Patents - Novelty and Inventive Step Flashcards
According to s2(1) PA 1977, when is an invention new?
If it does not form part of the state of the art.
According to subsections 2(2) and (3) PA 1977, what is the state of the art?
(1) All matter
(2) which before the priority date of the invention
(3) has been made available to the public.
and
(4) matter contained in published patent applications with an earlier priority date, if the matter is contained in the application both as filed and published.
According to Synthon v SmithKline Beecham [2006] RPC (10), which are the two requirements for matter to form part of the state of the art under s2(2) PA 1977?
(1) If the prior disclosure discloses matter which, if performed, would necessarily result in an infringement of the patent (requirement of disclosure).
(2) If the person skilled in the art would have been able to perform the matter which satisfied the requirement of disclosure (requirement of enablement, stated by Lord Hoffmann to be implied in s2(2) PA 1977).
What does it mean for information to be made available to “the public” (s.2(2) PA 1977)?
The information (given by the document or use) must have been available to at least one member of the public who was free in law and equity to use it.
In Lux Traffic v Pike Signals [1993] RPC 107, what was held regarding whether public use constituted a disclosure?
There is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public.
In E Mishan and Sons v Hozelock [2019] EWHC 991 (Pat), what was held regarding when public use constituted a disclosure?
Information is not available to the public when no member of the public could in fact have accessed it.
When is mosaicking allowed?
When a series of papers refer to each other so that a person reading one can find each of the others.
According to s.2(4)(a) and (b) PA 1988, under which conditions are disclosures arising from breach of confidence to be disregarded?
(1) If there is a chain of people who have obtained the matter in confidence or where there is a belief that they are entitled to it, starting from the inventor, and
(2) the disclosure is due to the matter having been obtained unlawfully or in breach of confidence from a person in the chain (s.2(4)(a)), or
(3) or the disclosure is made in breach of confidence by someone in the chain (s.4(2)(b))
(4) for a grace period of 6 months before the date of filing.
Which disclosures are excluded from the state of the art in s.2(4)(c) PA 1988?
(1) Disclosures due to the inventor displaying the invention at an international exhibition, (2) if the inventor files a statement stating so when filing the application, and (3) within 6 months files written evidence in support of the statement.
What does s.3 PA 1977 / Art. 54 EPC say?
An invention involves an inventive step if
(1) it is not obvious to a person skilled in the art,
(2) having regard to any matter which forms part of the state of the art,
(3) disregarding post-published patent applications.
What is the four-step test in Pozzoli v BDMO [2007] EWCA Civ 588?
(1) (a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
In Technograph v Mills & Rockley [1972], what was said of mosaicing different documents in the context of inventive step?
Mosaicing was permissible, but it must be a mosaic that can be put together by an unimaginative man with no inventive capacity.
In Raychem Corp’s Patent [1988] RPC 31, supplemented by Teva v Astrazeneca [2014] EWHC 2873 (Pat), what was said of the extent of the skilled person’s common general knowledge?
(1) CGK is the technical background of the person skilled in the art.
(2) (a) It is not limited to material memorised and at the front of his mind, (b) but includes all material in the field which he is working in and which he knows exists, which he would refer to as a matter of course if he cannot remember it (c) and which he understands is generally regarded as sufficiently reliable to use as a foundation for future work.
(3) Searches of digital databases of journal articles are an ordinary research technique. If there is a sufficient basis in the background CGK to make it obvious to the unimaginative and uninventive skilled person that there is likely to be - not mererly a speculative possibility that there might be - relevant published material bearing directly on that issue which would be identified by a search of a digital database of journal articles, the CGK would include material that would be readily identified by such a search.
What secondary indicators of inventiveness are there?
(1) Bonus effect - when an invention provides an unexpected effect that would not have been expected from the art, this can indicate that the skilled person would not have thought of using that idea in order to obtain that effect.
(2) Long-felt need - when a long felt need (for a solution to a known problem) has been met by an invention, this may indicate that the invention was not obvious, if the likely reason is that people looking for a way around an existing problem did not find the claimed solution.
(3) Overcoming prejudice - The person skilled in the art reads prior art in light of his prejudices (Pozzoli). The state of the art therefore consists of both the idea subject to prejudice and the prejudice that it would not work or be impractical. An invention that demonstrates that the prejudice is unfounded (as opposed to designing around the prejudice) can therefore be non-obvious.
(4) Commercial success - in general does not suggest inventiveness. It is a secondary indication of inventiveness where both the relevant prior art has been available and there has been a long-felt need for a solution to a known problem. (Pfizer’s Patent)
(5) Reaction of experts, if poorly received or challenged.
(6) Copied by competitors - not relevant, except as relevant to commercial success.
