Patents

Question 1

Monsanto Application

Answer 1

Colouring Nilon- 40 brochures to sales representatives, no patent as brochures made the information available to the public

Question 2

Pall Corp v Commercial Hydrolics

Answer 2

Acceptance of the invitation was on the condition they would be held to secrecy- not available to the public

Question 3

Woven plastics

Answer 3

A4 piece of paper in Japanese in a filing office

Question 4

Van Der Lely v Bamford

Answer 4

Photograph of a hydrate machine, rake wheels turned by contact with the ground, anticipated patent application for a hydrate machine with the same feature- picture was sufficiently clear not reveal the intention of the photographed object to an informed person

Question 5

Windsurfing International v Tabur Marine

Answer 5

Patent granted in 1968, D sought revocation- boy aged 12 in 1958 who made a primitive sailboard when on holiday

Question 6

Merrell Dow Pharmaceuticals v Norton

Answer 6

Terfenadine and it’s acid metabolite- Lord Hoffman analogy about native Indians using tree bark to cure Malaria- even ignorant use may anticipate

Question 7

Chiron v Evans

Answer 7

There is no need to know the product created, but there must be a conscious decision to engage in the process

Question 8

Fermento Industrial SA

Answer 8

Improved ballpoint pen, held mere use of a biro may well not disclose anything about its workings- the patent was specifically for the method of producing the more regular flow of ink- earlier patent application for a broadly similar pen- didn’t amount to anticipation, however the prior use was a ground for revocation

Question 9

Medimmune v Novartis

Answer 9

3 points;
1) same invention
2) skilled person can derive subject matter directly, and
3) unambiguously
Using common general knowledge from the priority document

Question 10

General Tire v Rubber

Answer 10

A reader skilled in the art to which they relate having regard to the state of knowledge in such an art at the relevant date-
A person blessed with reasonable knowledge, but not, in this case, universal knowledge

Question 11

Synthon v Smithkline

Answer 11

Disclosure and enablement are two distinct concepts, each of which must be satisfied for there to be anticipation

Question 12

Beecham Group Application

Answer 12

Selection patents: 
Beechams was granted a patent for a large class of various penicillins for use as antibiotics- singled out 9 as particularly effective- 1 was especially amenable to absorption into the blood- was naming this in the prior patent anticipation? COA held No: earlier patent showed what was effective on mice whereas this patent was for a developed, tested and workable application on one type of that- could not be anticipation, even to a skilled addressee

Question 13

John-Wyeth & Brother Ltd’s Application

Answer 13

Patent court interpreted the previous s2(6) as meaning medical use of a known substance is allowed as long as its use ‘in any such method does not form part of the state of the art’ and a prior medical use was ‘any such method’

Question 14

Windsurfing international

Answer 14

Making an improvement was regarded as obvious

Question 15

Genentech

Answer 15

‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in light of all the circumstances’

Question 16

Pizzoli v BDMD

Answer 16

Rearranged the rest in Windsurfing:

1) court must assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and impute to him what was, at the date, common general knowledge in the are
2) it’s necessary to identify the inventive concept embodied in the patent in suit (avoid on overly analytical approach)
3) identify the differences that exists between the generally known matter and the subject matter of the patent
4) are these differences obvious steps

Question 17

Dyson Appliances v Hoover

Answer 17

4th step requires technical comparison; proof of commercial obviousness is neither here nor there

Question 18

Technograph v Mills

Answer 18

Skilled technician, well acquainted with workshop techniques, read relevant literature, unlimited absorption capacity but incapable of scintilla of invention- concept rather than a real person

Question 19

Connor Medsystems v Angiotech

Answer 19

The sufficiency requirement whereby the application for a patent should contain enough information…has no role at this stage. The inventive step required does not demand that the patent specification explain how the product work

Question 20

Genentech

Answer 20

Questioned the link between inventiveness and non-obviousness: genetic engineering- new application of pre-existing technology. The court recognised that the traditional model was unworkable in these exceptional circumstances.
Purchase LJ: because there is no one working in the field who is incapable of invention, the person skilled in the art must have incentive capacity
Not confined to one field, but recently been seen on its facts

Question 21

Beloit Technologies v Valmet

Answer 21

Commercial success was no more than a matter of some evidential value in considering the issue of obviousness

Question 22

Bruggar v Medic-Aid

Answer 22

Laddie J: suggested that commercial factors may disguise the issue of obviousness

Question 23

Williams v Nye

Answer 23

It was not inventive to combine two machines performing closely related functions into one, with no real alteration to the operation of either

Question 24

Johns-Manville Corp Patent

Answer 24

The common factor of flocculation was sufficient for the court to say that the patentee’s knowledge should extend to what were effectively applications of the same art in different circumstances

Question 25

Eli Lilly v Hunan Genome Sciences

Answer 25

Patentee had determined by means of a computer program the nucleotide and amino acid sequence of a novel member of the anti-Tumor ligand superfamily. COA held on its own the identification did not meet the requirement of being capable of industrial application. Overruled by the SC who held that the COA had applied a standard that was too exacting and preferred to bring the Uk in line with the EPO approach- general requirements 1-8

Question 26

Unilever application

Answer 26

Immunisation held to be a treatment and thus was banned

Question 27

Brukers application

Answer 27

Method for testing whether disease is present or not, this is not treatment of a disease

Question 28

Schering AG’s Application

Answer 28

Method of contraception- pregnancy is not a disease and so this is not treatment of a disease

Question 29

Otto v Linford

Answer 29

Internal combustion engine- claim was found to be valid not as a discovery of the role of air which would not be patentable, but as a machine that embodied and gave practical effect to that discovery

Question 30

Raytheon co’s Application

Answer 30

Ship recognition system- argued tinge a method for performing a mental act, a computer programme and information display

Question 31

Aerotel

Answer 31

Technical effect: 1) what exactly is claimed

2) contribution of invention
3) contribution falls solely within excluded matter
4) contribution is technical in nature

Question 32

Electrolux v Hudson

Answer 32

An invention might reasonably be expected to result from the carrying out of his duties

Question 33

Greater Glasgow HB Application

Answer 33

Special obligation - sales manager ect

Question 34

GEC Avionics

Answer 34

Suggestion that if you look at the nature of the company and their turnover, being such a big company may make profits look small

Question 35

Yedo v Rhone-Poulenc Rorer

Answer 35

S7 is an exhaustive list

Question 36

Centrafarm v Sterling Drug

Answer 36

Imported patented drug from Germany to Netherlands, undercutting price.
“Article 36 in fact only admits of derogations from the free movement of goods where such derogations are justified for the purpose of safeguarding rights which constitute the specific subject matter of this property’
ECJ held: a patent protects only certain manufacturing rights and only applies to initial introduction of the product- rights are exhausted once placed on the market

Question 37

Merck v Stephor

Answer 37

A person granted a patent is merely given the opportunity to obtain a financial reward, the patent doesn’t guarantee that it’s holder will actually collect such a reward. This, the ECJ concluded that when a patentee voluntarily introduces a product into the market where patents are not available, the patentee has exhausted his property rights