Patents 101 Part 3 - Patentability
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The document outlines the conditions for granting a patent under the Patents Act 1977, emphasizing that an invention must be new, involve an inventive step, and be capable of industrial application. It discusses the definitions of 'state of the art' and the criteria for assessing novelty and inventiveness, including relevant case law. The document also highlights exclusions from patentability, particularly concerning business methods and software implementations.
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3. “State of the Art”
An expression often used in advertising and general conversation for the latest thing. It is defined as follows by
s.2 (2) and (3) for the purposes of the Act:
“(2) The state of the art in the case of an invention shall be taken to comprise 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.
(3) The state of the art in the case of an invention to which an application for a patent or a
patent relates shall be taken also to comprise matter contained in an application for another
patent which was published on or after the priority date of that invention, if the following
conditions are satisfied, that is to say -
(a) that matter was contained in the application for that other patent both as filed and as
published; and
(b) the priority date of that matter is earlier than that of the invention.”
If something falls within the art it cannot by definition be true.
4. Test of Novelty
In General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd (No.1) [1971] FSR 417 Lord Justice Sachs
said at 443:
“To determine whether a patentee's claim has been anticipated by an earlier publication it IS
necessary to compare the earlier publication with the patentee’s claim. The earlier publication
must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant
surrounding circumstances which then existed, and without regard to subsequent events. The
patentee's claim must similarly be construed as at Its own date of publication having regard to the
relevant surrounding circumstances then existing. If the earlier publication, so construed, discloses
the same device as the device which the patentee by his claim, so construed, asserts that he has
invented the patentee s claim has been anticipated, but not otherwise.”
5. It involves an Inventive Step
S.3 provides:
“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 by virtue only of section 2(2)
above (and disregarding section 2 (3) above).”
This section introduces a “person skilled in the art” or “skilled addressee” who is also found in several other
contexts. He or she is the person with the skill and knowledge needed to make or work the invention. A 20
year monopoly should not be granted for a device that would have been obvious to a skilled addressee having
regard to what was known at the time. In Actavis Group PTC EHF and others v ICOS Corporation and Another:
[2019] Bus LR 1318, [2019] UKSC 15
3
, Lord Hodge endorsed the Windsurfing/Pozzoli test of obviousness at
paragraph [60] of his judgment:
“(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done,
construe it;
3
https://www.bailii.org/uk/cases/UKSC/2019/15.html](https://image.slidesharecdn.com/patents101-3-200501200611/85/Patents-101-Part-3-Patentability-2-320.jpg)
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(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state
of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences
constitute steps which would have been obvious to the person skilled in the art or do they
require any degree of invention?”
He also indorsed at [61] the “problem and solution” approach developed by the EPO’s Boards of Appeal and set
out in the EPO Examiners’ Guidelines of Nov 2017:
“Problem-and-solution approach
In order to assess inventive step in an objective and predictable manner, the so-called ‘problem-
and-solution approach’ should be applied. Thus deviation from this approach should be
exceptional.
In the problem-and-solution approach there are three main stages:
(i) determining the ‘closest prior art’,
(ii) establishing the ‘objective technical problem’ to be solved, and
(iii) considering whether or not the claimed invention, starting from the closest prior art and the
objective technical problem, would have been obvious to the skilled person.”
Lord Hodge warned at [62]:
“While both approaches focus on the inventive concept put forward in the claims, neither approach
should be applied in a mechanistic way. Both are glosses on the text of section 3 of the 1977 Act
and article 56 of the EPC and neither requires a literalist approach to the wording of the claim in
identifying the inventive concept.”
6. It is capable of industrial application
This is the least problematic of the conditions. S.4 provides:
“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.”
Footnote 5 of art 27 of TRIPS which is written in similar terms to s.1 (1) of the Patents Act and art 52 (1) of the
EPC explains that for the purposes that article “capable of industrial application” may be deemed by a WTO
member state to be synonymous with the term “useful”.
7. Excluded Matter
(1) It will be recalled that s.1 (1) refers to exclusions in s.1 (2) and (3) and s.4A.
(2) S.1 (2) declares that
“the following (among other things) are not inventions for the purposes of this Act, that is to say,
anything which consists of -
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or
a program for a computer;
(d) the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the
purposes of this Act only to the extent that a patent or application for a patent relates to that thing
as such.”
(3) S.1 (3) provides that “a patent shall not be granted for an invention the commercial exploitation of which
would be contrary to public policy or morality.” However, this is tempered by s.1 (4):](https://image.slidesharecdn.com/patents101-3-200501200611/85/Patents-101-Part-3-Patentability-3-320.jpg)
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“For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public
policy or morality only because it is prohibited by any law in force in the United Kingdom or any
part of it.”
(4) S.4A (1)
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provides that patent shall not be granted for the invention of;
(a) a method of treatment of the human or animal body by surgery or therapy, or
(b) a method of diagnosis practised on the human or animal body.
However, s.4A (2) permits patents for medicines or other products for use in such treatment or diagnosis
“Subsection (1) above does not apply to an invention consisting of a substance or composition for
use in any such method.”
S.4A (3) permits a second medical use for a known substance or composition:
“In the case of an invention consisting of a substance or composition for use in any such method,
the fact that the substance or composition forms part of the state of the art shall not prevent the
invention from being taken to be new if the use of the substance or composition in any such
method does not form part of the state of the art.”
S.4A (4) also permits a new use of a known method of using a known substance or composition such as a new
dosage:
“In the case of an invention consisting of a substance or composition for a specific use in any such
method, the fact that the substance or composition forms part of the state of the art shall not
prevent the invention from being taken to be new if that specific use does not form part of the state
of the art.”
8. Business Method and Software Implemented Inventions
(1) Arguably the most problematic exclusion is methods of doing business and computer programs in s.1 (2)
(c) of the Patents Act. That is because services are now the predominate sector of the economy and many of
them are delivered digitally.
(2) The patent laws of China, Japan, South Korea and the USA have no equivalent to s. 1 (2) (c).
(3) Happily, the exclusion is moderated by the words
“but the foregoing provision shall prevent anything from being treated as an invention for the
purposes of this Act only to the extent that a patent or application for a patent relates to that thing
as such.”
That exception to the exclusions allows patents to be granted for some software implemented and business
method inventions.
(4) The methodology by which the exclusion is balanced against the exception was propounded by Lord
Justice Jacob in the Aerotel/Macrossan appeals
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at paragraph [40]:
"(1) properly construe the claim
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature".
4
https://www.gov.uk/guidance/the-patent-act-1977/section-4a-methods-of-treatment-or-diagnosis
5
Aerotel Ltd. v Telco Holdings Ltd and others heard with Re Macrossan’s patent [2007] Bus LR 634, [2007] 1 All ER 225,
[2006] Info TLR 215, [2007] BusLR 634, [2006] EWCA Civ 1371, [2007] RPC 7
(https://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html](https://image.slidesharecdn.com/patents101-3-200501200611/85/Patents-101-Part-3-Patentability-4-320.jpg)
Patents 101 Part 3 - Patentability
- 1. 1 25 April 2020 Jane Lambert i 1. Conditions for the Grant of a Patent S.1 (1) of the Patents Act 1977 1 provides: “A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say - (a) the invention is new; (b) it involves an inventive step; (c) it is capable of industrial application; (d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below; and references in this Act to a patentable invention shall be construed accordingly.” Similarly, art 52 (1) of the EPC provides: “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.” 2 Since the Patents Act 1977 was enacted to give effect to the EPO there are parallel provisions in the EPC to all the following sections of the Patents Act. 2. “The Invention is new” S.2 (1) of the Act provides: “An invention shall be taken to be new if it does not form part of the state of the art.” This is a long winded way of saying that an invention cannot be new if it has already been invented. It also introduces the concept of the “state of the art” and “the prior art”. 1 https://www.gov.uk/guidance/the-patent-act-1977/section-1-patentable-inventions 2 https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar52.html Patents 101 Part 3: Patentability PP
- 2. 2 3. “State of the Art” An expression often used in advertising and general conversation for the latest thing. It is defined as follows by s.2 (2) and (3) for the purposes of the Act: “(2) The state of the art in the case of an invention shall be taken to comprise 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. (3) The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say - (a) that matter was contained in the application for that other patent both as filed and as published; and (b) the priority date of that matter is earlier than that of the invention.” If something falls within the art it cannot by definition be true. 4. Test of Novelty In General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd (No.1) [1971] FSR 417 Lord Justice Sachs said at 443: “To determine whether a patentee's claim has been anticipated by an earlier publication it IS necessary to compare the earlier publication with the patentee’s claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee's claim must similarly be construed as at Its own date of publication having regard to the relevant surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented the patentee s claim has been anticipated, but not otherwise.” 5. It involves an Inventive Step S.3 provides: “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 by virtue only of section 2(2) above (and disregarding section 2 (3) above).” This section introduces a “person skilled in the art” or “skilled addressee” who is also found in several other contexts. He or she is the person with the skill and knowledge needed to make or work the invention. A 20 year monopoly should not be granted for a device that would have been obvious to a skilled addressee having regard to what was known at the time. In Actavis Group PTC EHF and others v ICOS Corporation and Another: [2019] Bus LR 1318, [2019] UKSC 15 3 , Lord Hodge endorsed the Windsurfing/Pozzoli test of obviousness at paragraph [60] of his judgment: “(1) (a) Identify the notional ‘person skilled in the art’; (b) Identify the relevant common general knowledge of that person; (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; 3 https://www.bailii.org/uk/cases/UKSC/2019/15.html
- 3. 3 (3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed; (4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?” He also indorsed at [61] the “problem and solution” approach developed by the EPO’s Boards of Appeal and set out in the EPO Examiners’ Guidelines of Nov 2017: “Problem-and-solution approach In order to assess inventive step in an objective and predictable manner, the so-called ‘problem- and-solution approach’ should be applied. Thus deviation from this approach should be exceptional. In the problem-and-solution approach there are three main stages: (i) determining the ‘closest prior art’, (ii) establishing the ‘objective technical problem’ to be solved, and (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.” Lord Hodge warned at [62]: “While both approaches focus on the inventive concept put forward in the claims, neither approach should be applied in a mechanistic way. Both are glosses on the text of section 3 of the 1977 Act and article 56 of the EPC and neither requires a literalist approach to the wording of the claim in identifying the inventive concept.” 6. It is capable of industrial application This is the least problematic of the conditions. S.4 provides: “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.” Footnote 5 of art 27 of TRIPS which is written in similar terms to s.1 (1) of the Patents Act and art 52 (1) of the EPC explains that for the purposes that article “capable of industrial application” may be deemed by a WTO member state to be synonymous with the term “useful”. 7. Excluded Matter (1) It will be recalled that s.1 (1) refers to exclusions in s.1 (2) and (3) and s.4A. (2) S.1 (2) declares that “the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of - (a) a discovery, scientific theory or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information; but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.” (3) S.1 (3) provides that “a patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.” However, this is tempered by s.1 (4):
- 4. 4 “For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.” (4) S.4A (1) 4 provides that patent shall not be granted for the invention of; (a) a method of treatment of the human or animal body by surgery or therapy, or (b) a method of diagnosis practised on the human or animal body. However, s.4A (2) permits patents for medicines or other products for use in such treatment or diagnosis “Subsection (1) above does not apply to an invention consisting of a substance or composition for use in any such method.” S.4A (3) permits a second medical use for a known substance or composition: “In the case of an invention consisting of a substance or composition for use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.” S.4A (4) also permits a new use of a known method of using a known substance or composition such as a new dosage: “In the case of an invention consisting of a substance or composition for a specific use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if that specific use does not form part of the state of the art.” 8. Business Method and Software Implemented Inventions (1) Arguably the most problematic exclusion is methods of doing business and computer programs in s.1 (2) (c) of the Patents Act. That is because services are now the predominate sector of the economy and many of them are delivered digitally. (2) The patent laws of China, Japan, South Korea and the USA have no equivalent to s. 1 (2) (c). (3) Happily, the exclusion is moderated by the words “but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.” That exception to the exclusions allows patents to be granted for some software implemented and business method inventions. (4) The methodology by which the exclusion is balanced against the exception was propounded by Lord Justice Jacob in the Aerotel/Macrossan appeals 5 at paragraph [40]: "(1) properly construe the claim (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature". 4 https://www.gov.uk/guidance/the-patent-act-1977/section-4a-methods-of-treatment-or-diagnosis 5 Aerotel Ltd. v Telco Holdings Ltd and others heard with Re Macrossan’s patent [2007] Bus LR 634, [2007] 1 All ER 225, [2006] Info TLR 215, [2007] BusLR 634, [2006] EWCA Civ 1371, [2007] RPC 7 (https://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html
- 5. 5 This test is used regularly by the IPO when determining the patentability of software implemented patents. i Jane Lambert 4-5 Gray’s Inn Square London WC1R 3AH jane.lambert@nipclaw.com www.nipclaw.com +44 (0)20 7404 5252