19. Inventive step

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
State Of The Art ◽  
The State ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Inventive Step ◽  
The Uk ◽  
The Way

This chapter examines the requirement that an invention is patentable if it involves an ‘inventive step’ or ‘non-obviousness’, that is, the invention is not obvious to a person skilled in the art, and the difficulty of deciding whether an invention is obvious (non-inventive) or non-obvious (inventive). It first considers the approach used by the European Patent Office to deal with the obviousness of a patent and compares it with that in the UK. It then explains the concept of the state of the art in an obviousness examination before concluding with an assessment of the way in which the inventive step has been addressed in a number of different circumstances.

The applicant, after considering the results of the search, may file amendments to the description and claims. However, these are not acted on immediately; rather the patent goes forward to publication in exactly the form in which it was filed. The only addition will be any new claims filed since then but prior to the completion of preparation of the application for publication. At this stage copies of the application are available to anybody who wishes to inspect or purchase them. The Patent Office file is also open to public inspection. Whatever subsequently happens to the application, the learning it embodies now becomes part of the state of the art. Up to this point, it would have been possible to withdraw the application and maintain the novelty of the invention (provided of course that no other disclosure was made). Likewise, the invention remains novel for the purposes of foreign applications up the time it is published. If a patentee files, say, an Australia application, more than 12 months later (so outside the priority period) but before publication of the Australian application he can file a new application in (say) the UK. It will not have the priority of the Australian application: but it can be used as the basis for new priority applications elsewhere, including the European Patent Office. The application as published will also include an abstract, a summary of the invention covering the main technical features. This too has to be supplied by the applicant. Like the claims and search fee the abstract has to be filed within 12 months of the application date if it is not filed at the same time as the rest of the application. Substantive examination and grant (s 18)

1997 ◽  
pp. 168-168
Keyword(s):  
State Of The Art ◽  
The State ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Application Date ◽  
Technical Features ◽  
The Uk

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.

16. Procedure for grant of a patent

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Patent Application ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Patent Cooperation Treaty ◽  
Key Features ◽  
The Uk

This chapter explains the processes involved in granting patents as well as the factors that applicants must take into account when deciding whether to patent an invention in the UK. The role of patent agents and the choice of route to take to secure grant of the patent are considered. The chapter then documents the procedures in the application for a patent, paying particular attention to some of the key features of the UK and European Patent Office patent application processes together with the Patent Cooperation Treaty. It also describes situations in which applicants and patentees are able to amend their applications and the restrictions under which such amendments operate. Finally, it looks at a number of proposals to reform the patent procedure.

Inventorship, Ownership, and Compensation

2016 ◽  
Author(s):  
Philip W. Grubb ◽  
Peter R. Thomsen ◽  
Tom Hoxie ◽  
Gordon Wright
Keyword(s):  
Common Law ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
The Us ◽  
The Law ◽  
The Uk ◽  
The Right ◽  
Academic Inventions

This chapter considers the law governing inventorship, ownership, and compensation. It first discusses inventorship in the UK, the US, and the European Patent Office. It then looks at the issue of ownership of the rights in an invention, covering common law provisions, contracts of employment, statute law in the UK, statute law in Germany, and academic inventions. This is followed by a discussion of compensation for employee-inventors in the UK, Germany, and other countries. The remainder of the chapter explains the right to apply for a patent and to be granted a patent, co-ownership of patents, disputes over the correct ownership of an invention, and the recordal and transfer of ownership.

Can a Patent Be Granted for an AI-Generated Invention?

2020 ◽  
Vol 69 (11) ◽  
pp. 1123-1129
Author(s):  
Andreas Engel
Keyword(s):  
Artificial Intelligence ◽  
Intellectual Property ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Policy Perspective ◽  
The Us ◽  
The Uk ◽  
Rule Out ◽  
Formal Rules

Abstract Three patent offices had to answer the question of whether a patent can be granted for an invention for which an Artificial Intelligence (AI) system called DABUS was named as inventor. All applications were dismissed, but for different reasons. While the European Patent Office focused on formal rules, the UK Intellectual Property Office considered more substantive aspects, and the US Patent and Trademark Office relied on statutory language. From a policy perspective, the decisions find support in the fact that there is no clear consensus for AI to be recognized as an inventor, and that difficult questions would ensue if this were accepted. From a doctrinal perspective, the decisions do not rule out the patentability of AI-assisted inventions in general, as it remains possible to designate a human inventor when AI has merely facilitated the inventive process. This leaves the question of who should own a patent for an AI-generated invention, if patentability for such inventions is considered desirable. A possible solution could be to grant ownership directly to the company operating or owning the AI.

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.

No Need for ‘Plausibility’ in German Patent Law

2020 ◽  
Author(s):  
Markus Ackermann
Keyword(s):  
Case Law ◽  
Patent Law ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
Inventive Step ◽  
German Patent

Abstract In the case law of the Boards of Appeal of the European Patent Office (EPO), increasing importance is being attached to the concept of ‘plausibility’, which, however, has no literal basis in the EPC. Nevertheless, many decisions in which inventive step (Art. 56 EPC) is assessed address the question of whether the claimed solution was at least ‘plausible’ at the effective date. For medical use claims, a ‘plausibility test’ is even performed for assessing sufficiency of disclosure (Art. 83 EPC). Starting from this example, the following article shows why German patent law does not need ‘plausibility’.

15. Nature of a patent

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Intellectual Property ◽  
European Patent Office ◽  
European Patent ◽  
Patent Office ◽  
The Uk

This chapter provides an overview of the nature of the patent, with emphasis on the variety of ways in which patents are described, how they are drafted, and what they contain. It begins by looking at the types of patent in the UK and the two authorities that grant patents in the country: the UK Intellectual Property Office and the European Patent Office. It then considers the complex and difficult process of drafting a patent before discussing the four key parts of a patent, namely, an abstract, a description of the invention, one or more claims, and any drawings referred to in the description or claims. It also looks at some of the more common types of claims.

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