Patents Act 1977

Question 1

With reference to Section 1 (‘Patentable Inventions’) PA77, what conditions must an invention satisfy in order to be patentable according to Section 1(1)?

Answer 1

A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say:

• the invention is new;
• it involves an inventive step;
• it is capable of industrial application;
• the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A

Question 2

According to Section 1(2), what are not inventions for the purposes of the UK Patents Act 1977?

Answer 2

• a discovery, scientific theory or mathematical method;
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
• a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
• the presentation of information;

but the above only applies to the things listed as such.

Question 3

What do Sections 1(3) and 1(4) say about morality in relation to patentability?

Answer 3

(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality
(4) For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it

Question 4

Methods of treatment or diagnosis are not patentable. Summarise the provisions of Sections 4A(1) and 4A(2) PA77 relating to such methods.

Answer 4

Section 4A - Methods of treatment or diagnosis

(1)A patent shall not be granted for the invention of—

• a method of treatment of the human or animal body by surgery or therapy, or
• a method of diagnosis practised on the human or animal body.

(2) Subsection (1) above does not apply to an invention consisting of a substance or composition for use in any such method.

Question 5

What does Section 4A (3) and 4A(4) say about inventions consisting of a substance or composition for use in a medical method?

Answer 5

(3) …the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.
(4) …the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if that specific use does not form part of the state of the art

Question 6

Your client has invented a method of immunisation (i.e. one which prevents rather than cures a disease). Is the method excluded from patentability? (Relates to Section 4A PA77)

Answer 6

Yes. Therapy is to be given a broad interpretation relating to treatment of a disease, rather than a narrow interpretation of ‘curative medical treatment’

Question 7

Your client has invented a method of diagnosis of a human disease in which a patient’s blood is tested in a test tube. Is the method excluded from patentability? (Section 4A PA77)

Answer 7

No. Inventions carried on extra-corporeally do not involve treatment carried out ‘on the human or animal body’

Question 8

Your client claims to have invented a perpetual motion machine. List two grounds on which UKIPO is likely to object to an application for the invention.

Answer 8

• not capable of industrial application (section 3)
• insufficient description (section 14(3))
• or claims not supported by the description (section 14(5))

Question 9

Under the UK Patents Act 1977, what acts constitute an infringement of a patent for a process? (Section 60 PA77)

Answer 9

Section 60 (1)(b) and (c)

where the invention is a process, he uses the process or he offers it for use in the UK when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;

where the invention is a process, he…

• disposes of,
• offers to dispose of,
• uses
• imports

any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

Question 10

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 10

The claim or claims shall—

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

Question 11

With reference to the PA77, what is the meaning of innocent infringement (Section 62)

Answer 11

• The infringer proves he was unaware of the existence of the patent and had no reasonable grounds for supposing the patent existed.
• Marking a product with the word ‘patent’ or ‘patented’ is insufficient notice of the existence of the patent unless the patent number is included.

Question 12

With reference to the UK Patents Act 1977, what is the meaning of third-party observations (Section 21)

Answer 12

• A third party (any other person) can submit observations concerning the patentability of the invention.
• Observations can be filed at any time between publication and grant.

Question 13

With reference to the PA77, what is the meaning of Inventor (Section 7)?

Answer 13

• The actual deviser of the invention.
• A person who merely contributes advice or other assistance in the making of the invention by another person is not an inventor.
• By default the person to whom the patent may be granted.

Question 14

With reference to Section 60(1), what acts constitute an infringement of a UK patent? Only consider the case where the invention is a product.

Answer 14

A person infringes a patent for an invention, if but only if, whilst the patent is in force he does any of the following things in the UK in relation to the invention without the consent of the proprietor of the patent that is to say where the invention is a product he:

• makes
• disposes of
• offers to dispose of
• uses
• imports the product
• or keeps it whether for disposal or otherwise

Question 15

According to Section 60(5), an act which would normally constitute an infringing act does not do so if it meets one or more conditions. List the conditions.

Answer 15

• private and non-commercial
• experimental purposes relating to the subject-matter of the invention;
• extemporaneous preparation
• …in a case where the ship has temporarily or accidentally entered the internal or territorial waters of the United Kingdom;
• …relevant aircraft, etc. temporarily or accidentally entered or is crossing the UK (including the air space above it and its territorial waters)
• …an exempted aircraft which has lawfully entered or is lawfully crossing the UK as aforesaid or of the importation into the United Kingdom, or the use or storage there, of any part or accessory for such an aircraft.
• it consists of the use by a farmer of the product of his harvest for propagation or multiplication by him on his own holding, where there has been a sale of plant propagating material to the farmer by the proprietor of the patent or with his consent for agricultural use;
• it consists of the use of an animal or animal reproductive material by a farmer for an agricultural purpose following a sale to the farmer, by the proprietor of the patent or with his consent, of breeding stock or other animal reproductive material which constitutes or contains the patented invention.

Question 16

According to Section 60(6), who may bring an action for infringement?

Answer 16

• patent proprietor
• exclusive licensee
• possibly non-exclusive licensee but not as of right

Question 17

With reference to Section 61(1), what final remedies may be sought by a patentee in infringement proceedings before a Court?

Answer 17

• Damages
• Injunction
• Delivery up
• Destruction
• Account of profits
• Declaration patent is valid and infringed