Patentability and Construction

Question 1

With reference to Section 1 (‘Patentable Inventions’) UK Patents Act 1977, what conditions must an invention satisfy in order to be patentable according to Section 1(1)?

Answer 1

conditions to be patentable are

• New;
• Inventive step;
• Capable of industrial application;
• Not excluded subject-matter

Question 2

With reference to Section 14(5) (‘Making of an application’) UK Patents Act 1977, what requirements must the claims of a UK patent application satisfy?

Answer 2

The claim or claims shall—

• define the matter for which the applicant seeks protection;
• be clear and concise;
• be supported by the description;
• relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

Question 3

Excluded subject matter under 52(2) EPC.

Answer 3

• Discoveries, scientific theories and mathematical methods;
• Aesthetic creations;
• Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
• Presentations of information.

Only for the above subject-matter or activities as such.

Question 4

What is excluded from patentability under Article 53 of the European Patent Convention?

Answer 4

• 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;
• 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;
• 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 5

What comprises the state of the art for the purposes of the Patents Act 1977?

Answer 5

Section 2(2)

• All matter (whether a product, a process, information about either, or anything else)
• which has at any time before the priority date of that invention
• ….been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.

Section 2(3)

The matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say -

1. that matter was contained in the application for that other patent both as filed and as published; and
2. the priority date of that matter is earlier than that of the invention.

Question 6

What kinds of disclosures are disregarded under section 2(4) PA77?

Answer 6

• Disclosures that were due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence
• Disclosures were due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed

Question 7

What is absolute novelty? Example of jurisdiction that uses it.

Answer 7

All matter made available to the public by publication or by use, both in that jurisdiction and anywhere else in the world.

E.g. UK and EPC

Question 8

What is relative novelty? Example of jurisdiction that uses it.

Answer 8

Comprises all matter made available to the public by publication (but not use) both in the jurisdiction anywhere else in the world or by use in the jurisdiction

E.g. China and the US (old law)

Question 9

What is local novelty?

Example of jurisdiction that uses it.

Answer 9

Any public use or publication of the invention before the priority date will not destroy novelty unless the use occurs in the

country or the publication is available in the country

E.g. New Zealand

Question 10

What is the library principle

Answer 10

• The library principle assists in defining what “made available to the public” means.
• The contents of a book placed in a library (regardless of the library’s location or size) would fall under the category of information “made available to the public”, even if no-one had borrowed the book or even took it off the shelf.
• The state of the art therefore actually includes all information which members of the public could gain access to, regardless of whether they did or not.

Question 11

What does Section 64(1) say about the right to continue use begun before the priority date?

Answer 11

(1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention—
1. does in good faith an act which would constitute an infringement of the patent if it were in force, or
1. makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act.

Question 12

What are the four steps in the Pozzoli/Windsurfing approach?

Answer 12

(1) (a) Identify the notional “person skilled in the art”
(1) (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Question 13

What is the “problem and solution” approach before the European Patent Office?

Answer 13

• determining the “closest prior art”;
• establishing the “objective technical problem” to be solved; and
• considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person”

Question 14

How do you determining the closest prior art for the problem-solution approach?

Answer 14

Generally, choose the prior art which corresponds to a similar use and requires the minimum of structural and functional modifications to reach the claimed invention.

Question 15

How do you determine the objective technical problem?

Answer 15

• Established by determining the differences between the claimed invention and the prior art and then identifying the technical effect which results from these features.
• The objective technical problem is then how to achieve the stated technical effect.

Question 16

When is commercial success relevant to inventive step (in the UK)?

Answer 16

Commercial success can be a secondary indicator of inventiveness if the solution has been sought for a long time and the invention is satisfying a need (Haberman [1999]).

For example, failure to modify the prior art with the necessary steps to reach the claimed invention for a long period of time can indicate it is not as obvious as it may first appear (Haberman [1999], Pzifer’s patent [2001]).

Question 17

How does the EPO view commercial success in relation to inventive step?

Answer 17

Commercial success does not generally indicate inventiveness at the EPO.

Success in a short period of time in a number of countries might suggest inventiveness. However, it is important to exclude other market factors such as brand strength when assessing whether commercial success is any indication of inventiveness.

Therefore commercial success for a small company without sales team or success in a short period of time in a number of countries may more likely to suggest inventiveness than huge company.

Question 18

What is the test for equivalents set out in Eli Lilly v Actavis [2017] UKSC 48?

Answer 18

1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

Question 19

What is common general knowledge?

Answer 19

• Information directly in the mind of the notional skilled person,
• Information as he would be able to locate by reference to well-known textbooks.
• Knowledge the skilled person could acquire with the use of the internet and digital databases.

Question 20

What is sufficiency?

Answer 20

Section 14(3) states that the specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art; that is to say, the specification must be an enabling disclosure (Biogen) which enables the invention to be performed (Kirin-Amgen).

Question 21

What is the test for sufficiency?

Answer 21

The key elements of the requirement for sufficiency were outlined in Eli Lilly v HGS:

• Identify the invention by reading and construing the claims
• Sufficiency assessed on the basis of the specification as a whole including the description and the claims
• Disclosure aimed at the skilled person who may use common general knowledge
• The specification must be sufficient to allow the invention to be performed over the whole scope of the claims
• The specification must be sufficient to allow the invention to be performed without undue burden

Question 22

What occurs during the formal examination and what happens during the substantive examination?

Answer 22

Formalities exam

• Here the application is assessed to see whether it complies with certain formal requirements.
• These include that the application contains a request for grant, a description of the invention, one or more claims, any drawings referred to in the specification and an abstract.

Substantive examination

• Ascertain whether the claimed invention consists of excluded subject matter, is novel, has an inventive step and is industrially applicable.
• The substantive exam also checks whether the invention is sufficiently disclosed and that claims are concise and supported by the description.

Question 23

What is the term of a patent under the patents act 1977? And from what day is that term calculated?

Answer 23

Provided renewal fees are paid from the 4^th anniversary onwards, the term of a patent in the UK is 20 years from the date of filing of the application (Section 25(1)).

Question 24

What are the four criteria for protecting a plant variety?

Answer 24

Under Section 4(2) of the Plant Varieties Act, a plant variety can be protected if it is:

• New
• Stable
• Uniform
• Distinct

Question 25

What things are stated to be contrary to order public under Article 6(2) of the Biotechnology Directive?

Answer 25

• processes for cloning human beings;
• processes for modifying the germ line genetic identity of human beings;
• uses of human embryos for industrial or commercial purposes;
• 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 26

What does Article 4 of the Biotech Directive (98/44) deem to be unpatentable?

Answer 26

The following shall not be patentable:

• plant and animal varieties;
• essentially biological processes for the production of plants or animals.

Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.

Paragraph 1(b) shall be without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process.