Patentability

Question 1

A patent will only be granted for an invention that:

Answer 1

a) is new
b) has an inventive step
c) is industrially applicable
d) is not excluded
s1(1)

Question 2

As such excluded inventions:

Answer 2

a) discovery, scientific theory, mathematical method (DTM)
b) any aesthetic creation (LDMA)
c) scheme for mental acts, games, business, computer program
d) presentation of information
s1(2)

Question 3

Immoral exclusion

Answer 3

s1(3)

immoral =/= illegal s1(4)

Question 4

Biotech exclusions

Answer 4

• human body and gene sequences derived therefrom
• cloning humans
• modifying human germ line
• exploitation of human embryos and stem cells derived therefrom
• genetic modification of animals likely to cause harm without significant medical benefit
• individual animal and plant varieties

s76A

Question 5

As such test

Answer 5

1) Properly construe claim
2) Identify actual contribution
3) Does contribution fall solely within exclusion?
4) Check contribution is technical

Aerotel/Macrossan

Question 6

Novelty and inventive step prior art includes

Answer 6

all matter made available to the public at any time before the priority date s2(2)

Question 7

Novelty only prior art includes

Answer 7

matter in a patent or application having an earlier priority date, but published on or after the priority date s2(3)

the patent or application must have at least the potential to come into force in UK
GB app, EP app, PCT entered GB or EP

Question 8

Non prejudicial disclosure is

Answer 8

w-6m UK filing date:
unlawful or breach of confidence s2(4)(a,b)
exhibition s2(4)(c)

disclosure at exhibition must be declared at filing, must supply evidence w4m filing GB direct, w2m GB entry for PCT

Question 9

What is the test for enabling disclosure?

Answer 9

Was enough information revealed to enable a person in the relevant field to replicate the invention?
Was availability reasonable?

Lux Traffic, Hozelock

Question 10

Inventive step test?

Answer 10

1) identify the notional person skilled in the art and the relevant CGK
2) construe the inventive concept in the claim
3) identify what differences there are between the state of the art and the invention
4) decide if these differences would have been obvious to skilled person (what reason and motivation do they have)

Pozzoli