1) Patentable Inventions Flashcards
Section 1
Patentable Inventions
(1) A patent will only be granted for an invention for which the following conditions are satisfied:
(a) the invention is new;
(b) involves an inventive step;
(c) is capable of industrial application; and
(d) the grant of a patent for it is not excluded by subsections (2) or (3) or section 4A below.
(2) The following are not inventions:
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information,
only to the extent that a patent or patent application relates to that thing as such.
(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
(4) For the purposes of subsection (3), exploitation shall not be regarded as contrary to public policy or immoral only because it is prohibited by any law in force in the UK.
Section 2
Novelty
(1) An invention shall be taken to be new if it does not form part of the state of the art.
(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the UK or elsewhere) by oral or written disclosure, by use or in any other way.
(3) The state of the art in the case of an invention to which a patent or patent application relates shall also be taken to comprise all matter contained in another patent application which was published on or after the priority date of the invention, if
(a) that matter was contained in the other application both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention.
[NB abstracts do not count (s14(7))].
(4) The disclosure of matter constituting an invention shall be disregarded in the case of a patent or patent application if occurring later than the beginning of the period of six months immediately preceding the filing date for the patent application and either
(a) the disclosure was made due to the matter having been obtained unlawfully or in breach of confidence from the inventor or anyone to whom the matter was disclosed in confidence;
(b) the disclosure was made in breach of confidence;
(c) the disclosure was due to the inventor displaying the invention at an internataional exhibition and the applicant states, on filing the application, that the invention has been so displayed, and files written evidence of this [within four months beginning immediately after the filing date (R5) or, for a PCT for which the receiving office was informed in writing of the disclosure on filing of the PCT, within two months beginning immediately after national phase entry (R67).]
(5) References to the “inventor” include references to any proprietor.
Section 3
Inventive Step
An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art having regard to any matter which forms part of the state of the art by virtue only of s2(2) only and disregarding s2(3).
Section 4
Industrial Application
An invention has industrial application if it can be made or used in any kind of industry, including agriculture.
Section 4A
Methods or Treatment or Diagnosis
(1)A patent shall not be granted for
(a) a method of treatment of the human or animal body by surgery or therapy; or
(b) a method of diagnosis practiced on the human or animal body.
(2) Subsection (1) does not apply to any substance or composition for use in any such method.
(3) In the case of an invention consisting of a substance of composition for use in any such method, the face that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.
(4) In the case of an invention consisting of a substance or composition for a specific use in any such method, the face that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if that specific use does not form part of the state of the art.
Schedule A2 (s76A)
Biotech Inventions
[s76A: This Act shall have effect in relation to patents and patent applications for biotechnological inventions subject to Schedule A2.]
(1) An invention is not unpatentable solely because it concerns
(a) a product consisting of or containing biological material; or
(b) a process by which biological material is produced, processed or used.
(2) Biological material which is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature.
(3) The following are not patentable inventions:
(a) the human body at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
(b) processes for cloning human beings;
(c) processes for modifying the germ line genetic identity of human beings;
(d) uses of human embryos in industrial or commercial processes;
(e) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes;
(f) any variety of animal or plant or any essentially biological process for the production or animals or plants which is not a micro-biological or other technical process, and any plant or animal produced by such a process.
(4) Inventions concerning plants or animals may be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.
(5) An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may be patentable, even if the structure of that element is identical to that of a natural element.
(6) The industrial application of a sequence or partial sequence of a gene must be disclosed in the application as filed.
