#5616 - Patents - Intellectual Property Law

Patents

Intellectual Property LLM

Notes

Introduction to Patents 3

What is a Patent? 3

History 3

Procedure 3

Prosecution of a Patent 4

Systemic Complexities 4

Why Have Any Patent System? 5

Entitlement 6

Inventor 6

Employer 6

Compensation For Employee Inventions 7

Novelty 8

Origins 8

Procedure 8

Prior Art (Step 2) 8

Made available in the prior art? (Step 3) 9

Difficult Issues 10

Inventive Step 12

Pozzoli 13

Stage 1 – Identify the person skilled in the art with common general knowledge 13

Stage 2 – Identify the Inventive Concept 13

Stage 3 – Identify the Differences Between the State of the Art and the Inventive Concept 13

Stage 4 – The Comparison 14

Industrial Application 16

Methods of Medical Treatment 16

Crackpot Inventions 16

Chemistry, Biotech and Genetics – Early Research Milestones 16

Sufficiency of Disclosure 18

The Claim/Specification Balance 18

Infringement 19

Types of Infringing Activity 19

Indirect Infringement 21

Additional Liability 22

Scope of Protection 22

Doctrine of Equivas 24

Defences 24

Private, Non-Commercial Uses (s60(5)(a)) 24

Experimental Uses (s60(5)(b)) 24

Prior Use (s64(1)) 25

Biotech Inventions 25

Reflections 25

Introduction to Patents

Patent law has a reputation for being difficult, because there is a lot of long and complex case law, and reading the cases is hard because there are hard scientific concepts at issue, but we’re not expected to understand the technologies, and we are only expected to know the main legal principles. Where the facts are difficult, a potted summary will be given.

“You can’t hold back the waves, but you can learn to surf”

It’s more interesting and important than other parts of IP. Packaging is boring, as are trade names, but the chemicals inside are interesting!

We want to focus on how the law is interpreted and applied, along with how the law seeks to balance competing interests between innovators, competitors and users of technology, and how well it achieves that. There is a lot of politics behind patent law, and it generates a lot of strong opinions, so this might give you an idea as to how the law is developing. There is an interesting relationship between the UK and the EPO and the CJEU. There is also an assumption that patents provide a sensible incentive for innovation, and this is an important point as well.

It is a legal mechanism by which exclusive rights/monopolies can be obtained (i.e. to make, work and sell specified products or processes). They are time-limited, exclusive rights to restrict the trade and use of ideas and information, incorporated in a qualifying product or process. In a patent document, there is bibliographic information, which is used primarily for administrative purposes, and then a specification, with a description and the claims of the owner – defining the scope of the protection. This is interpreted in light of the description. There will be lots of claims – broad ones to maximise the breadth of the patent, with narrow ones as fall-back options.

They are similar to other IP rights – time limited, exclusive rights, and it's a species of property. It is territorial, and only valid in the territory that grants it. They differ in key respects, though. They must be applied for, and registered, unlike copyright. This means that there are whole systems of patent attorneys and examiners to register them and grant them. There are also differences in requirement – they need to be inventions, and there are requirements of novelty and inventiveness, and they need to be of credible utility. You are not required to use them, but there is a renewal requirement, and they only last for 4 years. Unlike copyright, you don’t need to prove copying of the handiwork – any independent invention of the same idea is infringement.

Used to be granted by monarchs, and reformed by the Statute of Monopolies in 1623. In the ensuing centuries, there’s been a rocky ride to defining the principles surrounding patent law, which give it the legitimacy to give this right to people. Patents Law now governed by Patents Act 1977, which was designed to bring the UK into line with the European Patents Convention of 1973.

The question whether to patent must be taken very early on, and is a big decision. Whether or not to patent is dependant on a company’s business model. It might decide to use trade secrets, or maybe it won’t patent or use trade secrets - open science attitude. However, this is not widespread, and there are prolific uses of the patent system.

Once you have decided to patent, how do you do it? This is done either through the UK patent office, or the EU patent office. The difference between them is in procedure. The UK office in Swansea can grant a UK national patent. The EPO in Munich can grant a bundle of national patents. It checks the application against the European Patent convention, and against the interpretation of that act by its own boards of appeal in order to come to a decision. The European Patent Office doesn’t have a system of precedent, but there is some ability to reference to larger boards of appeal. The systems aren’t that different (the UK courts, and the UK acts are intended to harmonise the interpretation of the rules, but interpretation now always the same, and not always possible to discern whether interpretation is the same.

EPO has a process of opposition – a Third Party can challenge the grounds of a patent up to 18 months after its being granted. However, in both systems you can apply to revoke a patent. There are differences in cost and speed, but the biggest difference is the multinational aspect of the EPO.

Both of that bodies are supposed to be self-sustaining QuANGOs

The most important thing to note is the priority date. This is the date that the provisional application is filed. This is the date at which all of the criteria are judged. This is a tricky decision – you want to be as early as possible, but you can’t fall short of proving inventive step, industrial application etc. Revocation is not uncommon, and when challenges happen, they are often successful. However, a patent officer has, on average, less than a day to read all of the scientific literature, and apply the law, to examine the patent application.

The EPO procedure is important – lots of debate about whether it should change. EPC and the EPO are not part of the EU legal framework. They are actually an international regional treaty that sits outside the EU. It includes a number of non-EU members, so not easy to transpose it into the EU, or vice-versa. No direct route to the CJEU, for example. Even though it’s not a EU instrument, the EU is very important in the protection of inventions, especially in biotech (see Biotech Directive). In the event of legal uncertainty here, the EPO can refer questions to the CJEU.

Another set of complexities is between the EPO and the UK. The EPO plays no part in enforcement, only granting – it grants a bundle of individual national patents, which need to be enforced separately in the different countries where the patent applies, with different rules of procedure and appeal. A result in one country does not necessarily lead to the same result in another, so inconsistent results are common between Europe and the UK. There are also different bodies of case law precedent. EPO judgements are not binding on the UK, but they are taken very seriously, unless they are ‘steering patent law onto the rocks’, as was thought to be the case with computer-implemented inventions.

EPO decisions are taken so seriously because they are made by technical experts, and the precedent given is very different to the UK courts system.

This would be similar to the CTM. Businesses would like it, as it would decrease costs a lot. The idea has been around since the 1960s, even before the EPC in 1977. This would be a Community Patent (now the Unitary Patent Proposal). This has proven elusive – there are several sticking points. The question of language is important – patent documents are translated, and the court cases are in many different languages. Every word can be important, so translation is very costly. There is also no consensus that there should be any one (or a few) prime language(s). Small businesses are already sceptical, and forcing them to read and defend patents not in their mother tongue seems bad (see Italy and Spain’s objections). Also, how would it be enforced? The courts might lead to poor precedent – see CTM and Copyright. What about bundles of national patents? Could these still be an option for businesses that want protection only in one or a few designated countries? This would lead to more fragmentation! Does the EU have competency here? And who would grant them? The EPO has no EU competency. Lots of stop-starting here.

In 2009, Council of the European Union agreed a broad principle for an EU patent. December – EU parliament voted in favour for a unitary patent. Spain and Italy still opposed, but it is possible to proceed without their support. The proposal has been set up using a procedural mechanism – Enhanced Co-operation – that doesn’t need them. Spain and Italy have already challenged the proposals, and in the challenge, they dodge the question whether the proposal is sufficiently deferential to the CJEU. In the past, this has been a problem for similar proposals. The relationship with the CJEU is not clear but we are on a path to Unitary Patents.

Complete harmonisation would be...