Patents 101 Part 3 - Patentability
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The document outlines the key criteria for patentability as defined in the Patents Act 1977, emphasizing that an invention must be new, involve an inventive step, and be capable of industrial application while not falling under excluded categories. It discusses concepts such as novelty, state of the art, inventive step, and specific exclusions such as scientific theories and aesthetic works. Additionally, it references important case law to clarify the interpretation of these criteria.
![Anticipation
In General Tire & Rubber Company v
Firestone Tyre & Rubber Company
Limited, [1972] RPC 457, CA said:](https://image.slidesharecdn.com/patents101-3-200501181432/85/Patents-101-Part-3-Patentability-7-320.jpg)
![Inventive Step
The Supreme Court approved the following
test in Actavis Group PTC EHF and others
v ICOS Corporation and another [2019] Bus
LR 1318, [2019] UKSC 15
"(1) (a) Identify the notional [skilled
addressee];
(b) Identify the relevant common general
knowledge of that person;](https://image.slidesharecdn.com/patents101-3-200501181432/85/Patents-101-Part-3-Patentability-11-320.jpg)
Patents 101 Part 3 - Patentability
- 1. Patents 101 Part 3: Patentability Jane Lambert 25 April 2020
- 2. Content • Patentability • Novelty • State of the Art • Inventive Step • Industrial Application • Excluded Matter • Aerotel/Macrossan Exception
- 3. Patentability S.1 (1) of the Patents Act 1977 requires an invention to be: (a) new (b) involve an inventive step (c) capable of industrial application, and (d) not consist wholly of excluded matter.
- 4. Novelty There can be no patent for an invention that is already known to the public. S.2 (1) provides: “An invention shall be taken to be new if it does not form part of the state of the art.”
- 5. State of the Art S.2 (2) includes within the “state of the art” all matter (whether a product, a process or information about either) which has at any time before the priority date of that invention been made available to the public (whether in the UK or elsewhere) by written or oral description, by use or in any other way.
- 6. Prior Art S.2 (3) also includes matter in patent applications published on or after the priority date if: (a) the matter was contained in the application as filed and published; and (b) the priority date was earlier than the invention.
- 7. Anticipation In General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457, CA said:
- 8. Anticipation "If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.”
- 9. 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).”
- 10. Inventive Step There can be no patent for an invention that would be obvious to a person skilled in the art after taking into account the usual knowledge of such persons.
- 11. Inventive Step The Supreme Court approved the following test in Actavis Group PTC EHF and others v ICOS Corporation and another [2019] Bus LR 1318, [2019] UKSC 15 "(1) (a) Identify the notional [skilled addressee]; (b) Identify the relevant common general knowledge of that person;
- 12. Inventive Step (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; (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;
- 13. Inventive Step (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?"
- 14. Industrial Application 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.”
- 15. Excluded Matter S.1 (2) declares that the following cannot be patentable inventions: “(a) a discovery, scientific theory or mathematical method; (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;”
- 16. Excluded Matter “(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;”
- 17. Excluded Matter “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.”
- 18. Aerotel/Macrossan Exception Properly construe the claim; Identify the actual contribution; Ask whether the contribution falls solely within excluded subject matter; and Check whether the contribution is technical in nature.
- 19. Questions and answers Jane Lambert 4-5 Gray’s Inn Square London WC1R 3AH jane.lambert@nipclaw.com www.nipclaw.com +44 (0)20 7404 5252