable - see Monsanto v Cefetra C-428/08.

44
Q

T144/83

A

No - purely cosmetic treatments are not considered therapeutic, and therefore do not fall under the exclusion.

Euorpean case law (T144/83) seems to suggest that treatments where the primary intent is purely cosmetic are allowable, any incidental or potential therapeutic effect can militate against this.

45
Q

Is the application of butterfly stitches excluded from patentability under S4A?

A

Surgery can be defined as ‘non-significant intentional physical intervention’ and is not necessarily of an invasive nature e.g. butterfly stitches.

46
Q

Are methods of pest control excluded under S4A?

A

Yes, pest control is a therapy for the pest’s victims (e.g. killing tapeworms or tics)

47
Q

Is ‘Use of X to combat Y’ allowable under S4A?

A

Therapy assumes relief of a medical condition - thereofre ‘use of x to combat troublesome snoring’ is not considered therapy.

48
Q

Do pregnancy tests count as methods of diagnosis?

A

Like therapy, diagnosis assumes a medical condition/pathology - therefore pregnancy tests are not diagnoses and are patentable.

49
Q

Mobil Oil - Friction Reducing Additive G2/88

A

non-medical second use claim case law

50
Q

What are second medical use claims?

A

S4A(3) and (4) distinguish between first and second use of a substance in medical methods.

Substance X for use as a medicament -> Substance X for use in the treatment of disease Y

51
Q

Section 5

A

Priority

52
Q

What is the priority date of a patent?

A

Default: filing date.
Rule 6 allows one or more relevant earlier applications filed by the applicant or their predecessor in title to be declared as a priority document within 12 months (or 14 with permission of comptroller section 5(2)a(b))

53
Q

Priority Section

A

Section 5: Priority

54
Q

Priority date: filing date (default)
Rule __ allows one or more relevant earlier applications filed by the applicant or their predecessor in title to be declared as a priority document within 12 months (or __ with permission of comptroller -> section 5___)

A

Rule 6 allows one or more relevant earlier applications filed by the applicant or their predecessor in title to be declared as a priority document within 12 months (or 14 with permission of comptroller section 5(2)a(b))

55
Q

An applicant can request a late declaration (for use with Section 5(2)A(b)) from the Comptroller up to how long after the end of the priority year?

Under what section?

A

2 months for 14 month from original filing

Section 5(2)b

56
Q

How does one go about claiming a late priority under Section 5?

A

File form PF3 within two months from end of priority year, prove with evidence that the failure to file the priority application within the normal time was unintentional.

57
Q

Can a repeat filing of the same subject-matter be regarded as the basis for a priority claim?

A

A repeat filing of subject matter will be disregarded as a basis for priority itself, unless the first filing lost all rights by withdrawal or refusal before publication, including the right to act as priority for any application anywhere - and hence has no rights outstanding - on or before the day the second application was filed in the same country as the first.

58
Q

If an application is filed claiming priority within the 12 month period of s5(2A)(a), when must the declaration of priority be filed?

What rule number?

A

Rule 6
Either declare priority at the time of filing or within 16 months from the declared priority date (using PF3 and paying £40). [For 16 months: provided there has been no request for early publication]

Declaration must include country and date of filing of earlier applications (application number) and a certified copy of applications [rule 8].

59
Q

If an application is filed claiming priority within 2 months from end of 12 month priority year under s5(2A)(b), how must the request be made ?

A

A request under s5(2A)(b) must be made on form PF3 with late fee of £40, with evidence missed filing was unintentional, within 2 months from expiry of 12 month priority date and must declare priority at the same time as filing. No 16 month option for declaring priority as under s5(2A)(a)

60
Q

A request under s5(2A)(b) for application filed after priority year expiry can only be made if: (2)

A

1) there is no effective request for early publication of the application claiming priority (subsection 8) or
2) the request is in relation to a PCT(GB), in which case one has one month after the national phase begins to make a late declaration.

61
Q

If one unintentionally misses the 12-month convention deadline for claiming priority when filing, then under _____, _____ and R_, one can request a ‘late’ filing of the application up to plus ___ months from the earliest priority, but must declare ______ when filing the request (R_(_)), and pay a late fee of £__, must use form ___ and provide ______________________________.

A

If one unintentionally misses the 12-month convention deadline for claiming priority when filing, then under s5(2B), 5(2C) and R7, one can request a ‘late’ filing of the application up to plus two months from the earliest priority, but must declare priority when filing the request (R7(9)), and pay a late fee of £40, must use form PF3 and provide evidence of why the late filing was unintentional.

62
Q

Can a utility model be used as a valid priority document for a patent application?

A

Yes

63
Q

Which of the following would typically be used to claim priority from?

US Continuation-in-Part
US Continuation

A

If one files a US application that adds new matter to an earlier US provisional application, one can only claim priority from the US application with regards to the new matter and one should claim priority from both documents to file a third application to the whole matter.

A similar situation exists for US CIP applications, by contract, a US Cont should not add matter beyond the original application and hence should never be used as a basis for priority.

64
Q

Is it possible for a second application to be treated as a first application for the purposes of acting as a priority document?

A

Yes, under s5(3), if the previous application was withdrawn with loss of all rights prior to publication and was never used as a basis for priority itself.

65
Q

A certified copy of a priority document must be filed within __ months (R_) unless a copy is already available to the Comptroller (___________________________________).

A

A certified copy of a priority document must be filed within 16 months (R8) unless a copy is already available to the Comptroller (if PCT(GB) app and the priority document(s) were previously submitted to WIPO).

66
Q

The Comptroller can request translation of the priority document (R_()()) within a specified period of time if the exact nature of the matter in the priority document is in doubt or a is key to determining inventive step/novelty (R_()()). Alternatively one can provide a declaration that the application as filed is a translation of the priority document (R_()()).

A

The Comptroller can request translation of the priority document (R9(4)(a)) within a specified period of time if the exact nature of the matter in the priority document is in doubt or a is key to determining inventive step/novelty (R9(1)(c)). Alternatively one can provide a declaration that the application as filed is a translation of the priority document (R9(4)(b)).

67
Q

The Comptroller can request translation of the priority document (R9(4)(a)) within a specified period of time if the exact nature of the matter in the priority document is in doubt or a is key to determining inventive step/novelty (R_()(). Alternatively one can provide a declaration that the application as filed is a translation of the priority document (R_()()).

A

The Comptroller can request translation of the priority document (R9(4)(a)) within a specified period of time if the exact nature of the matter in the priority document is in doubt or a is key to determining inventive step/novelty (R9(1)(c)). Alternatively one can provide a declaration that the application as filed is a translation of the priority document (R9(4)(b)).

68
Q

Under what section can a second application to be treated as a first application for the purposes of acting as a priority document?

A

under s5(3), if the previous application was withdrawn with loss of all rights prior to publication and was never used as a basis for priority itself.

69
Q

Edwards Lifesciences AG v Cook Biotech Inc [2009]

A

Valid applicants.
PCT application should be filed with all applicants or assignments from other applicants should be secured prior to claiming priority (in the PCT filing).

UKIPO suggests uncontested entitlement proceedings to revert ownership back to original inventors at date of filing, thus enabling a right to claim priority under Edwards v Cook interpretation before assigning back to company.

EPO: See J19/87, T0788/05 and T0844/18 (Broad institute/CRISPR)

70
Q

T0844/18 (Broad institute/CRISPR)
and
Edwards Lifesciences AG v Cook Biotech Inc [2009]

A

Valid applicants.
PCT application should be filed with all applicants or assignments from other applicants should be secured prior to claiming priority (in the PCT filing).

UKIPO suggests uncontested entitlement proceedings to revert ownership back to original inventors at date of filing, thus enabling a right to claim priority under Edwards v Cook interpretation before assigning back to company.

EPO: See J19/87, T0788/05 and T0844/18 (Broad institute/CRISPR)

71
Q

For a PCT(GB) application, an applicant also has ___ ______ from __________________________ to make a late priority declaration under s_(__) (R__(_)) if this has not been done previously.

A

one month, from entry into national phase, under s5(2B) (R66(3).

72
Q

Can a declaration of priority be withdrawn?

A

Yes, in the case of a PCT(UK), before the national phase begins, or in any other UK case, before preparations for publication of the application are complete.

73
Q

Section 6

A

Priority- intervening acts
Acts occuring between filing a first application and filing a second application claiming priority from the first dont affect priority.

FD1 Right to apply for and obtain a patent and be mentioned as inventor (7-13) (7 decks)

Brainscape helps you reach your goals faster, through stronger study habits.
© 2025 Bold Learning Solutions. Terms and Conditions