Patent

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The patent system gives what is in many ways the most potent form of intellectual property protection. It grants exclusive rights over inventions (which do not include certain things like mere discoveries) for up to 20 years. The term of protection varies slightly between different countries: in the US, for example, the term is 17 years.

Patent protection in the UK may be obtained either by filing an application for a UK patent under the Patents Act 1977 [1] (as amended most recently by the Patents Act 2004[2]), or by applying for a European Patent and designating the UK along with other member countries of the European Patent Convention as desired. The grant of a patent gives monopoly protection in return for complete disclosure of the invention over which protection is claimed. Since monopolies cannot be granted more than once, the invention must be novel - that is, something that society has not had access to before. Looked at another way, if the consideration for the grant of a patent is the disclosure to the public of the new learning it embodies, there will be a failure of consideration if (or to the extent that) the subject matter is already known.

Contents

Obtaining protection

There are three ways to obtain a patent that will give protection for an invention in the UK: a domestic application, an application for a European Patent, and an application under the Patent Co-operation Treaty.

Domestic applications

The obvious route to patent protection is to apply under the Patents Act 1977 for a UK patent. The application is made to the Patent Office, which is based in Newport (though there are facilities in London for searching and filing documents). The end result is a patent valid in the UK. (It can be registered in dependent territories and colonies to give protection there, but there is no automatic protection in for example the Channel Islands.)

European Patent Convention

Protection can also be obtained by applying for a European Patent (UK) under the EPC. Other countries can also be specified. The end result is the grant of a bundle of national patents, but at less cost and with much simpler procedures that individual national applications. Application is made to the European Patent Office in Munich (though the papers may be filed with the UK Patent Office), and the entire process is dealt with by that institution. The EPC covers all the EC countries, Switzerland, Liechtenstein, Monaco, Cyprus, Turkey, Bulgaria, the Czech Republic, Estonia, Hungary, the Slovak Republic and Slovenia. It also provides an accelerated route to obtaining patents in the “extension states”, namely Lithuania, Latvia, Macedonia, Romania and Albania.

Patent Co-operation Treaty (PCT)

This is a simplified filing procedure, which in some countries also deals with the search required for patentability to be established. There is an international phase where a preliminary search is carried out followed by a National phase where the countries in which protection is sought apply their own searching rules. The main advantage is that the PCT defers much of the expense of a filing programme.

Paris Convention

The Convention gives twelve months’ priority during which time the applicant may make further applications in other countries party to the convention, claiming protection from the date of the original application. The problems with such a system are illustrated in Asahi (1991) where two applicants claimed patents over essentially the same invention in the UK, one based on a Japanese application and the other on a US application, filed only weeks apart.

Community Patent

This is an extension of the EPC, which in fact grew from the original proposal for a Community Patent Convention. The CPC, which (although it was created by the EC Member States) was not a Community treaty, was very slow to get off the ground, but it has now been replaced by a proposal for a Regulation on the Community Patent which will benefit from the accelerated legislative procedures available under the Treaties. It will use the EPC mechanism to grant unitary patent rights valid throughout the EC.

Novelty (section 2)

To be patentable an inventionbe novel, meaning it must not be part of the state of the art at the application date. This concept is widely defined: it includes all information made available to the public at the application date (or the priority date if the invention claims priority from an earlier application made within the previous year, as the Paris Convention allows) whether in published form or anticipated by an earlier invention, and also applications unpublished at that date. The state of the art comprises all matter which has been made available to the public. This includes a product, process, information about either, or anything else, and it may be disclosed by written or oral description, by use or in any other way (section 2(2)).

In Catnic Components v C Evans & Co (1983) the question was whether the applicant’s invention was anticipated by an earlier one. The only people to whom the earlier invention (a new type of lintel) had been shown were under confidentiality obligations, so that did not amount to making it available to the public. The earlier inventor had only had a small section made up to his design, insufficient to use as a lintel. There was therefore no question of disclosure by use either. In Fomento v Mentmore (1956) knowledge by a handful of people who were under no obligation of confidentiality was enough to invalidate a patent for a new method of making ballpoint pens. Pens embodying the claimed invention had been given to members of the public.

In Lux Traffic Signals v Faronwise and Pike Signals (1993) use of portable road traffic signals in a trial on a public road, where a bystander who knew about such things could have deduced how the invention worked, destroyed the novelty of the invention. So long as a member of the public can inspect the document, it is available to the public and forms part of the state of the art, even if no-one knows it exists (Japan Styrene Paper/Foam Particles (1991). A single copy of a Japanese petty patent application (in Japanese) received by the Patent Office library just before the priority date amounted to a prior disclosure in Woven Plastics Ltd. v. British Ropes Ltd. (1970).

Disclosing a prior invention does not, however, amount to prior publication of a later invention if the former is merely “[a] signpost, however clear, upon the road to the patentee’s invention ... The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.” (Per Sachs LJ in General Tire and Rubber Co v Firestone Tyre and Rubber Co (1972).

Disclosure in circumstances of confidentiality or secret prior use does not amount to making available to the public. Professional advisers lawyers and patent agents are bound to treat information given to them by the inventor as confidential. Details can also be shown to interested parties under confidentiality agreements, essential to secure financial support or to interest a manufacturing company in exploiting it.

In Pall Corp v Commercial Hydraulics (Bedford) Ltd (1990) delivering samples in confidence to people who knew they were secret and experimental did not prejudice the novelty of the invention.

Matter which has been obtained unlawfully or in breach of confidence, or which has been divulged in breach of confidence, is disregarded in considering the novelty of an invention (section 2(4)). Where a patent application is filed, there is a six month period during which no such disclosure will prejudice the application. An invention may also be displayed at an international exhibition during this period of grace.

However, publication of information about the invention anywhere in the world can ruin the inventor’s chances of obtaining a patent. Since many inventors’ first instincts are to write a paper about their invention for publication in an academic journal, this can be a problem.

It makes little difference if the journal in question is obscure: by section 130(1), a document is taken to be “published” if it can be inspected as of right at any place in the UK by members of the public. Whether they have to pay to do so is immaterial. So extensive are the holdings of the British Library (including the Science Reference and Information Service, which keeps patent information from around the world) that the scope of this definition is very wide indeed.


Inventive step (section 3)

In addition to being novel, an invention must involve an inventive step. This requires non-obviousness to a person skilled in the art, compared to what is already known. All matter forming part of the state of the art is to be taken into account, but not in this instance matters included in patent applications with earlier priority dates published after the invention’s priority date. In Woven Plastic Products v British Ropes Ltd (1970), the Court of Appeal held that a patent was invalid for want of obviousness because of a Japanese petty patent application. Lord Justice Wigery as he then was indicated that he thought that this went “beyond the bounds of reason”, but the case had been argued on the footing that this was correct.

This requirement is not unrelated to the requirement of novelty. If an invention has already been disclosed it forms part of the prior art, and therefore (except in the special case of an earlier unpublished patent application) the invention cannot involve an inventive step. But the need for an inventive step goes further; even if the invention is new, it may be obvious, but no-one ever thought of it before.

Consideration of obviousness involves a “skilled worker” test, similar to that used when considering novelty. In the case of obviousness, statute specifically provides for this test.

The meaning of “obvious” is not elaborated on in the Act. In Firestone the Court thought it unnecessary to go further than the dictionary definition, and took it to mean “very plain”.

Commercial success goes a long way to showing that an invention was not obvious. If it was it would have been thought of before if it satisfied such a need. However, the question of obviousness is decided according to technical, not commercial, considerations. In Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (1972) the invention (a method for making printed circuit boards using silk screening) was not an immediate commercial success because manufacturers could sell all they wanted using old manufacturing techniques. The invention was not used for some years, but then it was highly successful. However, in Tetra Molectric Ltd v Japan Imports Ltd (1976) the use of piezo-electric crystals to ignite a butane cigarette lighter was held to be obvious. The properties of the material had been known about for many years, and the mere fact that the cigarette lighter enjoyed considerable commercial success did not help. The claims did not disclose anything which would have provided a commercially successful lighter: technical problems made it difficult to make a lighter using the technology, but the patent claims did not reveal the answer. Indeed, they disclosed several ways of making unsuccessful lighters. The court observed that failure to recognise an obvious solution to a problem could be because the problem had not been recognised, that there was no pressing need for a solution, or that other solutions were preferred.

Commercial success may also be attributed to other factors, such as advertising: in Molnlycke AB v Proctor and Gamble Ltd (No 3) (1992) it was due to advertising spending.

A second use of existing technology may satisfy the inventive step requirement (though novelty may be difficult to prove). In Parks-Cramer Co v G W Thornton & Sons Ltd (1966) the patentee solved a long-standing problem concerning cleaning the floor between textile machines. The invention consisted basically of an overhead vacuum cleaner. In the High Court the Judge considered this obvious. The Court of Appeal overturned the first instance judgment, giving weight to the many unsuccessful attempts to solve the problem and to the immediate commercial success of the invention.


Industrial application (section 4(1))

This requirement - formerly expressed, in the Patents Act 1949, as a requirement that an invention be a manner of manufacture - is quite easily satisfied, though note that it excludes methods of treatment (section 4(2),(3)). However, just because something (e.g. a new drug) is used in treatment does not make it unpatentable.

The expression “industry” must be understood in its broadest sense. It includes agriculture: indeed, almost any useful, practical activity is regarded as industry. But purely intellectual or aesthetic activities are not regarded as industry. Public policy demands that medical practitioners and veterinary surgeons should not be constrained by other peoples’ patents when treating patients: John Wyeth & Brothers’ Application: Schering AG’s Application (1985). Methods of treatment themselves are therefore not considered capable of industrial application (section 4(2)) but just because a product is invented for use in a method of treatment does not stop it being patented.


Matters not classed as inventions (section 1(2))

Several things which may otherwise appear to be patentable are not regarded as inventions by virtue of s1(2). These are:

discovery, scientific theory, mathematical method

literary, dramatic, musical or artistic work, or any other aesthetic creation

scheme, rule or method for performing mental act, playing game or doing business, or computer program

presentation of information

Note that this exception applies to these matters as such, so a novel technical effect arising from such matter (eg a computer which, running anew program, does something no computer has ever done before) may be patentable. This gives indirect protection to the excluded subject-matter.

In the fields of computer programs (where a program may cause a computer-controlled machine to do something new) and biotechnological inventions (where a discovery may lead to the creation of a new pharmaceutical product) the courts have refined this basic proposition. See patentablility of computer-related inventions.

Copyright is almost universally regarded as the most appropriate means for protecting computer programs. They were not patentable under the 1949 Act because they were not a “manner of manufacture” (the predecessor of the industrial application requirement of the 1977 Act) but they could form part of a machine or industrial process.

Following the leading US Supreme Court case of Diamond v Diehr (1981) if the operation of a programmed computer gives rise to a technical effect an application for a patent may succeed.

The method of storage of a program should now be considered irrelevant to the question of patentability, though in earlier cases punched cards - used in a computer system to facilitate searching trademarks - were considered a manner of manufacture, analogous to a cam controlling the cutting path of a lathe rather than to a card with information printed on it: it was ancillary to a machine (Gevers’ Application (1970). A computer system including programs permanently embedded in a computer’s circuits were held to be patentable in Borroughs Corporation (Perkin’s) Application (1974).

As recently as 1990 Aldous J in the Patents Court suggested that a program stored on a read-only memory (ROM) chip was patentable though it would not have been if stored on disk (Re Gale’s Application, reversed on appeal (1991). The claimed invention, the judge considered, related to a ROM chip. The Court of Appeal’s judgment makes it clear that choice of storage medium is irrelevant. The words “as such” in section 1(2) have given rise to two different approaches.

a.The application can be considered without the excluded matter. If the application is for a computer with a program running on it, the court must consider whether the machine itself adds anything to the state of the art. If the invention’s novelty and inventiveness resides entirely in the program, no patent will be granted. If it resides outside the program, even though the technical effect is defined by the program, it is patentable (Re Merrill Lynch’s Application, (1988), upheld on appeal with different reasoning).

b.Where the subject matter of the invention is the technical effect of the computer program, that technical effect should be patentable. The patent is granted for the technical effect (which must therefore be novel and non-obvious) and it is of no significance that the effect is found in the program. In this approach the method by which the invention is implemented is immaterial. (Vicom Systems Inc’s application, (1987) (Technical Board of Appeal, European Patent Office), approved by the Court of Appeal in Merrill Lynch (1989).

The different approaches of the Patent Office and the EPO were dealt with in Genentech Inc’s Patent (1989). The application in suit was for the technical application of a discovery which concerned nucleotide sequences of DNA. The Court of Appeal held that a patent that claimed the practical application of a discovery did not relate to the discovery as such. The court went on to say that the invention could be patented even though it was obvious once the discovery had been made. The cases show that there must be some technical effect resulting from the use of the program which is novel and non-obvious. In Re Patent Application No. 9204959.2 by Fujitsu Ltd (1996) Laddie J (subsequently upheld on appeal) held that in considering a patent application which related to a computer program, the Patent Office should consider not the control of the computer by the program but what the computer, so controlled, was doing.


Excluded inventions

There are further exclusions on public policy grounds, where the invention is one that could be patented (as distinct from the previous group of exclusions, which are matters that are not regarded as inventions at all) but there are moral reasons why protection should not be given. The previous exclusion of many biotechnology inventions has been removed as a result of the EC directive on biotechnology inventions.

Obtaining protection under the 1977 Act

Contents of the application (date A)

a request for patent

b fee (abolished for UK applications in 1998)

c specification (description, drawings, abstract and claims). Claims and abstract may be filed up to a year later (A + 12 months)

Purpose of the description

The description explains to someone skilled in the art how to work the invention. It has to contain a certain minimum amount of information: in the Asahi case, the decision turned on the amount of information disclosed in the application. The earlier application (the one with the earlier priority date) was held not to contain an enabling disclosure, ie one that would enable the hypothetical skilled worker to put it into operation.

Purpose of the claims The claims define the monopoly which the applicant thinks should be awarded. They stake out a small part of human knowledge which the inventor believes is novel and inventive. It is extremely important to word them correctly so as to include the whole of the invention but without laying claim to something that has already been invented or which is not mentioned in the specification: it is said that the claims must be supported by the specification. If non-patentable matter is included the patent would be liable to revocation, in whole or in part, and the risks attached to this are minimised by setting out the claims as a series of summaries of the invention, successively narrowing the scope of the claim by introducing new limiting matter. A patent may have more than one independent claim.

However, it is easy so to frame the claims that some slight modification suffices to remove the variant from the scope of the patent (see Van Der Lely NV v Bamfords Ltd (1963). This can cause problems in dealing with infringements: see below.

Procedure

preliminary search (A + 12 months max) international applications? amendments to specification publication (A + 18 months) substantive search process of amendment and negotiation formal proceedings, if necessary grant

Content of right

A patent, once granted, gives its owner the exclusive right to work the invention it protects. Although the information about how to work the invention is made public in the specification of the patent, and is available for others to draw upon, no-one may do precisely what is set out in the patent without the permission of the owner.

This applies equally to deliberate infringements and to innocent ones, although the remedies available against an innocent infringer will not be the same as those which can be obtained against an infringer who knew full well that the patent existed. No infringement action can be started before the patent is granted. Infringements taking place after publication of the application may be the subject of a claim for damages (section 69) but the action cannot be started before the patent is granted.

Infringement: Definition

By section 60, an infringement is any of the following, done without the permission of the patent owner:

a.making, disposing of, offering to dispose of, using or importing a patented product, or keeping it, whether for disposal or otherwise;

b.using a patented process or offering it for use in the UK in the knowledge (or where it would be obvious to a reasonable man) that such use would be without the consent of the proprietor and would be an infringement of the patent;

c.disposing or offering to dispose of, using or importing or keeping, whether for disposal or otherwise, any product obtained directly from a patented process;

d.supplying or offering to supply in the UK a person (other than a licensee or other person entitled to work the invention) with any of the means, relating to an essential element of the invention, for putting the invention into effect. This form of contributory infringement requires some element of guilty knowledge on the part of the infringer. The infringer must know, or it must be obvious to a reasonable man in the circumstances, that those means are suitable for putting and are intended to put the invention into effect in the UK.

Whether an alleged infringement is actionable or not depends on consideration of:

a.the statutory defences provided in section 60(3): and

b.the interpretation of the specification of the patent in suit.

The interpretation of patent claims is problematical. The Courts have recognised that a straightforward linguistic analysis not usually going to be appropriate: patent specifications are practical documents written for practical people. A purposive approach will therefore be adopted.

Interpretation of patent specifications

The construction of a patent specification is a matter which has caused much controversy. To amount to an infringement, the act complained of must be within the scope of the specification and the claims (which in turn must be supported by the specification) in the patent application, as amended before grant if this has been necessary to satisfy the examiner.

A literal interpretation is not appropriate for a patent specification, which is a document written for scientists or engineers skilled in the art to which it relates. In Rodi & Weinberger AG v Henry Showell Ltd (1969) Lord Reid disapproved a literal approach:

... claims are not addressed to conveyancers: they are addressed to practical men skilled in the prior art, and I do not think that they ought to be construed with that meticulousness which was once thought appropriate for conveyancing documents. Where the issue of infringement is not clear cut, the question may be to consider whether the differences between the defendant’s variant and the patented invention are material. Do they differ in essential or inessential respects? This involves the so-called “pith and marrow” approach, where those components essential to the invention are separated from those which are not. Even though there might be variations in the inessential elements, if the infringer has taken all the essential ones there can be no doubt that the infringement has taken place.

In Catnic Components v Hill & Smith Ltd (1982) the House of Lords held that the verticality of the plaintiff’s lintel was inessential as the invention worked just as well with a slight incline (as in the defendants’ product). The defendants had argued that the verticality was essential and therefore there was no infringement of the pith and marrow of the patent.

The approach to construing patent specifications adopted in that case is described as “purposive”. Lord Diplock said that “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” was inappropriate in construing a patent specification: the real issue was whether practical persons, skilled in the art, would understand that the patentee intended strict compliance with a particular word or phrase to be an essential requirement of the invention. His Lordship then set down a test for determining whether variants infringe, which was reformulated to comply with the needs of the 1977 Act by Hoffmann J as he then was in Improver Corp v Remington Consumer Products Ltd (1990) in the Patents Court.

a.Does the variant have, in fact, a material effect on the way the invention works? If yes, it falls outside the claim.

b.If no, would it have been obvious to the informed reader at the date of publication of the patent specification that the variant had no material effect? If yes, the variant falls outside the claim: the patentee is assumed to have limited the claim deliberately.

c.If no, is it apparent to any reader skilled in the art that strict compliance with the primary meaning of the claim was intended to be an essential requirement? If yes, the variant is outside the claim, but if no it is an infringement.

The matter is further complicated by the intervention of the European Patent Convention: Article 69 contains the provisions on infringement, which the UK legislation is intended to follow closely. There is a Protocol on the interpretation of Article 69, and the importance of this document has been considered recently by the courts as infringements of 1977 Act patents have started to come through (earlier cases, not including Improver, were 1949 Act cases so did not necessarily read over into the new law). In PLG Research Ltd v Ardon International Ltd and others (1995) the Court of Appeal asked whether the variant is one that a skilled person could deduce from the claims as interpreted by the description and drawings. This approach, the court felt, was in line with the Protocol on the Interpretation of Article 69 of the EPC. Lord Diplock’s formulation should no longer be followed. However, in Assidoman Multipack Ltd v The Mead Corporation (1995), Aldous J, declaring that the Court of Appeal’s remarks had been obiter, preferred the purposive approach to one limited to the words of the patent. He considered that Lord Diplock’s test still held good: and in any event probably amounted to the same thing as the Protocol test. Later, in Kastner v Rizla (1995) Aldous LJ in the Court of Appeal held that the Catnic test still held: and subsequently there have been several cases in the Court of Appeal and the House of Lords where this approach has been approved, and what used to be called the Catnic or Improver questions have become known as the Protocol Questions.

Groundless threats[3] of proceedings for infringement of a patent may be actionable, under the Patents Act 1977, section 70[4].

Duration of protection

Patents last for 20 years from the original application or priority date, provided that the renewal fees (which are progressive, reaching £450 per year at the end) are paid. The legislation contains provisions to ensure that a patent once granted is worked, since to use the protection of a patent to withhold an invention from the public would fly in the face of everything the system stands for.

Sometimes a large part of this protection may expire before licences are granted for the product protected by the patent to be sold. Supplementary protection certificates are now available for pharmaceutical patents, which take a long time to result in a marketable product.


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