Patentability and Excluded Subject Matter Flashcards
What conditions must be satisfied for a patent to be granted?
The invention must be new, involve an inventive step, be capable of industrial application, and not contain excluded subject matter
What is the significance of the case Biogen Inc v Medeva plc [1997] RPC 1?
Definition of the word “invention”
What are some examples of excluded subject matter under Section 1(2a)?
Discovery, scientific theory, or mathematical method.
What exclusions are specified in Schedule A2 introduced by s76A relating to humans?
Human BODY
Human GENE sequences,
CLONING humans,
Modifying the human GERM LINE
Industrial or commercial exploitation of human EMBRYOS
What is the Aerotel/Macrossan test used for?
It assesses whether an invention relates to an excluded category.
What role do decisions of the EPO Boards of Appeal play in UK patent law?
They have persuasive value and are generally followed by UK courts if a settled view of European patent law exists.
True or False: The UK Office can depart from Aerotel/Macrossan if EPO practice becomes settled.
False. The UK Office is bound by Aerotel/Macrossan.
What is substance over form?
Examiner must look beyond the strict literal wording of the claim.
What is the Balance of Probabilities
Standard of proof required by UKIPO/EPO to decide on issues on the footing that one set of facts is more likely to be true than the other.
What is ‘Falconer Reasoning’?
‘Falconer Reasoning’ refers to the approach where known elements in a claim are removed, leaving only the unknown as the contribution, which has been rejected by the court.
What is required to consider an invention as patentable under the Aerotel/Macrossan test?
It must make a technical contribution to the art.
What is the significance of the case Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463?
It established that claims to novel and inventive subject matter may still be excluded.
Why was the “excluded” matter in Merril Lynch’s Application allowed?
a computer program is not excluded if it provides a technical effect beyond simply executing an abstract algorithm
What is - AT&T Knowledge Ventures LP’s Application [2009] EWHC 343 (Pat) used for?
To define when a computer-implemented invention makes a technical contribution.
What was the outcome of Genentech Inc’s Patent [1989] RPC 147
The identification of a gene sequence was not patentable as such, but its application in producing proteins was.
What must an invention demonstrate to avoid exclusion under section 1(2)?
It must provide a technical effect beyond merely automating a non-technical process.
Under what conditions may a mathematical model be allowed for patentability?
If it is used in a technical process carried out on a physical entity by technical means.
What was the outcome of Gale’s Application?
Excluded because it only prescribed different calculations for a conventional CPU and did not solve a technical problem.
What distinguishes an invention from being excluded as an aesthetic creation?
If the distinction has a technical effect.
Define a mental act in the context of patentability.
A mental act exclusion applies only if a claim covers a purely mental implementation.
How can mental design methods be made patentable? (Halliburton v Smith [2006])
Adding non-mental limitations, such as manufacturing.
What are the exclusions related to Business Methods?
CONDUCTING an entire business
TOOLS for business transactions
Procedural STEPS of an administrative or financial character.
What are the AT&T signposts used for?
To assess whether a claimed invention involving a computer program makes a technical contribution.
What is Signpost 1 of the AT&T signposts?
Whether the claimed technical effect has a technical effect on a process carried on outside the computer.
What is the focus of Signpost 2 of the AT&T signposts?
Whether the claimed technical effect operates at the level of the architecture of the computer.
What does Signpost 3 evaluate?
Whether the claimed technical effect results in the computer operating in a new way.
What is Signpost 4 concerned with?
Whether the program makes the computer a better computer in terms of efficiency.
What does Signpost 5 determine?
Whether the perceived problem is overcome by the claimed invention.
What types of information does the exclusion apply to in the presentation of information?
Visual, audio, and haptic information.
What are the 4 steps of the Aerotel Macrossan Test
CONSTRUE the claim
Identify the actual CONTRIBUTION
check for EXCLUSIONS
Determine if the contribution is TECHNICAL
What exclusions are specified in Schedule A2 introduced by s76A relating to animals?
GENETIC MODIFICATION of animals causing SUFFERING no substantial BENEFIT.
Inventions relating to individual plant or animal VARIETIES.
What are some examples of excluded subject matter under Section 1(2B)?
Literary, dramatic, musical, or artistic work
What are some examples of excluded subject matter under Section 1(2C)?
Scheme, rule, or method for performing a mental act, playing a game, doing business, computer program
What are some examples of excluded subject matter under Section 1(2D)?
Presentation of information
