Section 2 Uganda’s Industrial Properties
Act defines a Patent as the title granted to protect an invention.A patent
gives the owner a monopoly in a particular territory, enabling them to exploit
the invention exclusively for a period of up to 20 years.
David
Bainbridge and Claire Howell In their book Intellectual Property Law, state that Although the inventor benefits from
the patent in that he can work, sell or license it, society also benefits
because not only is innovation encouraged but the invention will eventually
fall into the public domain.
It
should be noted that the grant of a monopoly is premised on the satisfaction of
3 requirements. Section 9 of the
Industrial Properties Act, states that an invention is patentable if it is new,
involves an inventive step, and is industrially applicable. From the said
provision, the extractable requirements are novelty, inventive step and
industrial application.
Before
discussing the abovementioned requirements showing the most and least problematic
to overcome in an application for a Patent, I shall address my mind to the
question of what amounts to an invention. In the words of Lord Hoffman
“logically one should first decide whether the claimed invention can properly
be described as an invention at all. Only if this question receives an
affirmative answer would it be necessary to go on to consider whether the
invention satisfies the prescribed conditions for being ‘patentable’."
Section 2 of the same Act also further states
that an invention means a new and useful art whether producing a physical
effect or not, process, machine, manufacture or composition of matter which is
not obvious, or a new and useful improvement of it which is not obvious,
capable of being used or applied in trade or industry; and includes an alleged
invention;
In Biogen
V Medeva Plc (1997) RPC1 cited in Bainbridge, Lord Hoffman usefully
described the different forms of inventions. He stated that an invention is the
addition of an idea to an already existing stock of knowledge. Sometimes, it is
the idea of using established techniques to do something, which no one had
previously thought of doing. In that case, the inventive step will be doing the
new thing.
Sometimes, it is finding a way of doing something, which people had
wanted to do but could not think how. The inventive idea would be the way of
achieving the goal. In yet other cases, many people may have a general idea of
how they might achieve a goal but not know how to solve a particular problem,
which stands in their way. If someone devises a way of solving the problem, his
inventive step will be that solution but not the goal itself or the general
method of achieving it.
From
the above as per Bainbridge, an invention could be a product (goal), a process
(method of achieving the goal) or a solution to a problem. I now turn to
discuss the requirements of Patentability showing the most and least
problematic to overcome in an application for a Patent.
Novelty: Section 10(1) of the
Industrial Properties Act, states that an invention is new if it is not
anticipated by prior art or where a person who is highly skilled in the
relevant area could not derive the invention from a combination of prior
disclosed art.
Section 10(2) of the same Act states
that for purposes of this Act, prior art consists of everything made available
to the public anywhere in the world by means of written disclosure including
drawings, published patent applications, and other illustrations or by oral
disclosure, use, exhibition or other non-written means, where the disclosure
occurred before the date of filing of the application or, if priority is
claimed, before the priority date validly claimed in respect of the
application.
From
the above provisions, it is clear that for one to claim a Patent in respect of
an invention, it should not have been disclosed anywhere in the world.
Disclosure to a person(s) in confidence does not defeat novelty as stated in Visx Inc V Nidek Co Ltd (1997) FSR 495.
Further more, Bainbridge at Pg. 419
states that, while disclosure even to a single person without any express or
implied terms as to confidence is sufficient to defeat novelty. It is
immaterial whether the person kept the said disclosure a secret as court noted
in MMI Research Ltd V Cellxion Ltd
(2009) EWHC 418.
One
vital element under Novelty is the aspect of Anticipation. In the case of Synthon
V SmithKline Beecham Plc (2006) RPC 323, it was stated that
anticipation entails an enabling disclosure; such that a skilled person in the
field can be able to work the invention. Lord Hoffman went on to confirm that
despite the fact that enablement and disclosure are correlated in as regards
anticipation, the two principles have separate rules that govern them.
In
respect of disclosure, Lord Hoffman was of the view that prior art must
disclose subject matter which if performed would necessarily result into an
infringement on the Patent. In the Synthon
case (above) it should be noted that patent infringement does not require
awareness of the infringement. Lord Hoffman further stressed that prior
disclosure should be construed as understood by the skilled person at the date
of disclosure not at the date of subsequent patent.
In
light of the issue of enablement, it should be looked at from the perspective
of an ordinary skilled person not a world champion as per Jacob J in the Synthon case above. Once the disclosure
has been made, the question whether an invention can be enabled is to be looked
at as viewing whether the skilled person in the field can work the invention by
carrying out trial and error experiments. The skilled person need not possess
inventive faculties and need not be aware of the fact that he is working the
said invention as stated in the Merrell
case (above).
From
the above therefore, it can be deduced that novelty applies quite strictly and
is practically the most difficult to overcome. This is premised on the
following:-
(a)
Under Novelty, the invention in
question must not form part of the prior art. Prior art constitutes anything
disclosed anywhere in the world (Section 10(2) of the Industrial Properties Act
2014. This provision implores Patentees to be diligent and ensure that their
inventions do not form part of prior art in order to satisfy Novelty. This in
practise is hard to overcome because one is compelled to conduct for lack of a
better word a ‘world search’ to satisfy Novelty.
(b)
Section
10 further requires one to have an invention that
is new i.e. absolute novelty. In Low Developed Countries like Uganda, this is a
hard measure to overcome on the basis that “there is nothing new under the sun.”
Therefore the idea of satisfying the fact that the invention does not form part
of prior art is a complex one and is hard to overcome.
(c)
In respect of the issue of
enablement, a skilled person in the field in question is bound to conduct trial
and error experiments for purposes of working or enabling the invention (Synthon case). It is my opinion that
the conduction of the said trial and error experiments is in practise, a
problematic one owing to the fact that a lot of finances may be involved and
the said process is rather speculative since its premised on trial and error.
Inventive Step; Section 11 also
states that an invention shall be considered as involving an inventive step if,
having regard to the prior art relevant to the application claiming the
inventions, it would not have been obvious to a person skilled in the art to
which the invention relates on the date of the filing of the application or, if
priority is claimed on the date validly claimed in respect of the invention.
The key
issue under the requirement of inventive step is the concept of obviousness.
This has no special meaning assigned to it and the plain dictionary meaning is
invoked as court noted in General Tire
& Rubber Co Ltd V Firestone Tyre & Anor (1972) RPC 437. The
question of whether an invention is obvious is one of fact and depends on the
circumstances of the case in question in Lux
Traffic V Pike (1993) RPC 107 ChD. The term ‘obvious’ relates to that which
does not go beyond the normal progress of technology but merely follows plainly
or logically from the prior art, i.e. something that does not involve the
exercise of any skill or ability beyond that to be expected of the person
skilled in the art. The key point to note under obviousness is that where an
invention is not obvious to a skilled person and an inventive person, it must
involve an inventive step as noted in Intalite
int’l V Cellular Ceilings Ltd No.2 (1987) ROC 537.
Obviousness
is judged by looking at the invention as a whole and considering the state of
art at the relevant time. Where the claimed invention is compared in its
entirety with the previous state of the art, a mosaic approach as stated in Technograph Printed Circuits Ltd V Mills
& Rockley (Electronics) (1972) RPC 346 is applied to assessing
inventive step, that is, it is examined whether it would be obvious to the
person skilled in the art to combine various elements of pre-existing technique
in order to arrive at the result for which the patent is claimed.
Another
paramount consideration under the requirement of Inventive step is the skilled person
in the field in question. In Technograph Printed Circuits Ltd V Mills
& Rockley(Electronics) Pill
J had this to say about a skilled person.. a skilled technician who is well
acquainted with workshop technique and who has carefully read the relevant literature.
He is supposed to have an unlimited capacity to assimilate the contents of . .
. scores of specifications but to be incapable of a scintilla of invention.
When dealing with obviousness, unlike novelty, it is permissible to make a
‘mosaic’ out of the relevant documents, but it must be a mosaic which can be
put together by an unimaginative man with no inventive capacity.
Thus
the skilled person in question need not possess inventive faculties and need
not be a world champion (synthon case above). He should rather be well informed
in light of the field in which the invention applies. When considering the
requirement of inventive step, the test laid out by the court in Windsurfing
V tabur Marine (1985) RPC 59 is a paramount consideration and failure
to apply the same was in one case seen as a ground for appeal. The said test
is;
1.
Identify the inventive concept embodied in the
patent in suit.190
2. The court then assumes the mantle of the
normally skilled but unimaginative
addressee in the art at the priority date, imputing to him what was, at that
date, common general knowledge in the art in question.
3. Identify what, if any, differences exist
between the matter cited as being ‘known and used’ and the alleged invention.
4. The court then asks itself the question
whether, viewed without any knowledge of the alleged invention, those
differences constitute steps which would have been obvious to the skilled man
or whether they require any degree of invention.
In PLG
Research Ltd V Ardon Int’l Ltd (1995) RPC 287 Millet J stated that the
value of the [the Windsurfing] analysis is not that it alters the
critical question; it remains the question posed by the Act. But it enables the
fact-finding tribunal to approach the question in a structured way. In essence,
the said test was formulated as a structural approach to be used while
determining the question of whether or not an inventive step exists.
The
said test was subject to amendment in Pozzoli SPA V BDMO SA (2007)
FSR 872 Jacob J stated the test as follows:-
1. (a)Identify
the notional ‘person skilled in the art’;
(b) Identify the relevant common general
knowledge of that person;
2. Identify
the inventive concept of the claim in question or, if that cannot readily
be done, construe it;
3. Identify
what, if any, differences exist between the matter cited as forming part of the
‘state of the art’ and the inventive concept of the claim or the claim as
construed;
4. Viewed
without any knowledge of the alleged invention as claimed, do those differences
constitute steps, which would have been obvious to the person skilled in the
art, or do they require a degree of invention?
From
the above therefore, it can be seen that requirement of inventive step requires
one to show that upon having regard to the prior art, their invention is not
obvious to a person skilled in the art. The requirement for inventive step
proves to be a difficult one to overcome as shown:-
The
test requires that the skilled person in the art need be versed with all the
relevant common knowledge
in relation to the field in question. This in my
opinion is a hard position to overcome in practise. It may be hard to get a
skilled person with a vast knowledge in relation to the art in question as
required by the law. Although at the same time it is not an impossibility.
The
person skilled in the art ought to have read all the relevant literature in
respect of the invention in question (Technographic
case above). This in practise is problematic to overcome, as it requires a
lot of time and resources for one to actually internalize all the relevant
literature pertinent to the invention in question.
Industrial Applicability: Section 12 of the Act, states that an
invention shall be considered industrially applicable if, according to its
nature, it can be made or used in any kind of industry, including agriculture,
medicine, fishery and other services. In effect, an invention lacking a
practical application is unlikely to be patentable. If it has one, then it will
probably pass the industrial applicability test.
In Eli Lilly & Co v Human Genome
Sciences Inc (2008) EWHC 1903, Kichen J stated that:
It
includes all manufacturing, extracting and processing activities of enterprises
that are carried out continuously, independently and for commercial gain. .
However, it need not necessarily be conducted for profit. . And a product which
is shown to be useful to cure a rare or orphan disease may be considered
capable of industrial application even if it is not intended for use in any
trade at all. Conversely, the requirement will not be satisfied if what is
described is merely an interesting research result that might yield a yet to be
identified industrial application.
The
requirement of industrial applicability seems to be the least problematic to
overcome because what need be showed is that the invention in question has a
use. There are no hard and fast rules in relation to the requirement of
industrial applicability as opposed to novelty and inventive step.
In
conclusion, it is clear from the above that the most problematic requirement to
overcome in practise is Novelty and the least problematic is industrial
applicability. However it is vital to note that all the requirements are of
paramount importance in an application for a Patent and all of them need be
satisfied to their requisite practical degrees for a Patent to be granted.
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