Patentability and Excluded Subject Matter Flashcards
What conditions must be satisfied for a patent to be granted?
New, Inventive step, Industrial Application, No excluded subject matter
What is the significance of the case Biogen Inc v Medeva plc [1997] RPC 1?
Definition of the word “invention”
What are some examples of excluded subject matter under Section 1(2a)?
Discovery, scientific theory, or mathematical method.
What exclusions are specified in Schedule A2 introduced by s76A relating to humans? (5)
Human body, gene sequences, cloning humans, Modifying the human germ line, Industrial or commercial exploitation of human embryos
What is the Aerotel/Macrossan test used for?
It assesses whether an invention relates to an excluded category.
What role do decisions of the EPO Boards of Appeal play in UK patent law?
Persuasive value and generally followed by UK courts if a settled view of European patent law exists.
True or False: The UK Office can depart from Aerotel/Macrossan if EPO practice becomes settled.
False. The UK Office is bound by Aerotel/Macrossan.
What is substance over form?
Examiner must look beyond the strict literal wording of the claim.
What is the Balance of Probabilities
Standard of proof required by UKIPO/EPO - one set of facts is more likely to be true than the other.
What is ‘Falconer Reasoning’?
Known elements in a claim are removed, leaving only the unknown as the contribution - rejected.
What kind of contribution is required to consider an invention as patentable under the Aerotel/Macrossan test?
Technical contribution
What is the significance of the case Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463?
Claims to novel and inventive subject matter may still be excluded.
Assessing excluded subject matter involves a ‘question of law’ - what does this mean?
question that must be answered by a judge and not a jury.
Why was the “excluded” matter in Merril Lynch’s Application allowed?
a computer program is not excluded if it provides a technical effect beyond simply executing an abstract algorithm
What is - AT&T Knowledge Ventures LP’s Application [2009] EWHC 343 (Pat) used for?
To define when a computer-implemented invention makes a technical contribution.
What was the outcome of Genentech Inc’s Patent [1989] RPC 147
The identification of a gene sequence was not patentable as such, but its application in producing proteins was.
What must an invention demonstrate to avoid exclusion under section 1(2)?
It must provide a technical effect beyond merely automating a non-technical process.
Under what conditions may a mathematical model be allowed for patentability?
If it is used in a technical process carried out on a physical entity by technical means.
Why was Gale’s Application excluded?
Merely prescribed different calculations for a conventional CPU - did not solve a technical problem.
Example of when an aesthetic creation was patentable?
Epoch Company Ltd v Character Options Limited [2017] EWHC 556 (IPEC) - water-soluble resin beads.
Define a mental act in the context of patentability.
Purely mental implementation.
How can mental design methods be made patentable? (Halliburton v Smith [2006])
Adding non-mental limitations, such as manufacturing.
What are the exclusions related to Business Methods?
CONDUCTING an entire business
TOOLS for business transactions
Procedural STEPS of an administrative or financial character.
What are the AT&T signposts used for?
To assess whether a claimed invention involving a computer program makes a technical contribution.
