topic 10: Intellectual Property Patents Flashcards
What is an invention? (1)
A solution to a specific technological problem, and may be a product or a process
What is a patent? (1)
A patent is a set of EXCLUSIVE RIGHTS granted by a sovereign state to an inventor/their assignee for a LIMITED period of time, in exchange for the public disclosure of the invention
What is a patent? (2)
- a right that is granted to the owner of an invention to enable them to exclude others from using, copying or making the invention without their consent in the country when we obtained the patent protection
- territorial rights and patent applications have to be filed in each and every country/region that patent rights are sought
there is no authority that grants worldwide patents to an applicant
What is an invention? (2)
historical term : any manner of new manufacture
What constitutes to a patentable invention in modern legislation?
- US law
whoever invents/discovers any new useful process, machine, manufacture or composition of matter, basically any new and useful improvement, may obtain a patent
- UK patents act
the following conditions must be met before a patent can be issued :
1. the invention is new
2. it involves an inventive step
3. it is capable of industrial application
- Singapore’s position (same as UK patents act)
a patentable invention as one that satisfies the following conditions:
1. the invention is new
2. involves an inventive step
3. capable of industrial application
Singapore’s position
- discoveries that:
1) exist in nature
2) the laws of nature
3) physical phenomena
4) abstract ideas
ARE NOT INVENTIONS AND NOT PATENTABLE IN SINGAPORE - the assessment of whether the subject-matter of the patent is or is not an invention, is included within the inquiry for NOVELTY, INVENTIVE STEP and INDUSTRIAL APPLICATION
Singapore’s position pros and cons of a patent
Patent:
upsides
1. values in fund-raising
2. can help in marketing product
3. useful for deterring competition
downsides
1. its costly
2. it takes time
3. it may be rejected
4. enforcing a patent can be expensive and difficult
Singapore’s position ‘negative’ criterion
an invention the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behavior is not a patentable invention
this is sometimes known as the ordre public exception (courts refuse to enforce the judgments of the courts of foreign countries because the judgments violate the enforcing state’s core notions of public morals and public order)
Singapore’s position (possibly) fourth criterion
the sentence “the invention is new”, it could be argued that there are 2 separate requirements: there must be an (1) invention and it must be (2) new
Novelty (Singapore’s position)
- invention shall be taken to be new if it does not form part of the state of the art
inquiry for novelty :
1) identify all relevant pieces of ‘prior art’ for the invention
2) assess whether the invention has been anticipated by any of pieces of prior art
- prior art :
any matter that has, as at the priority date of the invention, been made available to the public in any way - priority date :
the date of filing the patent application
if there is a claim of priority based on an earlier application filed in a WTO/Paris Convention member country, the priority date of the Singapore application would be backdated to the filing date of the earlier/foreign application
(the date will be matched with the foreign application)
Novelty
- to qualify as RELEVANT prior art, the prior disclosure/use must have been made available to the public
it is satisfied even if the disclosure has been made available only to a single member of the public
it is irrelevant whether anyone knew that is was available or had inspected it
Novelty : first medical use
- the fact that a substance is known does NOT destroy the novelty of the use of this substance in a method of medical treatment
- this exception is a LEGAL FICTION, justified on the basis of the potential benefits to mankind (when research is done on the known compounds to study their medical and therapeutic effects)
Has the inventions been anticipated by any of these pieces of prior art? (Novelty) (1)
1) the assessment is made through the eyes of a person who is skilled in the art (audience of whom the patentee is addressing)
the skilled person should be taken to be the workman/technician who has the skills to make routine workshop developments
but not to exercise inventive ingenuity (skill or cleverness in devising or combining) or think laterally (a way of solving a problem by thinking about it in a different and original way and not using traditional or expected methods)
Has the inventions been anticipated by any of these pieces of prior art? (Novelty) (2)
2) a rule against “mosaicing”/combining the different pieces of prior art in the assessment of novelty
not allowed to assemble all the pieces of prior art together into a mosaic and then compare the invention against said mosaic
3) the general test used to assess anticipation is to ask the “would-it-inevitably-lead-to-invention” question
following the teachings disclosed in the piece of prior art would inevitably lead to the invention, the prior art has anticipated the invention
Has the inventions been anticipated by any of these pieces of prior art? (Novelty) (3)
4) one variation is to ask whether the prior art contains clear and unmistakable directions to the invention, or is only a signpost to the invention
5) alternatively, the question can be posed in this way : Was the disclosure in the prior art a ‘near miss’ (close call)?
6) it has also been held that the invention is anticipated by a piece of prior art if the disclosure in this prior art is an “enabling disclosure”
enabling disclosure : a requirement in patent law that obliges the inventor to describe, in the specification of the patent, the invention in a manner that is CLEAR and COMPLETE for the invention to be made by the skilled addressee
