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Patents Flashcards

1
Q

Criteria for patentability

A

1) novelty
2) inventive step
3) capable of industrial application
4) not excluded by law

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2
Q

What does an “inventive step” involve

A

It must be more than just an obvious application of technology

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3
Q

What’s the definition of an invention

A

The 1977 Patents Act doesn’t define the term but it’s assumed that if an application has successfully achieved a patent then it will constitute an invention

Good working definition is a non-obvious application of existing technical knowledge

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4
Q

What does patent law grant

A

A monopoly for a limited time in respect of an invention in return for disclosure of the details concerning the invention

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5
Q

If two people file patents for the same thing, who gets it

A

The general rule is that the first person to file an application to patent an invention will be the person to whom it is granted. The Patents Act 1977 s7 (4) provides that unless the contrary is established, a person making an application for a patent shall be taken to be the person entitled to make such an application. Therefore, the first application will get the patent.

The logic for this is that when the first application is received, it becomes part of human knowledge and is now state of the art.
For this reason, the second application will not be patentable since it fails the first part of the test for patentability (novelty).

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6
Q

Justification for the granting of patents

A

1) contract theory - temporary protection is granted in reward for knowledge of new inventions
2) reward theory- uneven ties should be rewarded for making useful inventions and the law should guarantee this so they receive sufficient recompense for their ingenuity
3) incentive theory- rewarding invention acts as an incentive for further inventions
4) natural law/ moral rights theory - individuals have a right of property in the own ideas and thus should be protected from being stolen by others

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7
Q

Natural rights justification for patents

A

natural law/ moral rights theory - individuals have a right of property in the own ideas and thus should be protected from being stolen by others

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8
Q

Contract theory justification for patents

A

contract theory - temporary protection is granted in reward for knowledge of new inventions

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9
Q

Reward theory justification for patents

A

reward theory- uneven ties should be rewarded for making useful inventions and the law should guarantee this so they receive sufficient recompense for their ingenuity

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10
Q

Incentive theory justification for patents

A

incentive theory- rewarding invention acts as an incentive for further inventions

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11
Q

Difference between incentive theory and reward theory justification for patents

A

Incentive theory is a forward looking approach (getting more people to invent)whereas reward theory is retrospective (rewarding those who have already invented)

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12
Q

What justification for the patent system is offered in Chiron Corporation v Organon Teknika Ltd

A

By Aldous J-

1) patents encourage research and innovation
2) patents encourage inventors to disclose their inventions instead of making them secret
3) it rewards developing inventions to the state at which they’re commercially practical
4) it encourages investment in new lines of production which might not seem profitable if many others were embarking on them at the same time

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13
Q

If the patent system was abolished would inventive activity stop?

A

No,
The inventor has a period of “lead time” which is the period before competitors can equip factories to produce a rival product (although it may not be a sufficient inducement)

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14
Q

What is the requirement for sufficiency with a patent application

A

The specification must 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.

S14(3) of Patents Act 1977 “The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”.

Novartis AG v Johnson &Johnson Medical Limited- Court of Appeal confirmed patent for extended wear contact lenses should be revoked for insufficiency. Jacob LJ said that the instructions contained in the patent did not enable the skilled person, lacking the inventive skill, to perform the invention.

Mayne Pharma Ltd v Debiopharm- if it’s not possibles for a skilled person to determine from the specification a vital parameter such as the quantity of a compound to be used in making the invention, then the disclosure is not an enabling disclosure and the patent is not valid.

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15
Q

Mayne Pharma Ltd v Debiopharm

A

If it’s not possibles for a skilled person to determine from the specification a vital parameter such as the quantity of a compound to be used in making the invention, then the disclosure is not an enabling disclosure and the patent is not valid. E

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16
Q

If it’s not possibles for a skilled person to determine from the specification a vital parameter such as the quantity of a compound to be used in making the invention, then the disclosure is not an enabling disclosure and the patent is not valid.

A

Mayne Pharma Ltd v Debiopharm

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17
Q

Novartis AG v Johnson & Johnson

A

Court of Appeal confirmed patent for extended wear contact lenses should be revoked for insufficiency. Jacob LJ said that the instructions contained in the patent did not enable the skilled person, lacking the inventive skill, to perform the invention. U

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18
Q

Court of Appeal confirmed patent for extended wear contact lenses should be revoked for insufficiency. Jacob LJ said that the instructions contained in the patent did not enable the skilled person, lacking the inventive skill, to perform the invention.

A

Novartis AG v Johnson & Johnson

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19
Q

What does novelty involve with patents

A

A new invention is one which must not have already been available to the public. The 1977 Patents Act states that an invention is new if it does not form part of the state of the art and defines the state of the art as all matter made available to the public before the priority date of the invention whether by written or oral description, by use or in any other way. Disclosure in confidence does not destroy novelty, but disclosure to a single person without an express or implied obligation of confidence will destroy novelty, even if that person decides not to share the information.

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20
Q

What is the state of the art

A

The 1977 Patents Act states that an invention is new if it does not form part of the state of the art and defines the state of the art as all matter made available to the public before the priority date of the invention whether by written or oral description, by use or in any other way. Disclosure in confidence does not destroy novelty, but disclosure to a single person without an express or implied obligation of confidence will destroy novelty, even if that person decides not to share the information.

21
Q

How is a skilled person determined?

A

A skilled person is a person who is skilled in the art, who has common general knowledge. However, in applying this test, the skilled person does not make undue efforts in experimentation and certainly does not have inventive skills, nor does he have an awareness of the whole state of the art- see Pyridine Herbicides case.

22
Q

Windsurfing International inc v Tabur Marine

A
  • 12yr old boy using a sailboat for a few weekends at a caravan park effectively anticipated a later patent for a sailboard which was declared invalid for want of novelty
23
Q

Milliken Denmark AS vs Walk Off Mats Ltd

A

An invention will become state of the art if the product is available to the public, even if. I person in fact examines or inspects it to enquiry knowledge of the invention

24
Q

An invention will become state of the art if the product is available to the public, even if. I person in fact examines or inspects it to enquiry knowledge of the invention

A

Milliken Denmark AS vs Walk Off Mats Ltd

25
Q

What does it mean that an invention is capable of industrial application

A

Under s4, an invention is capable of industrial application if it can be made or used in any kind of industry including agriculture. The invention must enable the industrial production (making) of a thing (product patent) or a means to achieve a result (process patent)

26
Q

What case gives us the requirement of industrial application

A

Hillers Application

27
Q

What will count as capable of industrial application in biological research

A

Locating and ascertaining new gene structures is not sufficient for patenting, it is also necessary that a useful purpose for the genes can be found

28
Q

When will inventions be excluded from patentability

A

see patents act s1

29
Q

Hitatchi/Auction Method

A

An invention is not excluded from patentability if it embodies or is implemented by some technical means (such as a computer) even if used in relation to a non-technical activity.

Known as the “any hardware approach”

30
Q

When will an invention not be excluded from patentability

A

As in Hitatchi/Auction Method

An invention is not excluded from patentability if it embodies or is implemented by some technical means (such as a computer) even if used in relation to a non-technical activity.

Known as the “any hardware approach”

31
Q

When will a discovery, scientific theory or mathematical method be patentable

A

A discovery itself is not patentable but a claim directed to the technical effect of a discovery is patentable.
Chiron Corp v Organon Teknika

32
Q

Schutz v Werit

A
  • hinged on meaning of “makes”. Held “makes” has no precise meaning and must be interpreted contextually with reference to facts of case and in a practical way.
  • “Makes” must be given meaning thats matter of ordinary language. “Makes” applies to patents for all sorts of products.
  • Matter of fact and degree whether particular activity involves making. Replacing a constituent part of an article does not necessarily mean that article involves “making” a new article rather than repairing original.
  • Patent description describes bottle as replaceable. Cage last five or six times longer than bottle. Legitimate and helpful to consider whether the bottle is “such a subsidiary part” that its replacement when required does not involve making a new article. Given bottle is free-standing, replaceable article and has no connection with the claimed inventive concept and has shorter life expectancy, can’t be described as main component, Delta doesn’t “make” the article.
  • Need to protect patentee’s monopoly without stifling competition.
33
Q

product available to the public

A

Milliken Denmark v Walk off mats- state of the art even if nobody inspects it

34
Q

Greater Glasgow Health Board’s Application

A
  • Test of ownership for patent is whether employee is reasonably expected to invent, junior doctor was not expected to.
  • The test is objective: the Court will consider whether the employee has made other inventions; and if so, whether he or she has done so recently and whether they are in a similar technical field.
  • The Court will also consider whether equivalent employees are also in the habit of making inventions.
  • In Reiss Engineering v Harris, a salesman was not expected to invent anything
35
Q

Reiss Engineering v Harris

A
  • In Reiss Engineering v Harris, a salesman was not expected to invent anything
  • Test of ownership for patent is whether employee is reasonably expected to invent
  • The test is objective: the Court will consider whether the employee has made other inventions; and if so, whether he or she has done so recently and whether they are in a similar technical field.
  • The Court will also consider whether equivalent employees are also in the habit of making inventions.
  • Greater Glasgow Health Board’s Application held a junior doctor wasn’t expected to invent anything
36
Q

When will it belong to employer?

A
  • Test of ownership for patent is whether employee is reasonably expected to invent
  • The test is objective: the Court will consider whether the employee has made other inventions; and if so, whether he or she has done so recently and whether they are in a similar technical field.
  • The Court will also consider whether equivalent employees are also in the habit of making inventions.
  • Greater Glasgow Health Board’s Application held a junior doctor wasn’t expected to invent anything
  • In Reiss Engineering v Harris, a salesman was not expected to invent anything
37
Q

Calculating damages

A
  • profits lost ( Catnic Components Ltd. v. Hill & Smith Ltd.)
  • if licence, loss us royalty value infringer would have paid
38
Q

Remedies

A

s62

damages

  • profits lost ( Catnic Components Ltd. v. Hill & Smith Ltd.)
  • if licence, loss us royalty value infringer would have paid
39
Q

Catnic Components Ltd. v. Hill & Smith Ltd

A
  • damages are profits lost
  • patents should be given purposive meaning that focuses on the essential features of the patent
  • The question is whether persons skilled in the art would understand the patentee intended strict compliance with a particular descriptive word or phrase appearing in a claim as an essential requirement of the invention so any variant would fall outside the monopoly, even though it could have no material effect upon the way the invention worked.
40
Q

Technograph Printed Circuits Ltd v. Mills & Rockley

A

mosaic approach / commercial success for inventive step

  • Commercial success is never a decisive factor
  • Also rules out, in most cases, the possibility to attack the validity of a patent for obviousness by using the “mosaic approach”
  • Obviousness must be judged by viewing the invention as a whole against the state of the art as a whole. A combination should not be picked apart into its components. (MOSAICING).
41
Q

When will acts infringe?

A

See statute.

  • Catnic Components Ltd. v. Hill & Smith Ltd- patent claims should be given purposive meaning that focuses on the essential features of the patent. The question is whether skilled persons would understand the patentee intended strict compliance with a particular descriptive word or phrase appearing in a claim as an essential requirement of the invention so any variant would fall outside the monopoly, even though it could have no material effect upon the way the invention worked.
  • Improver questions ( Improver Corp v Remington Consumer Product Ltd)- Won’t infringe if any of the following are true-
    (1) The variant has a material effect on the way the invention works.
    (2) The fact that the variant has no material effect on the way the invention works would not have been obvious to an expert in the field.
    (3) That an expert in the field would have taken from the language used in the patent that strict compliance with the primary meaning was an essential requirement of the invention.
  • Kirin-amgen - It is a common misunderstanding that the words of the claims should be understood as what the author used them to mean. This is not the case. Rather, the claims should be understood as what a skilled person (at the date of filing of the application) would have understood the author to be using the words to mean.
42
Q

Improver questions

A
  • Improver questions ( Improver Corp v Remington Consumer Product Ltd)- Won’t infringe if any of the following are true-
    (1) The variant has a material effect on the way the invention works.
    (2) The fact that the variant has no material effect on the way the invention works would not have been obvious to an expert in the field.
    (3) That an expert in the field would have taken from the language used in the patent that strict compliance with the primary meaning was an essential requirement of the invention.
43
Q

kirin-amgen

A

It is a common misunderstanding that the words of the claims should be understood as what the author used them to mean. This is not the case. Rather, the claims should be understood as what a skilled person (at the date of filing of the application) would have understood the author to be using the words to mean.

44
Q

mosaic approach / commercial success for inventive step

A

Technograph Printed Circuits Ltd v. Mills & Rockley

45
Q

An invention is disclosed if it is made available to the public in any form

A
  • An invention is disclosed if it is made available to the public in any form, including placing in a publicly accessible place within a locked enclosure
    if a skilled person can deduce how the invention works. This was shown to be the case in Lux Traffic v Pike Signals (1993), where the skilled person may have deduced how the invention worked by observing the traffic signals in operation.
  • a publication must contain clear & unmistakeable directions but if a skilled person was free in law and equity to examine the invention, even if they don’t in fact examine it, it won’t be novel
46
Q

difference between protocol questions & improver questions?

A

same thing. called protocol due to EPC

47
Q

pozzoli v windsurfing?

A
  • pozzoli restates windsurfing, Jacob re-ordered the first two steps as “it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept”.
  • pozzoli uses “state of the art”, brings in line EPC
  • both regarded as guidance as inappropriate for as-yet undiscovered technology
  • failure to apply test likely to lead to appeal
48
Q

aerotel test

A

Aerotel v Telco Holdings [2007] All ER 225- Test in four separate steps is required:
Construe the claim: what is the actual scope of the claim?
Identify the contribution.
Does the contribution fall within one of the excluded categories?
Is the invention technical? If the invention brings about a tangible physical change = invention is technical and therefore falls outside the scope of the exclusions. Invention wont fall into excluded categories if its implemented or embodied by some technical means. i.e a computer.)

IP (4 decks)

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