#19704 - 16. Patents Introduction And Novelty - Intellectual Property Law

WEEK 16

PATENTS INTRODUCTION AND NOVELTY

CONTEXT

The patent bargain is described by the Supreme Court – “an inventor receives the reward of a time-limited monopoly of the industrial use of its invention in return for disclosing the invention and dedicating it to the public for use after the monopoly has expired.” (Unwired Planet International v. Huawei Technologies (UK) [2020] UKSC 37, [2])

The protection offered by copyright law / trade mark registration is longer than patents (patents are limited to 20 years). Nevertheless, rights granted by patents are more extensive.

• Rights will be infringed irrespective of whether D copied from the patented invention.

Patent rights are only granted after an applicant complies with a relatively onerous registration process (unlike copyright which arises automatically upon creation of the work)

• Imposes a number of limits and safeguards on the types of inventions, the scope of monopoly granted, and the nature of information disclosed in the patent.

There are two bodies operating in the UK to grant patents

UK IPO

• Patents granted by the IPO only apply in the UK; A british patent cannot be infringed in Germany/France

EPO – European Patent Office

• Grants numerous national patents

• Instead of granting a single pan – European patent, they grant a series of national patents

Justifications for patents

• Emphasising natural rights of inventors to products of their mental labour (F. Machlup and E. Penrose, 1950)

• Justice demands an inventor’s contribution to be recognised by the grant of a reward (ibid)

• Public interest rationales are more popular: the public benefits that flow from the grant of a patent;

• The public should only ever have to endure the harm caused by the grant of a patent if the public receives some corresponding benefit

  • Initially, the rationale was said to flow from the fact that the patentee introduced a form of new technology. Patents acted as an incentive to individuals/organisations to disclose information that would’ve otherwise remained secret

  • The patent system played in the generation and circulation of technical information (information function of the patent system)

The primary focus of the patent system is the disclosure of technical information for scientific and industrial reasons, however the information collected at other patent offices (globally) is used for other purposes too! (eg. historians using the system as an indicator of public attitudes toward different attitudes). T. O’Dell, Inventions and Official Secrecy (1994).

Patents can be exploited for over 20 years, thus investors will be more willing to fund research and development. Patents act as a vector, in this sense, to connect scientific and technical research with commercial spheres.

In a practical sense, a product of patented by retailers who try to gain a competitive advantage to show the innovative nature of their products.

Ethical debates –patents granted for genetically modified humans? Animals? Plants?

Reflections on the features of the patent system

1. A system of regulation

2. Regulates and controls behaviour in a desirable way

   1. Promote economic ends, encouraging new industries, research and development, or innovation

   2. By contrast – whenever non-economic factors are discussed (health, human rights, gender, the environment, ethics), they are seen as negative constraints upon the core activates of the patent system

No reason why the patent system, as a regulatory tool, should only be used in the pursuit of economic ends, nor any reason why ‘external’ factors such as the impact of technology on the environment or health should not fall within the core remit of the patent system

• Arguments of this nature are beginning to have an influence on patent law, particularly in relation to its role in promoting food security, improving access to medicine, reducing climate change, and protecting Indigenous knowledge

Moving on to Adcock’s reading !

Pg. 487-511 (24 pages)

The five criteria to be patentable including:

• Must be capable of industrial application

• No immoral inventions

The Patents Act 1977

• No requirement for the existence of an invention as a precondition

• Subject matter is regulated primarily by way of exclusions

  • The system defines what is not patentable rather than what is

The five criteria:

1. Set out in section 1(2) and Article 52(2)(3). In essence these provide a non-exhaustive list of things that are not regarded as inventions. If the subject matter of an application falls within the scope of these provisions, it will not be patentable.

2. The second restriction on the subject matter excluded from patent protection provides that a patent shall not be granted for ‘any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a microbiological process or the product of such a process’ (PA 1977, Sch. A2, para. 3(f))

3. The third restriction arises from the fact that patents are not granted for methods of medical and veterinary treatment. (PA 1977, s. 4A(1); EPC, Art. 53(c)).

4. The fourth factor that restricts the subject matter protected by patent law is that patents are not granted for immoral inventions or inventions that are contrary to public policy. PA 1977, s. 1(3)

• This exclusion has particular significance in relation to biotechnology. A number of specific exclusions relating to immoral biological inventions are also contained in Schedule A2, paragraph 3(a)–(d), to the Patents Act 1977 and Rule 28 of the EPC Implementing Regulations (EPC Regs).

5. Finally, to be patentable, an invention must be capable of ‘industrial application’ PA 1977, ss 1(1)(c), 4; EPC, Art. 52(1)

• While this is probably the least important of the five requirements, it has been important in relation to inventions involving naturally occurring substances.

Specific applications

Different types of inventions that are non-inventions

1. naturally occurring substances and discoveries; (s.1(2)(a))

2. a literary, dramatic, musical or artistical work or any other aesthetic creation whatsoever (s.1(2)(b))

   1. these are protectable by copyright

3. computer programs and computer-related inventions; (s.1(2)(c))

4. methods of doing business; (s.1(2)(c))

5. the presentation of information (s.1(2)(d)); and

6. methods for performing a mental act.

Non-patentable inventions

1. s.1(3) - Section 1(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.

   1. EPC- Article 53(a)

   2. Howard Florey/Relaxin [1995] EPOR 541

   3. Edinburgh Patent [2002] Patent No 0695351

2. Schedule 2, Section 3 - the human body, processes for cloning human beings, processes for modifying the germ line, uses of human embryos for industrial or commercial purposes, any variety of animal or plant

   1. Novartis/Transgenic Plant [2000] EPO Reports 303

   2. Harvard/Oncomouse [1990] O.J. EPO 476; [1992] O.J. EPO 589

   3. WARF Patent Application T1374/04 [2004]

There are different approaches between UK IPO and the EPO.

Granting criteria

• Invention

• Novelty

• Inventive step

• Industrial application

• Not excluded

• Sufficiently disclosed

Discoveries and natural substances

Advances in genetic engineering over the last few decades have enabled scientists to isolate and replicate a host of naturally occurring substances.

• A lot of research invested into this; attempts made to patent the results of this research

• Patentability depends on whether the resulting products and processes are treated as discoveries or inventions.

  • Discoveries as such are excluded from the remit of patentable subject matter (PA 1977, s. 1(2)(a); EPC, Art. 52(2)(a))

However, if it can be shown that, when viewed as a whole, an application that incorporates a discovery brings about a technical change, it may be patentable.

• Eg. where a known material can withstand mechanical shock, it is not patentable, but a railway sleeper made from this material might be. EPO Guidelines, G-II, [3.1].

Patent law distinguishes between naturally occurring substances (unpatentable discoveries) and the products and processes that result from the human effort in isolating those substances from their natural environment (patentable inventions)

• Does it freely exist in nature or is it artificial (contain the necessary degree of human intervention for the resulting product to be called an invention)?

Examples:

If a process is developed and enables a substance found in nature to be isolated and obtained from its surroundings, the process may be patentable. EPO Guidelines, G-II, [3.1].

• The finding of a substance freely occurring is a discovery. EPO explained that this means the discovery of the Moon would not be patentable…

  • Reflected in the art.5(1) Biotech Directive - ‘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, cannot constitute a patentable discovery’

  • Also: PA 1977, Sch. A2, para. 3(a)

If a natural substance that has been isolated from its surroundings can be properly characterized either by its structure, by the processes by which it is obtained, or by other parameters, the substance per se may be patentable.

• Eg. as long as the something is inside the human / animal body, it cannot be patentable. When it is isolated by means of a technical process, it becomes eligible for patent protection.

• Relaxin - concerned claims relating to DNA sequences of a naturally occurring substance that relaxes the uterus during childbirth, which was obtained from the human ovary

  • The opposition...