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Summary Patent Law - Commercial Law and Intellectual Property
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Condenses all the reading, lectures and SGS activities to about 30% the original volume. Clear, Concise and Organised.
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6. PATENTS Monopoly right to use and exploit an invention that can be used industrially
o Only patent owner may use/exploit invention or grant 3 rd party to do so
o 3rd party use/exploitation w/o permission = infringement
Governed by Patents Act 1977 (PA 1977) – lasts 20 years from priority date (s.25(1))
PRODUCT PATENTS = invention relates to new product/improvement to a product
o E.g. converter to enable cars to run on biofuel, a mouse trap
PROCESS PATENT = Invention relates to new process or new way to carry out process
o E.g. method of putting chocolate into an ice cream
CRITERIA TO REGISTER (s.1(1) PA 1977)
1. NOVELTY (s.2)
Must be totally new – not already forming part of the state of the art known to the public as
at the priority date of the patent
o Priority date = date of filing app (s.5(1) PA)
State of the art (s.2(2) PA)
‘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 United Kingdom or elsewhere) by written or oral description, by use or in
any other way.’
EXAMPLES:
o Publications of any kind
o Prior apps for patents occurring anywhere in world even if not published anywhere
o Use of invention in public of any kind even if no one could be expected to have
examined the invention – i.e. an enabling disclosure
Anticipation
Patent app fails if deemed to have been ‘anticipated’ in the state of the art
o i.e. an enabling disclosure by means of prior use or publication of the invention
anticipate = discloses details of invention sufficiently to enable a skilled person to work or
implement the same invention so that one patent expires, 3 rd parties can exploit tech freely
enabling disclosure = already forms part of the state of the art = lacks novelty = patent fails
Lux Traffic Controls Ltd v Pike Signals Limited [1993]
o Product used to control traffic lights used in public – not necessary to show anyone
had taken a close look at it – mere fact that product available for public to view =
product formed state of the art
Windsurfing International v Tabur Limited [1985]
o 12yo built homemade surfboard with sail and used it in public – patent granted for
similar windsurf board many years later – patent failed because of boys use in public
Synthon v Smithkline Beecham [2006]
o S sought to revoke SK’s patent for process of producing salts on grounds of lack of
novelty based on a prior disclosure of S – enabled ordinary skilled man to perform it
, Self-disclosure
Matter forms state of the art even if it is the inventor who has made the prior disclosure
If client invents new product that may be patentable it should avoid putting them on market
before filing appropriate patent apps.
o Advise client to keep all details of new invention totally secret apart from disclosure
to solicitor
If some disclosure needed for attracting investment – ensure parties sign
confidentiality agreement
Disclosure made unlawfully or in breach of confidence (s. 2(4) PA 1977)
Provides some exceptions to strict rule on self-disclosure – disclosure is disregarded if:
o Disclosure of info made as a consequence of a breach of confidence or obtained
unlawfully; and
o Inventor applies for patent within 6 months of disclosure by the party in breach
2. INVENTIVE STEP (s.3 PA 1977)
New invention must involve inventive step ‘not obvious to a person skilled in the art’
o i.e. the experienced but unimaginative technician – taken to know the field in which
invention is concerned BUT to have no spark of original thought
key question – is the product/process inventive or merely obvious in light of what went
before?
‘obviousness’ – judged at priority date at patent (NOT in retrospect) and assessed
according to case law:
Pozzoli SPA v. BDMO SA and others [2007]
Windsurfing International v Tabur Limited [1985]
Windsurfing / Pozzoli Criteria for inventive step
1. a) Identify the notional ‘person skilled in the art’; and
b) Identify what common general knowledge that person would have at the priority date.
2. Identify the inventive concept of the product or process.
3. What differences are there between this invention and the state of the art, i.e. matters
known and used already?
4. Do these differences amount to steps that would have been obvious to the person skilled in
the art if they had no knowledge of the invention in question? If so, there is no inventive
step.
Invention can be simple and still qualify as an inventive step
Combining two known concepts to create a new product sufficient to satisfy test provided
combo is truly inventive
o i.e. not obvious to the skilled but unimaginative man having regard to the state of the
art.
Not necessary for it to be an outstanding leap forward
Dyson Appliances Ltd v Hoover [2001]
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