Patents Chapter 3

Question 1

Explain the role of the Paris convention within the patent system

Answer 1

To establish a system of priority dates

Question 2

Explain the role of the Patent Cooperation Treaty within the patent system

Answer 2

Serves to eliminate duplication of searches and examinations that would otherwise face an international applicant.

Question 3

Explain the role of the European Patent Convention (EPC 2000) within the patent system

Answer 3

To establish the European Patent office and the concept of an European Patent, which is actually a basket of national patents and the applicant must specify which jurisdictions he is applying for. Its aim is to centralise the process and cut back on the cotst of a patent application.

Question 4

Explain the role of the General Agreement on Tariffs and Trade (GATT) within the patent system

Answer 4

Introduction of intellectual property rights, included provisions on piracy where developing countries did not have such laws in their national laws.

Question 5

Explain the role of the TRIPS within the patent system

Answer 5

Requires these states that are part of the agreement and that did not have legislation on IP to introduce intellectual property statutes as the price for benefitting from the free trade provisions of the GATT.

Question 6

What type of claims within a patent application can exist?

Answer 6

1. Product claims
2. Process claims
3. Product by process claims

Question 7

What are the substantive requirements of patentability? Name 3.

Answer 7

1. Subject matter
2. Novelty
3. Non-obviousness

Question 8

What are the steps in the application process to file a UK patent? (6 steps)

Answer 8

1. File UK patent application
2. Preliminary examination and search
3. Examiner’s report
4. Publication of patent application
5. Substantive examination
6. Grant of Patent and publication in the official journal

Question 9

What are the steps in the application process to file an EU patent? (6 steps)

Answer 9

1. File EPO patent application
2. Formalities examination and international search
3. Publication of patent application
4. International preliminary examination
5. Substantive examination
6. Grant of patent and publication in European Bulletin

Question 10

What are the 4 ways under which subject matter is patentable?

Answer 10

1. Must be capable of industrial application
2. Patents are not granted for methods or medical and veterinary treatment
3. Exclusions under articles 1 (2) and 52 (2)
4. Patents are not granted for immoral inventions that are contrary to the public policy.

Question 11

What does susceptible of capable of industrial application mean?

Answer 11

This implies that there is no need to show actual use, it is enough that the invention has potential to be used in an industry.

Question 12

The potential use of industrial application must be reasonably credible or plausible, in which case was this topic covered?

Answer 12

Human Genome Sciences v. Eli Lilly

Question 13

What is the next questions after you ask if the invention is novel?

Answer 13

Is the invention part of the prior state of art?

Question 14

What does an inventive step mean?

Answer 14

If it is not obvious to a person skilled in the art.

Question 15

Explain the doctrine of obviousness

Answer 15

The public should not be prevented from doing anything which was merely an obvious extension or variation of what was already known at the priority date.

Question 16

What does priority date bring?

Answer 16

Under the Paris Convention, all countries agreed that the person who filed a patent application in another jurisdiction has a priority date of 12 months. So if someone else applies for a patent with the same invention, the other inventor can claim priority within 12 months of the filing date.