The Inventiveness Requirement in Patent Law

The Inventiveness Requirement in Patent Law PDF

Author: Lodewijk W.P. Pessers

Publisher: Kluwer Law International B.V.

Published: 2016-04-20

Total Pages: 428

ISBN-13: 9041183396

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Although the pivotal role of the inventiveness requirement in patent law is broadly accepted, it has long remained an ill-defined concept, and in current debates the question is often raised whether the requirement is capable of functioning as an adequate ‘gate-keeper’. By providing a broad and historical perspective on the inventiveness concept in patent law, this groundbreaking work lays a very thorough conceptual basis for further and more in-depth discussions on current standards of inventiveness. In a method guided by geography and chronology, the author weaves developments in numerous countries – focusing primarily on the United States, the United Kingdom, Germany, and the Netherlands – into a fullscale analysis of the inventiveness concept. Among the questions raised and examined are the following: - How do industrial–economic considerations influence the requirement? - Are there different doctrinal ‘schools of thought’ that can be distinguished? - Should the current requirement stay in close relationship with its predecessors or is it fundamentally different? - Which socio-economic and political forces have influenced or diverted the evolution of the requirement? - What are the most conspicuous similarities and dissimilarities among the jurisdictions under examination? And how can they be explained? - To what extent is the ‘inventive step’ requirement applied in a uniform manner within the European Patent Convention area? - To what extent has the enormous recent growth of patent grants been brought about by relaxation of the inventiveness requirement? This book provides crucially important fundamental commentary for lawyers, jurists, and scholars coming to grips with a hugely complex legal phenomenon: the dramatic growth worldwide in recent years of patents as instruments for the protection of industrial property. Particularly welcome in these times of intensifying scrutiny of patent law, this incomparable analysis will quickly become a cornerstone resource for intellectual property lawyers, patent officers, in-house counsel in multinational manufacturing companies, and other interested practitioners.

Genes and Ingenuity

Genes and Ingenuity PDF

Author: Australia. Law Reform Commission

Publisher: Virago Press

Published: 2004

Total Pages: 690

ISBN-13:

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Report of an inquiry concerned with two broad issues: the patenting of genetic materials and technologies, and the exploitation of these patents and the distinction that can and possibly should be made between discoveries and inventions when referring to claims over genetic sequences.

WIPO Guide to Using Patent Information

WIPO Guide to Using Patent Information PDF

Author: World Intellectual Property Organization

Publisher: WIPO

Published: 2018-04-30

Total Pages: 44

ISBN-13: 9280526510

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This Guide aims to assist users in searching for technology information using patent documents, a rich source of technical, legal and business information presented in a generally standardized format and often not reproduced anywhere else. Though the Guide focuses on patent information, many of the search techniques described here can also be applied in searching other non-patent sources of technology information.

Aspen Treatise for Patent Law

Aspen Treatise for Patent Law PDF

Author: Janice M. Mueller

Publisher: Aspen Publishing

Published: 2022-10-27

Total Pages: 1296

ISBN-13: 154382109X

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Succinct and timely, Patent Law, Sixth Edition demystifies its subject as it explores and explains important cases, judicial authorities, statutes, and policy. Approachably written for law students, attorneys, inventors, and laypersons alike, this text stands on its own and may be used alongside any patent or IP casebook to support more in-depth study of patent law. New to the Sixth Edition: Coverage of the Supreme Court’s ongoing, intensive scrutiny of the America Invents Act (AIA), the most significant change to U.S. patent law in 70 years, including: Helsinn (definition of prior art under the AIA) Cuozzo (non-reviewability of institution decisions) Oil States (Constitutionality of AIA) SAS Institute (rejecting partial institution) Return Mail (federal government not a “person” entitled to post-grant review) Dex Media (cert. granted, reviewability of Board’s time-bar decisions) The burgeoning landscape of patent-eligibility jurisprudence under 35 U.S.C. §101, including Federal Circuit decisions in: Vanda, Cleveland Clinic, Genetic Techs., Endo, Athena Diagnostics (laws of nature) Enfish; Thales Visionix (abstract ideas) Berkheimer, Aatrix, Cellspin (role of fact questions in the Mayo/Alice Step Two “inventiveness” inquiry) Disparate viewpoints for analyzing the bedrock requirement of nonobviousness, including the Federal Circuit’s first en banc obviousness decision in thirty years: Apple v. Samsung The continued vitality of infringement under the doctrine of equivalents, as illustrated in a spate of Federal Circuit decisions including: Lilly v. Hospira Supreme Court decisions examining patent infringement remedies, including: WesternGeco (offshore lost profits) NantKwest (cert. granted, attorney fee-shifting in §145 civil actions) Supreme Court decisions cabining long-standing defenses to patent infringement, including: Impression Products (patent exhaustion) SCA Hygiene (laches and equitable estoppel) Professors and students will benefit from: Thorough coverage and clear writing that clarifies principal legal doctrines, key judicial authorities, governing statutes, and policy considerations for obtaining, enforcing, and challenging a U.S. patent In-depth treatment and comparison of pre- and post-America Invents Act regimes for novelty and prior art with numerous hypotheticals Timely statistics on patent trends Succinct analysis of multi-national patent protection regimes Helpful visual aids, such as figures, tables, and timelines A sample patent and breakdown of a prosecution history Boldfaced key terms and a convenient Glossary

The Evolution of Patent Policy

The Evolution of Patent Policy PDF

Author: Hazel V. J. Moir

Publisher:

Published: 2015

Total Pages: 0

ISBN-13:

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Economists assume there is new knowledge or know-how embedded in patented inventions. This new knowledge should result in spillover benefits which can provide dynamic efficiency gains to offset the static efficiency losses of the patent system. Unfortunately this assumption is out-of-date. 'Novelty' and 'inventiveness' are used as a proxies for new knowledge, but over time judges have introduced detailed legal doctrines (policy rules) limiting how these proxies work. These ignore the issue of new knowledge. Most existing knowledge is disallowed in assessing novelty, and the quantum of inventiveness required is, in Australia, a scintilla. This evolution in innovation policy seems never to have been evaluated - case law precedents have generally been simply incorporated into statute law. This paper traces this evolution, following the major legal decisions reducing the quantum of inventiveness required in Australia for grant of a standard patent. It commences with a short comparison of economic and legal approaches to the issue of patentability (section 2). By focusing on the economic rationale for grant of a monopoly for an invention, one can assess whether the legal proxies adopted are likely to sufficiently mirror the underlying rationale to produce positive economic outcomes. This section also provides a short exposition of the legal approach to patent grant, including the key elements in the complex legal approach to 'inventiveness'. The main section of the paper then reviews the key doctrines and the legal decisions underlying them. The final section of the paper discusses the extent to which statute law is (or is not) amended to fix problems created by economically unsound decisions. During 2009 IP Australia undertook what it described as an exercise in improving "the Australian patent system as a vehicle to support innovation" (IP Australia 2009a: 1). Issues addressed included the knowledge used in determining inventiveness and part of the test for inventiveness. These consultations fed into the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Despite these "raising the bar" consultations and amendments the inventive step requirement for an Australian patent remains virtually non-existent. Replacing the proxy tests of novelty and inventiveness with a more direct test of the contribution to knowledge or know-how is considered.

Patents as an Incentive for Innovation

Patents as an Incentive for Innovation PDF

Author: Rafal Sikorski

Publisher: Kluwer Law International B.V.

Published: 2021-02-16

Total Pages: 474

ISBN-13: 9403524146

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Patents as an Incentive for Innovation Edited by Rafal Sikorski & Zaneta Zemla-Pacud Patents are a reward for human inventiveness. A well-functioning patent system must provide incentives for innovation, safeguard dynamic competition and protect the public interest – a balancing act fraught with difficulty in the ‘connected’ global world. This ground-breaking book is the first to deeply analyse how patent law today performs its function of stimulating innovation in the crucial sectors of healthcare, agriculture, artificial intelligence and communications technology. Patent specialists, practitioners and scholars from various jurisdictions thoroughly describe how patent rights can be deployed to incentivize investments in researching and developing socially critical innovations without sacrificing the public’s interest in sharing the benefits that are produced. Among the emerging issues of patent rights investigated are the following: protectability and morality of according private rights over material derived from the human body; licensing on fair, reasonable and non-discriminatory (FRAND) terms; the supplementary protection certificate (SPC) manufacturing waiver; patent eligibility of artificial intelligence-related inventions; excessive enforcement of patents by patent assertion entities; enforcement of second medical use innovations; the so-called farmer’s privilege, the farm-save seed exemption, and breeders’ rights; international trade regulations and their influence on patent systems; human enhancement technologies and the consequences of patenting them; specifics of patent protection for biologic medicines; challenges posed by artificial intelligence for the disclosure requirement in patent law; and standard essential patent licensing, particularly in the context of the 5G standard. Perspectives taken into consideration by the authors include protectability criteria, length and scope of the granted protection, mechanisms for dealing with the friction between generalized application and specialized concerns, and rights enforcement. These aspects are analysed on the domestic, international and global levels. The COVID-19 pandemic has highlighted the urgent need to strike the right balance between innovation and access in healthcare and other technologies, a need rooted in patent law. Because the problems discussed – and solutions offered – in this collection of expert essays are of tremendous practical and cultural significance, the book will be of immeasurable value to practitioners, policymakers and researchers in patent law and other fields of intellectual property law.

The Ethics of Patenting DNA

The Ethics of Patenting DNA PDF

Author: Nuffield Council on Bioethics

Publisher:

Published: 2002

Total Pages: 132

ISBN-13:

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This paper questions whether the application of the patent system to DNA sequences achieves its goals of stimulating innovation for the public good and rewarding people for useful new inventions. Even if DNA sequences are considered eligible for patenting, they must also be novel, inventive, and useful. The application of these criteria has not been stringently applied. In future, patents asserting rights over DNA sequences should become the exception rather than the norm.

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