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Great Flexibility In Patent Statute: Opportunity For Courts To Take Account Of The Needs And Characteristics Of Different Industries Courts Can And Should Apply The General Rule

A patent is an exclusive right that is granted for the purpose of invention related to a product or a process, offers a solution to a drawback. Innovation plays a crucial role while deciding what is to be patented and such a concept requires an idea and a decision to invest in it.[1] Utilitarian, labor based, and personhood is the three theories of intellectual property rights on which the patents are defined. The utilitarian theory considers patents as an incentive - a policy instrument used by society for encouraging inventions.

Patents are a response to the public's good nature of knowledge, which makes imitation easier than invention.[2] In terms of ideas, it embodies investment opportunities, in a sense where public knowledge signifies the race for innovation, for example human genome and where private knowledge is something one must know about to invest into it, for example the automotive industry.

Various industries are distinguished on the aspects of innovation namely competitive and cumulative innovation. The further is explained through illustration of smartphones, automobile industries where there are lot of players in market, attempts in innovating technologies to satisfy the human needs instantly and attempts to have competition in market irrespective of patent rights, likewise cumulative innovation draws the attention towards the patentability of inventions that are ongoing in nature and have sequential process and improvements, the aim of right to use of invention is not the main focus but to exclude other players to perform it, for instance space explorations (space air crafts), cameras and navigation systems. In addition, certain requirements must be satisfied to patent an invention, it follows-

Primary: patentable subject matter (subject matter eligible for protection or invention), novelty, inventive step, and industrial application.

Secondary: sufficiency (disclosure or enablement)
To regulate the patentability and legislation concerning it, the UK Patents Act was constructed in 1977; it deals with the national patents and the United Kingdom titles of European Patents. Under UK law, section 1 of Patents Act, 1977 highlights, a patent can be permitted only for an invention, if the certain conditions are fulfilled:

(a) If the invention is new, (b) it involves an inventive step; (c) it is capable of industrial application.[3]

Apart from Judiciary, United Kingdom Intellectual Property Office (UKIPO) is responsible in examining and rejecting or allowing of national patents. Similarly, the European Patent Convention (EPC), a treaty was formed to set the rules and regulations concerning grant of Patents. Since it is not only limited to European Union nations nevertheless influence other countries as well, but such powers are also discretionary and not legally binding on national courts, nevertheless in the case of Merrell Dow v Norton, it was observed by Lord Hoffman that:

"These decisions are not strictly binding upon courts in the United Kingdom, but they are of great persuasive authority; first, because they are decisions of expert courts and secondly, because it would be highly undesirable for the provisions of the EPC to be construed differently in the EPO (European Patent Office) from the way they are interpreted in the national courts of a Contracting State."[4]

This is the case of patent use in pharmaceutical industry where plaintiff discovered a drug called Terfenadine that helps in curing the hay fever, moreover, they were granted the patent for same drug in the United Kingdom. After the expiry of patent, other pharmaceutical companies started using the drug, as it is available in public domain. The court observed that it was discovered and not invented in the first place, thus the invention is not new and hereby according to section 1 (a) of the Patent Act, 1977 the patent is invalid. The primary requirement of novelty resulted from several

arguments, which state that an invention shall be taken to be new if it does not form part of the state of the art.[5] It means an invention consists of all the matters must include product, process, and information; such should be made available in public domain before filing for the patentability of an invention ('priority date'[6])

In written, by use or oral narrative [Section 2 (2) of Patents Act, 1977]. Novelty is established if two conditions are satisfied, namely availability of an invention to the public and enablement or disclosure, respectively. The latter condition can be reviewed in the case of Nestec vs Dualit,[7] the disclosure of invention with reference to claiming of novelty by filing of priority document, the defendant argued, to claim novelty the disclosure of design of machines, extraction mechanism and capsule insertion is obligatory, the same is not revealed or made available to public by plaintiff thus the accusation against defendant for using the same mechanism is invalid.

Subsequently, if novelty does not exist regarding the invention, then the claiming of novelty in regard with invention is void. Equivalently, the court held that patent is not authorized to priority from the priority document and there is a lack of evidence of indirect infringement of plaintiff's patent.

However, the theory of disclosure and enablement was given emphasis in the case of Synthon BV v. Smithkline Beecham,[8] The main contention of argument was whether the compound used to treat depression is disclosed or made available to the public before the filing of priority document. The court also relied upon the precedent of Valensi v British Radio Corporation, in which Lord Buckley identified:

"The hypothetical addressee is not a person of exceptional skill and knowledge, that he is not to be expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found."[9]

Nonetheless, prior disclosure and enablement (trial and error) are cumulative conditions to gain novelty in respect of patentability of an invention, the court exhibited flexibility in understanding the patent statute in Synthon case that both the conditions should be present to define the 'state of an art.' The prior disclosure correspondingly enables scope of monopoly if the patent is granted.

In addition, section 3 of the UK patents Act specifies on the inventive step and Pozzoli test, to identify if an invention filed for patentability follows the inventive step that is:

"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2 (2)."[10] Pozzoli test clearly specifies that person should be skilled in the art; the person should have significant common general knowledge, identification of inventive step and concept of obviousness.

The courts applied the general rules and to give effect to European Patent Convention, Patent act of 1977 was introduced, and the concept of section 2 inspired by Article 54 of EPC shows that courts have a flexible approach in determining the legal issues associated with patentability in question in various industries.

Moreover, the derivation of various tests for identification of requirements of an invention to become a patent has been widely codified and consideration by courts towards industries in reference to patentability has been broadly praised throughout European Union states and the United Kingdom.

  • The Economics of the European Patent System: IP Policy for Innovation and Competition (2007) - Dominique Guellec and Bruno van Pottelsberghe de la Potterie, ISBN-13: 9780199216987
  • A Patent on the Conscious: A Theoretical Perspective of the Law on Patentable Life - Danielle K. Miller, Volume 2 (2009)
  • Novelty and Disclosure in Patent Law- Suzzane Scotchmer and Jerry Green [Rand Journal of Economics (Volume 21)], pgs.- 131-146.
  • UK Patents Act, 1977
  • European Patent Convention (EPC), known as the Convention on the Grant of European Patents, 1973
  • The Patent Crisis and How the Courts Can Solve It (2009) - Dan L Burk and Mark A Lemley.
  1. Innovations and incentives (2004)- Suzzane Scotchmer
  2. Patents as an Incentive to Innovate (2007)- Dominique Guellec and Bravo Van
  3. Part-I, Section 1 (Patentable inventions) - UK Patents Act, 1977
  4. Merrell Dow Pharmaceuticals Inc v. HN Norton & Co Ltd [1995] UKHL 14
  5. Part-I, Section 2 (Novelty) � UK Patents Act, 1977
  6. Part-I, Section 5 (Priority date) � UK Patents Act, 1977
  7. Nestec S.A. & others v. Dualit ltd. & others [2013] EWHC 923
  8. Synthon BV v. Smithkline Beecham Plc. [2005] UKHL 59
  9. Valensi v British Radio Corporation [1973] RPC 337
  10. Part-I, Section 3 (inventive step)- UK Patents Act, 1977

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