Decision G 1/19 and the Messy Misconception of the COMVIK Approach

2021 ◽  
Author(s):  
Oliver Baldus
Keyword(s):  
Subject Matter ◽  
Technical Problem ◽  
Substantial Effect ◽  
European Patent ◽  
Classification Problems ◽  
Prior Art ◽  
Technical Effect ◽  
Other Information ◽  
Technical Character ◽  
Technical Features

Abstract Decision G 1/19 of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) answers the question whether computer simulations can be protected under the EPC. It was decided that these simulations in principle could solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer. The result of the decision is rather non-spectacular and obvious, since it simply states that simulations can be protected under EPC law when they solve a technical problem. Nevertheless, the decision casts an extensive light on the general and established criteria to be used for assessing technicality. In this context a misconception of the COMVIK approach becomes apparent. The COMVIK approach is based on distinguishing technical from non-technical features. All technical features must be considered when assessing inventive step of an invention over prior art, while non-technical features have no significance for this purpose. In this view it is assumed that all information provided by a claim can be either classified as a technical or a non-technical feature. Further it is assumed that features exist that are inherently technical, i.e. technical per se. However, this concept of an inherent technical character is misleading. Basically, all information should first be distinguished as to whether it has a substantial effect on the design of the claimed subject-matter. Information that does not influence its ‘appearance’ must be seen a ‘non-feature’, whereas all other information describing a characteristic of the claimed subject-matter forms a ‘feature’. Secondly the so determined features are to be divided into technical or non-technical features, solely depending on whether they contribute to the solution of the concrete technical problem of the invention. In this way, the non-feature concept avoids many classification problems associated with the former COMVIK approach and constitutes the only admissible way to assess technicality correctly, consistently and non-sophistically.

17. Patentable subject matter

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Subject Matter ◽  
Industrial Application ◽  
Computer Programs ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Technical Effect ◽  
Patentable Subject Matter ◽  
The Law ◽  
The Uk

This chapter deals with patentable subject matter and the ways in which it is regulated under the Patents Act 1977 and the 2000 European Patents Convention (EPC). More specifically, it discusses five criteria that an invention must satisfy to be patentable, including the requirement that it must be capable of ‘industrial application’, and that patents are not granted for immoral inventions. The chapter also considers two different approaches that are used when deciding whether an invention falls within the scope of section 1(2)/Article 52(2): the ‘technical effect’ approach in the UK and the ‘any hardware’ approach applied by the European Patent Office. Finally, it examines how the law deals with a number of specific types of invention and looks at possible reforms, particularly in relation to computer programs and computer-related inventions.

There is no hope in inventive step

2019 ◽  
Vol 15 (1) ◽  
pp. 2-3
Author(s):  
Gemma Wooden ◽  
Matthew Blaseby ◽  
Derk Visser
Keyword(s):  
Technical Problem ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Inventive Step ◽  
Prior Art ◽  
Skilled Person

Abstract Guidelines for Examination in the European Patent Office, November 2019 edition The European Patent Office’s Guidelines have been updated to clarify that the approach for assessing inventive step involves determining whether a skilled person would have modified the closest prior art in an expectation of some advantage or improvement. A hope of solving the objective technical problem is insufficient for a modification of the closest prior art to be considered obvious.

8. Patent Protection and Exploitation

2019 ◽  
pp. 178-198
Author(s):  
Justine Pila ◽  
Paul L.C. Torremans
Keyword(s):  
Subject Matter ◽  
Patent Protection ◽  
European Patent ◽  
Central Importance ◽  
The Public ◽  
The Third ◽  
The Subject ◽  
The Law ◽  
Patent Grant

Once a European patent has been granted the nature and scope of the protection it confers must be determined. In considering such protection this chapter focuses on four issues of central importance to that end. The first is the effects of a patent, namely, the territories in and term for which it is valid. The second is the object of protection, namely, the subject matter that the public is excluded from using during the term of its protection. The third is the nature of protection, namely, the uses of the subject matter from which the public is excluded. And the fourth is the limitations to protection, namely, the uses of an invention that the law permits notwithstanding its protection by patent grant.

7. Secondary Patentability Requirements

2019 ◽  
pp. 162-177
Author(s):  
Justine Pila ◽  
Paul L.C. Torremans
Keyword(s):  
Subject Matter ◽  
Industrial Application ◽  
European Patent ◽  
Inventive Step ◽  
European Patent Convention ◽  
Biotechnological Inventions ◽  
The Eu

This chapter considers the secondary patentability requirements of the European Patent Convention (EPC). It assumes the existence of a subject matter for which a European patent may validly be granted, and focuses on the legal tests for determining its novelty, inventive step, and susceptibility of industrial application in accordance with Articles 54 to 57 EPC and the corresponding provisions of the EU Biotech Directive for biotechnological inventions.

Global Spread of Pharmaceutical Patent Protection: Micro Evidence from the International Equivalents of Drug Patents in Japan

2017 ◽  
Vol 8 (1) ◽  
pp. 26-47
Author(s):  
Yoshimi Okada ◽  
Sadao Nagaoka
Keyword(s):  
Patent Protection ◽  
Substantial Effect ◽  
Chemical Substance ◽  
European Patent ◽  
Patent Laws ◽  
Pharmaceutical Patent ◽  
Global Spread ◽  
Year 2000 ◽  
Substantial Heterogeneity ◽  
Drug Patents

We investigate the global spread of pharmaceutical patent protection as acquired by firms, based on a novel global patent database for all significant medical drugs, including biologics, introduced in Japan. It gives us the propensity of filing and grant rate for each country for patents granted in Japan. The major findings of the study are as following. Both the filing propensity to and the grant rate of major Asian countries approached those of the OECD economies by the early 2000s for chemical substance inventions. However, substantial heterogeneity with respect to other drug inventions still exists, specifically, crystal, use, formulation or combination, suggesting significant future room for international harmonization of patent granting standards. We found clear evidence of policy impact on the spread of protection for the two largest non-OECD economies. The amendments to Patent Laws in China in 1993 had an immediate and significant impact on patent filing propensity to China (30 percentage points increase), before accession to the WTO in late 2001. Furthermore, India’s ‘mailbox application system’ had a substantial effect as filing propensity reached 80 per cent of the number of corresponding European patent applications around year 2000, prior to implementing the Trade-Related Aspects of Intellectual Property Rights for drug patents in 2005. Subject classification codes: O34, O38, K29

Buying subject-matter expertise: an innovative approach to business classes

2020 ◽  
Vol ahead-of-print (ahead-of-print) ◽  
Author(s):  
Philip English ◽  
Rachel Gordon
Keyword(s):  
Student Learning ◽  
Subject Matter ◽  
Course Design ◽  
Technical Problem ◽  
Time Frame ◽  
Quality Analysis ◽  
Subject Matter Experts ◽  
Content Type ◽  
Subject Matter Expertise ◽  
The Subject

PurposeThis paper introduces a new instructional design for executive programs that combined a flipped classroom methodology and experiential learning to address the challenge of teaching highly technical material in a compressed time frame. In practice, when decision-making executives lack technical expertise and face a highly technical problem, they contract for subject-matter expertise (SME) within the firm or through hiring consultants. The authors show how this can be done in a classroom setting to enhance the learning experience.Design/methodology/approachThe classroom approach utilizes students from other programs as analysts for executive MBA (EMBA) teams faced with case analysis that involves technical issues in finance. The analysts act as subject-matter experts for the EMBA students.FindingsExecutive student learning is not eroded by relying on the analysts, and, moreover, the use of analysts enhances EMBA student understandingPractical implicationsExecutives are able, in a short time frame, to produce high quality analysis by utilizing the subject-matter experts. Executives also learn how to ask the right questions and evaluate the quality of the analysis created by the subject-matter experts. The subject-matter experts, who are also students, derive added benefits of an employment experience in finance, learning how to interpret instructions about the analysis and how to respond to feedback.Originality/valueThe paper illustrates a new course design where the course's technical analysis aspects mimic work environments enhancing student learning.

scholarly journals Patenting Aspects of Natural Products

2021 ◽  
Vol 69 (2) ◽  
Author(s):  
Santhosh Kumar. M ◽  
Dr. M. Surendhar Kumar
Keyword(s):  
Natural Products ◽  
Subject Matter ◽  
Patent Protection ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
European Law ◽  
Time Period ◽  
Definite Time ◽  
Exclusive Right

A patent is a monopoly right granted to a Patentee for a definite time period, during which he/she is given the exclusive right to stop anyone else from using his/ her invention without approval. The European law may allow patents to be granted to natural products, where such products may not be eligible for patent protection in USA, the European patent office strict assessment of priority and added subject matter, it is important that all subject matter is included in the first application for the invention.

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