Patent Law Les 2: basic requirements (1)
Patent= social contract: for the disclosure of your invention, you get a negative right to protect it
✓ So others can learn from it, improve their inventions
✓ To avoid secrecy
You need to have Exclusive right= right to exclude others form
- A invention with a technical character= using, making, selling, offering, importing
technical solution on a technical your invention without your permission
problem - For 20y
- New - In a specific country
- Inventive
- Industrial applicable
- Clearly disclosed
Patents are available in any field of technology for 2 types of inventions (TRIPS, EPC):
- Products: physical entity (product, apparatus)
- Processes: activity, use
What is an invention? (EPC guidelines)
- Technical character= related to a technical field
- Solves technical problem
- Technical features that define the invention (claims)
- Solution is repeatable
➢ Non-inventions= non patentable
EPC
The following in particular shall not be regarded as inventions within the meaning These are not seen as inventions so
of paragraph 1: are patentable AS SUCH → you can
(a) discoveries, scientific theories and mathematical methods; use them in a product/process=
(b) aesthetic creations;
patentable
(c) schemes, rules and methods for performing mental
acts, playing games or doing business, and programs
for computers;
(d) presentation of information.”
[non-exhaustive list]
Paragraph 2 shall exclude the patentability of the subject-matter or activities
referred to therein only to the extent to which a European patent application or
European patent relates to such subject-matter or activities as such
a. Discovery, scientific theories= no technical effect/use + found in nature
Ex. Properties of a product: those were always characteristics of the product, you just
discovered them
The moment something is made by a human, it has a technical character= invention
→ all these can be incorporated into something that can be patentable ex. Use of physical
theory to make new devices
b. Aesthetic creations= literary, dramatic, musical & artistic works: no technical character, only
artistic effect → protected by copy right
BUT you can make inventions with them that are patentable
, c. Schemes, rules, methods,…: instructions are not patentable but if they are part of something
ex. Game, the whole is patentable
! technical problem ≠ business problem
d. Presentations, information: protected by copyright but can be patentable if you need a
technical device for the information
➢ Invention that are not patentable
Countries may choose to (TRIPS)/shall exclude (EPC) certain inventions from patentability:
- if it is contrary to the ordre public & morality= for the safety of humans, not because of law:
prevent the commercial exploitation of this invention.
- Diagnostic, therapeutic & surgical methods for treatment of humans/animals (medical product
remains patentable)
- Plants, animals, essential biological processes for production of plant/animals (microbiological
processes are not excluded= ELISA, PCR,…)
! plant varieties need to be protected: patent or effective sui generis system (Plant breeders
system → EU)
TRIPS TRIPS
Members may exclude from patentability inventions, the prevention Members may also exclude from patentability:
within their territory of the commercial exploitation of which is (a) diagnostic, therapeutic and surgical methods for the treatment of
necessary to protect ordre public or morality, including to protect humans or animals;
human, animal or plant life or health or to avoid serious prejudice to (b) plants and animals other than micro-organisms, and essentially
the environment, provided that such exclusion is not made merely biological processes for the production of plants or animals other
because the exploitation is prohibited by their law. than non-biological and microbiological processes. However,
Members shall provide for the protection of plant varieties either by
patents or by an effective sui generis system or by any combination
EPC thereof. The provisions of this subparagraph shall be reviewed four
European patents shall not be granted in respect of: years after the date of entry into force of the WTO Agreement.
(a) inventions the commercial exploitation of which would be
contrary to "ordre public" or morality; such exploitation shall not be
deemed to be so contrary merely because it is prohibited by law or Sometimes patens are granted but can be
regulation in some or all of the Contracting States;
(b) plant or animal varieties or essentially biological processes for
nullified later
the production of plants or animals; this provision shall not apply to
microbiological processes or the products thereof;
(c) methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practised on the human or animal
body; this provision shall not apply to products, in particular
substances or compositions, for use in any of these methods.
a. contrary to ordre public & morality
• Ordre public= about public security & safety → we want to protects the society & environment
Product that endangers the public security + if this it’s only function (creating destruction):
not patentable
• Morality= our belief that some behaviour is right & acceptable and other is wrong in a particular
society, it evolves over time
! in Europe different believes on morality, not 1 particular way of view
➔ EU: something is really against ordre public/morality if it is so for every European country
Lot of discussions ex. Poison BUT every drug, every product (even water) can be poison, and what
about biological material that comes from nature?
→ offensive vs non-offensive use: depending on the product and its claims (features & use)
,b. plant or animal varieties, essential biological processes
Biotechnology directive= rules for biological inventions → when against ordre public & morality
- Processes for cloning human beings
- Processes for modifying germ line genetic identity of human beings
- Use of human embryos for industrial/commercial use
- Processes for modifying genetic identity of animals that can cause them suffering without
medical benefit
You CAN use the processes, but they are NOT patentable!
Country may/shall exclude plants from patentability, but country has to provide any kind of
protection for plant/animal variety → EU chose for Sui generis system= plant breeders right
= legislation for plan variety rights imbedded in the UPOV convention
Something not protected by this right, can be patentable
EPC
Plant variety" means any plant grouping within a single botanical
taxon of the lowest known rank, … = very pure form
A process for the production of plants or animals is essentially
biological if it consists entirely of natural phenomena such as
crossing or selection
c. methods of treatment of human/animal body
- Surgery
- Therapy
- Diagnostic methods on the body
NOT inventions to avaoid hindering the physicians job, so every patient is treated the same.
→ does NOT apply for substances or compositions= patentable ( also methods of treatment but not
surgery or therapy)
+ treatment of dead body or tissue after removal is not excluded from patentability
, Patent Law Les 3: basic requirements (2)
Basic criteria to comply with:
Substantive - Subject matter= invention
condition - New= not part of state of the art
- Inventive= not obvious for person with knowledge in the field of the invention
- Industrial applicable= can be made or used in any kind of industry (broadly)
Procedural - Sufficiently disclosed= clear so a person skilled in the art can carry it out following the
condition
disclosure
Ex. All crucial steps for 1 particular method of use must be written down
➢ Patentable subject matter
! NO invention= NO patent
EPC TRIPS
(1) European patents shall be granted for any Patents shall be available for any inventions, whether
inventions, in all fields of technology, provided that products or processes, in all fields of technology, provided
they are new, involve an inventive step and are that they are new, involve an inventive step and are
susceptible of industrial application” capable of industrial application.
Patents shall be available and patent rights enjoyable
without discrimination as to the place of invention, the
field of technology and whether products are imported or
locally produced.
Examination by EPO: claimed subject matter invention?
V yes: check other requirements
X no: no technical character → no further examination= no patent
➢ Novelty
With regards to novelty, not
EPC inventive step
(1) does not form part of the state of the art.
(2) The state of the art = everything made available to the public by
Use: exhibition, sale (PTC: use only
means of a written or oral description, by use, or in any other way,
prior art if also written disclosure
before the date of filing of the European patent application.
(3) content of European patent applications as filed, of which the dates of <-> EPC: use is prior art also without
filing are prior to the date referred to in paragraph 2 and which were written disclosure)
published under article 93 on or after that date, shall be considered as Other way: photo’s, database,…
comprised in the state of the art.”
(4) Paragraphs 2 and 3 shall not exclude the patentability of any substance
or composition, comprised in the state of the art, for use in a method If someone else files a patent for the
Medical field
referred to in Article 53(c), provided that its use for any such method is same application as you, but only
not comprised in the state of the art. earlier, the invention becomes
(5) Paragraphs 2 and 3 shall also not exclude the patentability of any public that day= state of the art and
substance or composition referred to in paragraph 4 for any specific use in you cannot ask for a patent
a method referred to in Article 53(c), provided that such use is not anymore, your invention is not new
comprised in the state of the art. anymore because someone else was
faster
