Patents - novelty and inventive step Flashcards
Bristol Myers
PRIOR ART:
old principle: material only scalable to public if recipient is free in law and equity to divulge contents
PLG v Ardon
PRIOR ART:
not sufficient that product is seen
- must enable
- disclosed Is what someone analysing use in public can determine
Dr Reddy’s Lab
disclosed 86,000 compounds (100 named, 15 made)
- NOT PRIOR ART
- must be individualised description
Windsurfing v Tabur
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
Lux v Pike
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
Union Carbide
novelty not destroyed if invention is in private property but can be viewed through a fence
Merrel Dow & Anor
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
Bayer/Pharmaceutical
oral contraceptive
- clinical trials but no confidentiality agreement
- prior art
- patients could reverse engineer instead of eat them
NOVELTY
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
Synthon v Smithkline
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
DISCLOSURE
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)
General Tire v Firestone
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)
ENABLEMENT
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
Regeneron v Genontech
invention NOT anticipated
- did not clearly/unambigiously disclose therapeutic use (just said in preparation of medicament)
new uses of old things
s.4A(3) and (4) - medical uses for a known compound can be patented if novel and inventive
EISAI/2nd Med
art.54(4) applies to 2nd medical uses (not just 1st)
ABOTT respiratory
s.4A incl. new dosage regime as new use
MOBIL III
- 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)
INVENTIVE STEP
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)
EPO APPROACH
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?
Alcon/Alluminium
problem/solution approach is one of many possible approaches
UK APPROACH
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)
Pozzoli v BDMO
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?
Secondary factors
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
