1. Professor: Marnie Brown Welcome

2. My email address is mlbrown@konkuk.ac.krmlbrown@konkuk.ac.kr

3. This course assumes that students have little or no background experience or knowledge of Intellectual Property Law. All class materials and instruction are in English. The grade for the course is based on a paper, a presentation and class performance/attendance. Paper - 30% Presentation in pairs 50% Class performance and attendance - 20%

4. This Week Patentability and infringement

5. Contemporary Intellectual Property (Law & Policy) Protectable subject matter S 1(1) Of the Patents Act 1977: 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 patent for it is not excluded by subsection (2) & (3) below

6. Novelty The policies underpinning the novelty requirement are to prevent disutility of re-inventing of the wheel, to ensure that matter which is already in the public domain is not brought (once again) under private monopoly control, and to protect parties who have been happily using a product or process publicly from being stopped from doing so on the grant of a patent over the same or substantially the same product or process. There are certain key questions that we must ask in order to know whether an invention will be new. These are:

7. (1) What constitutes the public domain for these purposes? (2) How much information about an invention must have been in the public domain before this comes a problem for patent purposes? Novelty is covered by section 2 of the Patents Act 1977, as amended, and the equivalent provisions are found in Articles 54 and 55 EPC 2000. Section 2 (1) of the 1977 Act provides that [a]n invention shall be taken to be new if it does not form part of the state of the art’

8. The state of the art is the public domain for patent purposes. It is defined in Section 2(2) as: ‘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.’ This is an extremely wide definition which is global in scope and which covers any manner by which information about an invention might be disclosed.

9. Novelty is only tested by reference to to the state of the art prior to the priority date. The state of the art is forever expanding – we can only add to it; matter, once added, always remains a part of it. It is dangerous to pass information to third parties without stipulating a confidentiality clause, ideally by contract; even communication to one individual can be enough to make information public. Allowing the public an opportunity to examine the details of an invention in circumstances where a skilled person would become aware of the core technical features of the invention would amount to public disclosure. Finally, and for the purposes of testing novelty only, it is important to note that the state of the art includes the content of any patent applications designating the United kingdom published on or after the priority date of the invention in question.

10. If an invention already exists in the state of the art then we say that a subsequent patent application or invention is anticipated. Pall Corporation v commercial Hydraulics (Bedford) Ltd [1990] FSR 329 The patent in suit concerned ‘hydrophilic microporus membranes’ for filters Alleged that plaintiff had anticipated their own invention by prior use as the plaintiff had given sight to a potential customer (no disclosure of membrane or test) and sent samples to other potential customers who knew that the membranes were secret. The information was kept from the public and the obligation of confidence ensured that the relevant information was kept in the private domain.

11. The law of confidence can be an extremely important tool in the protection of information surrounding the development of an invention in the period prior to the application and the award of a priority date. Unlike the US which provides for ‘grace periods’ – the period of one year prior to filing is exempt from consideration for the purposes of testing novelty – Europe will consider everything made available to the public up to the priority date. There re strict rules about which kinds of document can anticipate an invention and in which circumstances. Many of these were established many years ago and are relevant today.

12. General Tire and Rubber Co v Firestone Tyre and rubber Co [1972] RPC 457 This was an appeal to the court of Appeal. The plaintiffs claimed infringement of their patent for oil-extended rubber by the defendants who counter-claimed for revocation of the patent, inter-alia, on grounds of novelty. It was alleged that the patent had been anticipated by certain documents published prior to the priority date of 20 Nov 1970. It was held that: Alleged anticipatory matter must be interpreted at the date of its publication and without regard to subsequent events.

13. The alleged anticipatory material must be interpreted by a reader skilled in the relevant art at the relevant date. If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed can be a team, whose combined skills would normally be in that interpreting and carrying into effect instructions such as those contained in the document to be construed. Alleged anticipatory materials must be considered separately.. Contains a clear description.. A direction.. A signpost.. There was no anticipation!!

14. Synthon BV v Smithkline Beecham plc [2006] RPC 10 The prior art must either contain an enabling disclosure, or for process patents it must give clear and unmistakable directions to do what the application has invented. Novelty is, essentially, a factual issue and it is assessed objectively – UK and EPO practice on novelty are very similar. Enablement requires that the ordinary skilled person must be able to perform the invention from the information disclosed Asahi Kasei Kogyo KK’s Application [1991] RPC 485 Merrell Dow Pharmaceuticals Inc & Another v HN Norton & co Ltd and Others [1996] RPC 76

15. The state of the art includes matter included in earlier patent applications, including those patent applications that are not yet published. Everything in the state of the art is known as “prior art” and the mode of disclosure is irrelevant. Novelty destroying prior art could include, for example information that is part of common general knowledge, information disclosed via prior use (WINDSURFER TEST) Windsurfing v Tabor Marine (1985), or information disclosed in the form of a single copy of a document (publication) or via oral disclosure. Earlier patent applications published on or after the priority date also form part of the state of the art. However, where information has been disclosed in breach of confidence (PA 1977, SS2.4(a) and (b)) or the invention has been displayed at an international exhibition (PA 1977, s.2(4)(c)), such disclosures are deemed not to be novelty- destroying for a six moth period.

16. Novel New Uses In some circumstance, a known invention may still be patented where a new use is found for it: (a) First medical use. The PA 1977 provides that the first medical use of a known compound is novel, provided that the medical application of the compound does not form part of the state of the art (PA 1977, S.2(6)); (b) Second and subsequent medical use. This further exception was invented by the Enlarged Board of Appeal in G05/83 EISAI/second Medical Indication in which it held that limitations to patentability should be construed narrowly – a common mantra – and that legislative did not overly preclude second and subsequent uses and therefore the should be allowed. The Claim must take a specific form though. The form is normally: use of substance X in the manufacture of a medicament for the treatment of condition Y. (Swiss type claims)

17. Inventive Step A patentable invention must involve an inventive step; an inventive step is present where the invention would not obvious to a person skilled in the art (PA 1977, s3). In patent law, the terms inventive step and non-obviousness are used interchangeably. Inventive step is a very different question from that of novelty. This poses three questions: (1) What is the state of the art for the purposes of testing inventive step? (similar to novelty) (2) what traits or qualities does the person skilled in the art possess? (3) How do we know when something is ‘obvious’ to the person skilled in the art?

18. State of the art Unpublished patent applications do not form part of the state of the art for the purposes of inventive step (PA 1977, s3) Fundamentally, inventive step is a qualitative question as opposed to the quantitative nature of novelty Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and Another [2007] EWCA Civ 5 Person skilled in the art Inventive step are assessed from the perspective of the person skilled in the art (PA 1977, s 3) – the skilled man. This notional figure has certain attributes:

19. He is the average person skilled in the art, possessing the relevant skills, knowledge and qualifications (Technograph Printed Circuits v Mills (1972)). Where research in the relevant art would be carried out by a research team, the viewpoint of the notional research team will instead be adopted (Genetech Inc’s Patent (1989)). There is some questioning as to whether the skilled man is entirely uninventive, but it would seem that is indeed the case (PLG Research v Ardon International (1995)) The criterion of ‘inventive step’ can be thought of as a misnomer. It is not inventive for someone to take the next logical, obvious step in the develop of any given technology, rather what is required is a leap forward in ways that would not be obvious to others working in the field. It is an objective test. The classic approach was taken in the windsurfer test. Windsurfing International Inc v Tabur Marine (GB) Ltd [1985] RPC 59 (CA)

20. Answering the question on obviousness is a four step process: (1) Identify the ‘inventive concept’ embodied in the patent; (2) impute to a normally skilled but unimaginative addressee what was common general knowledge in the art at the general priority date Identify the differences, if any, between the matter cited as part of the state of the art and the alleged invention; Decide whether those differences, viewed without any knowledge of the alleged invention, constitute steps which would have been obvious to the skilled man or whether they require a degree of invention

21. Secondary considerations Some things are clearly obvious, e.g. a collocation ( a combination of two known machines with no resultant improvement in function) will be obvious ( Williams v Nye 1890)) Assessment of obviousness is often more difficult, however, and other tests may be useful. Where other obviousness tests are used with Windsurfer, they are known as secondary considerations and the correct use of secondary considerations is in a supplementary role, informing the fourth element of the Windsurfer test (Molnlycke AB v Procter & Gamble Ltd (No. 1) (1990)) A number of obviousness tests have been used as secondary considerations over the years. E.g. has the inventor done something unexpected (Mutoh Industry’s Application (1984)) or, if it is obvious to try, why has it not been done before (Lucas v Gaedor (1978)), but the following are probably the most relevant secondary considerations in modern patent law:

22. Commercial Success The relevance of commercial success to obviousness was traditionally doubted, as commercial success can flow from factors other than inventiveness' (e.g. advertising). However, the commercial success of the invention may now be a material factor in determining whether the new result was obvious or not (Haberman v Jackal International (1999)), particularly where that invention meets a long-felt want; and The ‘obvious to try’ test (John Manville’s Patent (1967)) asks whether, at the priority date, the invention was worth trying and whether there was reasonable expectation of beneficial results. More recently in Saint-Gobain PAM SA v Fusion Provida Limited and others (2004) it was noted that something is obvious to try when it s self-evident to the unimaginative man skilled in the art..

23. Industrial applicability This final criterion for patentability ensures that we maintain the industrial or technical nature of inventions. The relevant section of the Patents Act 1977, as amended, is section 4 (1), with the equivalent provisions being found in Article 57 EPC. Section 4 (1) states: ‘….an invention shall be taken to be capable of industrial application if it can be made or used in any industry, including agriculture.’ The concept of ‘industry’ is construed very widely and does not necessarily involve a for-profit purpose. Can be made or used industry. Something can be held to lack industrial applicability if its essential nature is aesthetic, artistic or intellectual

24. Ownership of Patents and the Employee Inventor The basic rules are that a patent may be granted to the following: (i) The inventor or joint inventors, i.e. the actual deviser(s) of the invention (PA 1977, S7(2)(a)); (IDA Ltd & Others v University of Southampton & Others [2006] EWCA Civ 145, Staeng Ltd’s Patent [1996] RPC 183) (ii) The inventor(s)’ successors in title; or (iii) The employer of an employee inventor

25. Ownership of employee inventions Inventors have the right to be mentioned as such in published patent applications and any patent granted (PA 1977,s13) and the rebuttable assumption is that the inventor is the first owner (PA 1977,s7(4)); but PA 1977s.39(1) provides for a significant exception to this – where inventors are employees (see PA 1977, S130) their employer will be the first owner of the invention if: (a) The invention was made in the course of the employee’s normal duties (e.g. Harris’ Patent (1985)) or in the course of specially assigned duties, provided he/she might reasonable be expected to carry out those duties (e.g. (Electrolux v Hudson (1977)); or

26. (b) Where the employee has a special obligation to further the interests of his employer’s undertaking. This is related to the duty of fidelity that employees owe their employers; typically, the more senior the employee, the greater the scope of this obligation and the more likely that the invention belongs to the employer. Compensation for employee inventors Where the invention belongs to the employer (PA 1977, s39(1), statutory compensation of the employee inventor may be available ( PA 1977, s40), provided that: (i) The patent is of outstanding benefit to the employer (ii) The invention is subject of a patent grant, and (iii) it is just that compensation to be awarded.

27. The threshold for statutory compensation is very high and there has never been a reported case where statutory compensation under the PA 1977 has been awarded (such disputes tend to be settled out of court) British Steel plc’s patent [1992] RPC 117 Memco-Med’s Patent [1992] RPC 403 GEC’s Patent [1992] RPC 107

28. Sufficiency Patent applications may fail or granted patents subsequently may be revoked (PA 1977, s.72(1)(c)) on the basis of sufficiency. A patent application has a number of components and the patent specification is a vital part in which the invention is described and defined, it is the source of all information about the patent that reached the public domain. The specification must disclose the invention in such a way that the invention could be performed by the person skilled in the art (PA 1977, s.14(3)), i.e. the application must contain an enabling disclosure. Claims must be clear and concise, be supported by the description and relate to a single inventive concept (PA 1977, s.14(5)).

29. Infringement The following activities carried out in the UK without the consent of the patent proprietor constitute patent infringement: Primary Infringement. This falls into three categories: (i) PA 1977, s.60(1)(a), where a product patent is at issue, making, disposing of, offering to dispose of, using, importing or keeping the patented product (for disposal or otherwise). (ii) PA 1977, s.60(1)(b), where a process patent is at issue, use of the process with actual or constructive knowledge that non-consensual use constitutes infringement.

30. (iii) PA 1977, s.60(1(c). The use offer to dispose of, importation or keeping (for disposal or otherwise) of a product directly obtained from a patented process. However, where intermediate steps are necessary the defendant's product will not infringe the claimant’s process patent (Pioneer Electronics v Warner Music Manufacturing (1995)) (b) Contributory infringement (s.60(2)). The supply or offer to supply any of the means that relate to an essential element of the invention, for putting the invention into effect may constitute infringement. This will only be the case where there is actual or constructive knowledge that these means are suitable (and are intended) for putting the invention into effect in the UK.

31. Proceedings for patent infringement may be brought by the exclusive licensee as well as by the patent proprietor (PA 1977, s.67(1)) Exceptions to infringement There are a number of exceptions to patent infringement set out in PA 1977, s.60(5)(a)-(f). The main exceptions are: (a) Private and non-commercial use (PA 1977, s.60(5)(a)). (b) Experimental use (PA 1977, s.60(5)(b)). The courts have considered whether repairs to patented products constitute patent infringement a number of times. The position (as set out in British Leyland v Armstrong (1986)) is relatively clear; genuine repair of a patented product that has been sold for use with the consent of the proprietor does not constitute infringement, only repair that amounts to reconstitution will infringe.

32. The boundary between making a product (which constitutes infringement) and repairing a product (which falls outside) is to be judged objectively (United wire Ltd v Screen repair Services (Scotland) Ltd & another (2001)). Finally, there are limited prior user rights. A person who made use of an invention before its priority date may continue to use that invention, subject to certain restrictions (PA 1977,s.64).

33. Counterclaim for revocation An opponent can attack a patent by counterclaiming for revocation of the patent. The grounds for revocation are: (i) Not a patentable invention PA 1977, s.72(1)(a)), i.e. the subject matter of the patent is not an invention “as such” or the invention is contrary to public policy or morality, or has been anticipated; is obvious or is not industrially applicable; (ii) Non-entitlement (PA 1977, s.72(1)(b)). The person granted the patent is not the person entitled to the patent; (iii) Insufficiency (PA 1977, s.72(1)(c)). The patent specification does not amount to an enabling disclosure; or

34. (iv) Impermissible amendment (PA 1977, s.72(1)(d) and (e)). The protection afforded by the patent has been extended by an amendment that should not have been allowed. Claim Interpretation To establish infringement, the allegedly infringing act must fall within the scope of the patent claims. This can be difficult to determine where the allegedly infringing product or process is a variant of the patented product or process, and much patent litigation therefore focuses on claim interpretation; the process of determining the scope of a patent. Because PA 1977, s.125 requires compliance with the Protocol to the Interpretation of EPC 1973, Art.69, patent claims should be interpreted not in a strict literal way, nor in such a way that the patent claims are viewed as mere guidelines, but a position should be adopted between these two extremes so as to ensure fairness for the a patentee and certainty for third parties. It is not entirely certain as to whether the UK’s approach to claim interpretation, the purposive approach, is consistent with the Protocol.

35. Catnic Components v Hill Smith (1982) Improver Corporation v Consumer Products (1990) PLG Research v Ardon International Ltd (1995) The purposive approach in Catnic and restated in Improver is as follows: (i) Had the variant a material effect on the manner in which the invention works? (ii) If not, would this have been obvious? If yes, would the reader understand the strict compliance with the wording of the invention was required by the patentee? If yes, the variant is outside the claim.

36. There have been, and continue to be a number of debates relating to the purposive approach to claim interpretation, for example: (i) There were some questions as to whether the purposive approach to claim interpretation was consistent with the Protocol to the Interpretation of EPC 1973, art.69 (e.g. see PLG Research v Ardon International Ltd (1995)). However, following Kirin-Amgen Inc and others v Hoechst Marian Roussel Limited and others (2004), where the House of Lords stated that the purposive approach is consistent with the protocol, this issue seems to be settled; (ii) It is not helpful that the third element of the purposive test has often been applied in an inconsistent manner (e.g. see the varying approaches employed by the judges in Wheatley v Drillsafe (2001)); and

37. (iii) There has been some debate as to whether a US patent law doctrine – “the doctrine of equivalents” is applicable in UK patent law. However, the House of Lords have addressed this question (Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others (2004)) and concluded that no, the doctrine of equivalents is not applicable. Remedies The following remedies are available for patent infringement: (i) Injunction (PA 1977, s.61(1)(a)) (ii) An order for delivery up or destruction (PA 1977, s.61(1)(b)). (iii) Damages or account of profits (PA 1977, s61(1)(c) and (d)), but no damages or account shall be ordered where the infringer had no reasonable grounds for supposing that the patent existed (PA 1977, s.62(1)).

38. ( iv) A declaration, injunction and damages are also available where a groundless threat of patent infringement (PA 1977, s.70)) is made Criminal Sanctions Provision for criminal sanctions is made in PA 1977, SS.110-111

39. Next week – Trade Marks