Patents - novelty and inventive step

Question 1

Bristol Myers

Answer 1

PRIOR ART:

old principle: material only scalable to public if recipient is free in law and equity to divulge contents

Question 2

PLG v Ardon

Answer 2

PRIOR ART:
not sufficient that product is seen
- must enable
- disclosed Is what someone analysing use in public can determine

Question 3

Dr Reddy’s Lab

Answer 3

disclosed 86,000 compounds (100 named, 15 made)

• NOT PRIOR ART
• must be individualised description

Question 4

Windsurfing v Tabur

Answer 4

12 year old made home made sailboard and used in public

= PRIOR ART

• isolated and brief = ok
• does not matter no expert actually saw it
• Q: if PSITA was there, could he ascertain invention? YES

Question 5

Lux v Pike

Answer 5

traffic light control system in public ran tests
- cabinet locked and no explanation

= pRIOR ART

• public can see that when tragic was detected, green signal extended
• PSITA would figure it out

Question 6

Union Carbide

Answer 6

novelty not destroyed if invention is in private property but can be viewed through a fence

Question 7

Merrel Dow & Anor

Answer 7

CLINICAL TRIAL

• not prior art b/c no free disclosure
• no enabling disclosure (Secret use)

PRIOR PATENT

• yes prior art
• disclosed how to make it (because if you take it, you make it)
• taught ingestion of the substance which teaches how to make it

Question 8

Bayer/Pharmaceutical

Answer 8

oral contraceptive

• clinical trials but no confidentiality agreement
• prior art
• patients could reverse engineer instead of eat them

Question 9

NOVELTY

Answer 9

ONE - determine invention
TWO - determine information disclosed by prior art
THREE - novel invention? invention part of state of the art?

Q: cite s.2(1) and Synthon BV v Smithkline

Question 10

Synthon v Smithkline

Answer 10

invention is made available if there has been an enabling disclosure

ONE - prior disclosure
TWO - enablement

distinct but disclosure might satisfy both requirements

• here, description and instructions in prior art (but PSITA following instructions with CGK would fail) not enabling
• BUT without recipe, PSITA can make it with trial and error

Question 11

DISCLOSURE

Answer 11

prior art discloses patent if it reveals subject matter that (if performed) would necessarily or inevitably result in infringement (with no further experiment or undue effort)

Question 12

General Tire v Firestone

Answer 12

prior disclosure must have planted the flag on invention

(e.g. clear instructions/description to do or make something that would infringe patentee’s claims)

OBJECTIVE test (no need to show someone actually made it)

Question 13

ENABLEMENT

Answer 13

if public is given sufficient information to enable the invention to be put into effect

• PSITA would be able to perform invention
• PSITA can make trial and error experiments

Question 14

Regeneron v Genontech

Answer 14

invention NOT anticipated

- did not clearly/unambigiously disclose therapeutic use (just said in preparation of medicament)

Question 15

new uses of old things

Answer 15

s.4A(3) and (4) - medical uses for a known compound can be patented if novel and inventive

Question 16

EISAI/2nd Med

Answer 16

art.54(4) applies to 2nd medical uses (not just 1st)

Question 17

ABOTT respiratory

Answer 17

s.4A incl. new dosage regime as new use

Question 18

MOBIL III

Answer 18

• Old substance used in new way = novel
• old substance in old way for new purpose = not novel

THIS SHOWs:

• new use for old thing = potentially patentable regardless of technical field
• using lubricant to reduce friction = patentable (even though lube was previously used as rust inhibiter)

Question 19

INVENTIVE STEP

Answer 19

INVENTIVE IF: not obvious to PSITA having regard to matter that forms part of state of the art

• consider only published things
• hard to avoid hindsight
• qualitative
• no protection for obvious extension of what is known (PLG v Arden)

Question 20

EPO APPROACH

Answer 20

Problem/solution approach - is solution obvious?

ONE - ascertain technical field of the invention
TWO - identify closest prior art
THREE - identify technical problem that can be regarded as solved
FOUR - is the solution obvious to PSITA?

Question 21

Alcon/Alluminium

Answer 21

problem/solution approach is one of many possible approaches

Question 22

UK APPROACH

Answer 22

Resistant to problem/solution approach

• obvious to try is not sufficient to be non-inventive
• need reasonable expectation of success for it to be obvious (if not, can still be inventive - Conor v Angiotech)

Question 23

Pozzoli v BDMO

Answer 23

ONE - identify PSITA and CGK
TWO - identify inventive concept of claim
THREE - identify differences between state of the art and the claim
FOUR - without knowledge of person who claimed, is invention obvious to PSITA or does it require invention?

Question 24

Secondary factors

Answer 24

Q: if obvious, why not done before?

• makes decision simpler
• adds realisim
• but growing reluctance to use it

e. g. comparative efforts (failures)
e. g. long felt wants
e. g. commercial success

Question 25

Haberman v Jackel

Answer 25

commercial success only applicable for simple inventions