FC1 Flashcards
(22 cards)
S1(1) Requirements for a patent to be granted
The invention is new
Involves an inventive step
Is capable of industrial application
The subject matter is not excluded
S2(1) Requirements for novelty
An invention shall be taken to be new if it does not form part of the state of the art
To destroy novelty, need prior disclosure (anticipation) and enablement (disclosure sufficient for skilled person to perform invention) – Synthon v SmithKline Beecham
S3 Requirements for 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
Pozzoli/Windsurfing test
S4 Requirements for industrial applicability
An invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture
S1(2), (3) Exclusions to patentability (DASPAP)
D – Discovery, scientific theory or mathematical method - DSM
A – Aesthetic (literary, dramatic, musical or artistic work (LDMA), or any other aesthetic creation whatsoever)
S – Scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer
P – Presentation of information
A – As such - but only to the extent that a patent or patent application relates to that thing as such (Aerotel/Macrossan test)
P – Public policy or morality - if the commercial exploitation of invention would be contrary to public policy or morality, exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by law in the UK
S4A(1),(2) Patent protection for methods of treatment or diagnosis
A patent shall not be granted for:
- A method of treatment of the human or animal body by surgery or therapy, or
- A method of diagnosis practised on the human or animal body.
- This does not apply to a substance or composition for use in any such method
S4A(3),(4) First / further medical use claims (methods of treatment or diagnosis)
First medical use claim – the substance/composition is taken to be new if the use of the substance/composition in a method of treatment of diagnosis does not form part of the state of the art
Further medical use claim – the substance/composition is taken to be new if the specific use does not form part of the state of the art
Patent protection for biotechnological inventions - Schedule A2
An invention is not unpatentable solely on the ground that it concerns:
- A product consisting of or containing biological material; or
- A process by which biological material is produced, processed or used.
Biological material which is isolated from its natural environment or produced by means of a technical process may be patentable, even if it previously occurred in nature
Unpatentable biotechnological inventions - CHAMP U
Inventions which concern plants/animals may be patentable if technical feasibility is not confined to a particular plant or animal variety
An element isolated from the human body or otherwise produced by a technical process, including the sequence or partial sequence of a gene may be patentable, even if its structure is identical to that of a natural element
Industrial application of a sequence or partial sequence of a gene must be disclosed in the patent application as filed
Patent protection for a biological material possessing specific characteristics as a result of the invention shall extend to any biological material derived through propagation or multiplication and possessing same characteristics
For a process that enables a biological material to be produced possessing specific characteristics as a result of the invention – protection extended to material directly obtained from process and any other obtained through propagation or multiplication and possessing same characteristics
Protection for a product containing or consisting of genetic information extends to all material in which the product is incorporated and in which the genetic information is contained and performs its function
The above protection doesn’t extend to biological material obtained from the propagation or multiplication of biological material placed on the market by the proprietor or with his consent, provided that the material obtained is not subsequently used for other propagation or multiplication
Schedule A2(3) Unpatentable biotechnological inventions - CHAMP U
C – Cloning (processes for cloning human beings)
H – Human body (at the various stages of formation/development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene)
A – Animals (processes for modifying the genetic identity of animals which are likely to cause suffering without substantial medical benefit to man or animal, and animals resulting from these processes)
M – Modifying the germ line genetic identity of human beings (processes for)
P – Production of animals or plants (any variety of animal or plant or any essentially biological process for the production of animals or plants (not being micro-biological or other technical process))
U – Uses of human embryos for industrial/commercial processes
S2(2), (3) Define the state of the art
The state of the art shall be taken to comprise all matter (product, process, information, or anything else) which has been made available to the public at any time before the priority date by written or oral description, by use or in any other way
State of the art also includes matter contained in another patent application which was published on or after the priority date of the invention in question if:
- That matter was contained in the other patent application both as filed and as published; and
- The priority date of that matter is earlier than that of the invention.
- Has to be a GB or EP/PCT application entering EP regional / GB national phase
S2(4) When is a disclosure of matter disregarded
Disclosure of matter shall be disregarded if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either:
- The disclosure was due to, or in consequence of, having been obtained unlawfully or in breach of confidence:
from the inventor or any other person holding the invention in confidence,
or to whom the matter was disclosed in confidence by either the inventor or someone already in confidence - The disclosure was made in breach of confidence by any person who obtained the matter in confidence or to whom it was disclosed in confidence
- The disclosure was a due to the inventor displaying the invention at an international exhibition – inventor must state this on filing the application and file evidence in writing within 4 months
S76A Biotechnological inventions
Any provision of, or made under, this Act is to have effect in relation to a patent or an application for a patent which concerns a biotechnological invention, subject to the provisions of Schedule A2
Nothing in this section or Schedule A2 is to be read as affecting the application of any provision in relation to any other kind of patent or application for a patent
S7 Right to apply for and obtain a patent
Any person may make an application for a patent either alone or jointly with another
A patent may be granted:
- Primarily to the inventor or joint inventors
- Or in preference, any person(s) who, by virtue of any enactment or rule of law or an enforceable term of any agreement entered into with the inventor before the making of the invention, was entitled to the whole property in the UK
- Any successor(s) in title of the foregoing
- And to no other person
S13 Mention of inventor
The inventor or joint inventors have a right to be mentioned (if applicants are not inventors / not all are):
- in any patent granted for the invention and
- if possible in any published application for a patent for the invention, and
- if not, a right to be mentioned in a prescribed document (addendum or erratum to the application or patent)
Any person who alleges that someone should have been mentioned as the inventor may apply to the comptroller, for them to be mentioned as above
The applicant must file, within 16 months from filing or priority (2 month ext. as of right) a statement:
- Identifying the inventor(s)
- Where the applicant is not the sole inventor, indicating the derivation of their right to be granted the patent
- If he fails to do so, the application is withdrawn
- For PCT(GB) – prescribed period is later of 16 months from priority and 2 months from entry
PR5 International exhibitions
The statement mentioned in section 2(4)(c) that an invention has been displayed at an international exhibition must be in writing, within four months from the date of filing.
The written evidence must be in the form of:
- a certificate issued by the authority responsible for the international exhibition; and
- a statement, duly authenticated by that authority, identifying the invention as being the invention displayed at the exhibition.
The certificate must include the opening date of the exhibition (or if later, the date on which the invention was first displayed).
S36 Co-ownership - what they can do
Co-owners, subject to any agreement to the contrary, are entitled to an equal undivided share in the patent
Each are entitled, by himself or his agents, to do an act which would amount to an infringement of the patent, for his own benefit and without the consent of or the need to account for the others
And this shall not amount to an infringement
- Anyone else may supply one of the co-owners with the means, relating to an essential element of the invention, without infringing (as a secondary infringer)
- Co-owners are entitled to dispose of the patented product in the same way as if it had been disposed of by a sole registered proprietor
S36 Co-ownership - what they cannot do
Subject to contested entitlement or an agreement to the contrary, co-owners shall NOT, without the consent of the other(s):
- Amend the specification or apply for an amendment or for the patent to be revoked
- Grant a license under a patent or assign or mortgage a share in the patent or in Scotland cause or permit security to be granted over it
S39 Right to employees’ inventions (contract of service
An invention made by an employee shall be taken to belong to his employer if:
- It was made in the course of the normal duties or duties specifically assigned to him, and the invention might reasonably be expected to result from the duties
- He had a special obligation to further the interests of the employer’s undertaking
- Any other invention made by the employee shall belong to the employee –in this case, the employee can apply for a patent or perform or work the invention, without infringing any copyright or design right as a consequence of the employer entitlement to any model or document relating to the invention.
S40 Compensation of employees for certain inventions
If an employee makes an application for compensation, within 1 year after the patent ceases to have effect, and:
- The employee has made an invention belonging to the employer for which a patent has been granted, and
- The invention is of outstanding benefit to the employer, taking size and nature of the employer into consideration,
- The employee should be awarded compensation by the employer
If an employee makes an application for compensation, within 1 year after the patent ceases to have effect, and
- A patent has been granted for an invention made and belonging to the employee,
- His rights in the invention, patent or application have been assigned to the employer or an exclusive licence has been granted to the employer, and
- The benefit derived by the employee is inadequate in relation to the benefit derived by the employer,
- The employee should be awarded compensation
The deadline can be extended at the Comptroller’s discretion
S41 Amount of compensation
An award of compensation to an employee will secure a fair share (having regard to all the circumstances) of the benefit from which the employer has derived or expected to derive from any of:
- The invention
- The patent or application for the invention
- The assignment to a person connected with the employer
Whilst taking into account:
- The nature of the employee’s duties, his remuneration and other employment advantages
- The effort and skill in inventing
- The effort and skill which any other person has devoted jointly
- The contribution made by the employer
Compensation payment can be a lump sum or periodical payment, or both
S42 Enforceability of contracts related to employees’ inventions
Any term in a contract relating to inventions made by an employee which diminishes the employees’ rights (e.g. employee rights, compensation) shall be unenforceable to the extent that it diminishes his rights
But this does not extend to any duty of confidentiality
This section also applies to Crown employees
S43 Supplementary for employee rights/compensation
Limits sections to employees mainly employed in the UK, or if he was not mainly employed anywhere or place of employment could not be determined, then if the employer had a place of business in the UK to which the employee was attached
An employee does not make an invention if they merely contribute advice or other assistance in the making of an invention by another employee
Employees can claim compensation from overseas granted patents
The benefit derived or expected to be derived shall not include any benefit derived or expected to derived from the invention after the patent has expired or been surrendered or revoked
