International Law relating to Patents

TRIPS

  • Patents: Articles 27 – 34

International Treaties and Sources of Law

  • WTO: International organisation dealing with trade between states.

  • WIPO: Dedicated to facilitating worldwide protection of IP rights. (Paris Convention = administered by WIPO, applies to industrial property including patents. Aims to harmonise international IP).

  • Doha Declaration: Addresses concerns of developing countries regarding TRIPS implementation.

Patent Cooperation Treaty (PCT)

  • Function: Facilitates filing patents in multiple countries through a single application.

  • Framework: Operates within the principles of the Paris Convention and TRIPS to harmonise patent protection globally.

Regional Conventions

  • Paris Convention: Serves as a guide for the PCT process, allowing streamlined patent applications across member states.

  • European Patent Convention (EPC): Establishes a unified procedure for patent grants across Europe based on a single application.

National Instruments for Patents

  • UK: Governed by the Patents Act 1977.

  • US: Governed by the Patent Act of 1952.

Principles of Patent Protection

  • Definition: A patent conveys rights to inventors concerning their inventions, prohibiting unauthorised use by others.

  • Duration: Typically lasts for 20 years.

  • Functions of Patents:

    • Stimulates innovation and investment

    • Disseminates technical knowledge to the public

Criteria for Patentability

  • TRIPS Article 27: An invention must be:

    • New

    • Involving an inventive step (non-obvious)

    • Capable of industrial application (useful).

Exclusions to Patentability

  • Permissible Exclusions:

    • Inventions contrary to public order or morality.

    • Diagnostic, therapeutic, and surgical methods for humans or animals.

    • Certain plants and animals except micro-organisms.

Exclusive Rights of a Patent**

  • TRIPS Article 28: Outlines exclusive rights relating to making, using, and selling products, as well as licensing rights.

Disclosure Requirements for Patents

  • TRIPS Article 29: Mandates sufficient disclosure of invention for implementation.

Exceptions to Patent Rights

  • Articles 30 & 31 TRIPS: Allow limited exceptions to exclusive patent rights without adversely affecting patent owner's rights.

  • Compulsory licensing is discussed for government utility.

TRIPS Articles Overview

  • Article 32: Covers revocation reviews of patents.

  • Article 33: Establishes a minimum patent term of 20 years.

Patentability Under the Patents Act 1977 & EPC

  • Conditions:

    • Must demonstrate novelty, an inventive step, and industrial applicability.

Novelty Requirements

  • State of the Art: Defined as not disclosed to the public prior to the application filing date.

Synthon v SmithKline Beecham [2005]

  • Case Summary: Discusses the crucial distinction between disclosure and enablement in determining patent novelty.

Global Approaches to Novelty Disclosure

  • UK: Recognizes all global public information as part of the prior art (absolute novelty).

  • Variations: Some jurisdictions adopt mixed or local novelty standards.

Inventive Step

  • Definition: Involves assessing whether an invention is obvious to a person skilled in the relevant field based on the state of the art.

  • Test: The four-step test from Windsurfing v Tabur Marine case outlines the assessment procedure.

Approaches to Inventive Step in Different Jurisdictions

  • EPO: Uses a problem and solution approach for assessing inventive step.

  • UK Courts: Generally adapted to the Pozzoli approach but find merit in EPO methods.

  • US: Applies a similar methodology as held in Graham v John Deere.

Assessment of the Person Skilled in the Art

  • UK Perspective: Describes a theoretically dull but knowledgeable individual.

  • US Perspective: Contrasts by suggesting a creative and capable practitioner loses sight of conformity.

Capable of Industrial Application

  • Definition: Considers whether an invention is usable within any kind of industry, including agriculture.

Industrial Application Standards in the UK and US

  • Standards: Generally low threshold in the UK, whereas the US requires a more substantial demonstration of utility.

Filing a Patent Application

  • Application Process: Includes establishing a priority date and submission of specific document requirements to the UK IPO or the EPO.

  • Examination: Involves preliminary and substantive assessments, alongside public publication procedures.

International Patent Filing: Patent Cooperation Treaty**

  • Advantages of PCT: Facilitates applications across multiple jurisdictions while maintaining a structured examination timeline and minimizing costs.

Global Trends in PCT Applications

  • Growth Rates: Documented increases in international filings, emphasizing worldwide engagement in patent protection (2022 statistics).

Top PCT Applicants**

  • Notable Entities: Includes companies like Huawei and Samsung, showcasing high competition in tech patenting.

Conclusion and Next Week's Focus

  • Upcoming Lecture: Focus on patent infringement is scheduled for next week.