Patent Law Lecture – Sections 62–66, Patentability, Novelty, Inventive Step, International Filing

Sri Lankan Patent Law Framework (Sri Lankan Intellectual Property Act, No. 36 of 2003 – “the Act”)

• The operative patent provisions are found in Part IV of the Act.

• Core statutory sections for this lecture: $62\text{-}66$ (subject-matter & patentability) and $83$ (term).

• Always analyse a problem in a four-layer structure:

  1. Section $62(1)$ → “problem–solution” definition of an invention.

  2. Section $62(2)$ → must be a product or a process.

  3. Section $62(3)$ → confirm it is not in an excluded category.

  4. Section $63$ → apply the three patentability conditions: novelty, inventive step, industrial applicability.

  5. (Only if 1–4 are satisfied) move to ownership, rights, duration, foreign filing, etc.

1. Defining an “Invention” – Section $62(1)$

• Invention = “an idea of an inventor which permits, in practice, the solution to a specific technical problem.”

• Examiner (or student) must explicitly identify:

  • The technical problem addressed.

  • The technical solution offered.

2. Product vs. Process – Section $62(2)$

• Legal subject-matter must fall into one of two buckets:

  • Product Patent – Tangible item/composition (e.g., drug molecule, engine part, chemical compound).

  • Process Patent – Method/series of steps accomplishing a technical result (e.g., manufacturing route, computer-implemented control algorithm).

Practical tip: State which bucket your fact pattern belongs to before discussing patentability.

3. Statutory Exclusions – Section $62(3)$

The Act lists items that cannot be patented even if novel/useful. Key categories:

1. Discoveries, scientific theories, mathematical methods

   • Merely uncovering or explaining nature ≠ invention (e.g., new element “element-120”).

   • Case: Pension Benefit Systems (EPO) – pure mathematical formula rejected.

2. Plants, animals & essentially biological processes

   • Natural breeds excluded.

   • Exceptions: Transgenic micro-organisms & non-biological or microbiological processes (§62(3)(b)).

   • Cases: Diamond v. Chakrabarty (US) – oil-eating bacterium patentable; OncoMouse patented in several jurisdictions.

3. Schemes, rules or methods for business, mental acts, gaming (§62(3)(c))

   • Abstract business ideas not patentable unless they possess “technical character”.

   • Case: Alice Corp. v. CLS Bank (US) – business method held abstract.

4. (Additional categories in slides: presentations of information, public order, medical methods, etc.)

4. Patentability Requirements – Section $63$

Invention must be:

1. Novel (New)

2. Involve an Inventive Step (Non-obvious)

3. Industrially Applicable (Utility)

4.1. Novelty (Section $64$)

• Absolute/Universal Standard in Sri Lanka:

  • §$64(2)(a)$ → “everything disclosed to the public anywhere in the world by written, oral, use, or any other way” before the filing/priority date destroys novelty.

• Three global approaches (history):

  • Absolute (universal) – now used by virtually all jurisdictions (EU, SL, post-2013 US).

  • Relative – pre-2013 US; only certain disclosures counted.

  • National – old systems limiting prior art to domestic disclosures.

• Comparison-in-Isolation Test

  • Assess each prior-art document individually.

  • A single reference must disclose every claimed feature to defeat novelty.

  • No “mosaicing” for novelty (only for inventive step).

  • Example (pen with blue ink, rubber grip, pressure-switch): Only a document containing all 3 in one teaching destroys novelty.

4.2. Inventive Step (Section $65$)

• Rationale: Patents are rewards for significant advances, not trivial tweaks.

• Statutory wording (§65): “…would not have been obvious to a person having ordinary skill in the art (PHOSITA/FOSITA).”

4.2.1. Who is FOSITA?

• Hypothetical skilled technician, aware of all relevant prior art, competent but not inventive.

• Possesses ordinary academic training (e.g., B.Sc.), standard textbooks, routine experimental skill.

4.2.2. Major Doctrinal Tests

1. Windsurfing / Pozzoli 4-step test (UK & Commonwealth)

   1. Identify the inventive concept.

   2. Assume the mantle of PHOSITA.

   3. Identify differences between prior art & claimed invention.

   4. Ask if differences would be obvious to PHOSITA.

   • Windsurfing Int’l v. Tabur Marine (1974); refined in Pozzoli (2007).

2. Problem–Solution Approach (PSA) – European Patent Office (EPO)

   1. Select closest prior art.

   2. Formulate objective technical problem.

   3. Decide if proposed solution would be obvious for PHOSITA.

   • Case: COMVIK ([[T 641/00]]).

3. KSR v. Teleflex Test (US, 2007)

   • Abandoned rigid TSM (Teaching-Suggestion-Motivation) rule.

   • Factors: predictable combination, reasonable expectation of success, “common sense”.

4.2.3. Mosaicing / Combined Referencing

• Permitted only for obviousness, not novelty.

• Examiner may combine multiple documents if PHOSITA would have a motivation/reasonable expectation to do so (per KSR factor 2).

• Sri Lankan/UK law follows same principle via Windsurfing step 4.

4.3. Industrial Applicability (Section $66$)

• Very broad: invention must be capable of being made or used in any kind of industry, including non-profit sectors.

• Fails only if use would be impossible, illegal, or purely speculative (e.g., perpetual-motion machine requiring unobtainable element).

5. International Patent Filing Mechanisms

Patents are territorial – protection in country A ≠ protection in country B.
Two main multilateral routes help coordinate filings:

5.1. Paris Convention (1883) – Right of Priority

• File first application in member state $X$.

• Within $12$ months, file in other member states claiming priority of first filing.

• Later filings are back-dated to initial filing date → intervening disclosures during the 12-month window are irrelevant.

Example: File in Sri Lanka on $01/01/2025$ → file in India, US, UK by $01/01/2026$; all share $01/01/2025$ priority.

5.2. Patent Cooperation Treaty (PCT) (1970)

• Single international application designating $150+$ countries.

• Two phases:

  1. International Phase (≈ $30$–$31$ months from priority)

  • Search by International Searching Authority ➔ International Search Report (ISR) + Written Opinion.

  • Optional International Preliminary Examination.

  1. National/Regional Phase – enter each chosen jurisdiction, pay local fees, undergo local examination.

• Advantages: defers cost, provides early patentability insight, one formal filing.

6. Model-Question Blueprint (Self-Cooling Roof Tile)

Step-by-step answer map (apply to any exam fact pattern):

1. Problem–Solution (62(1))

   • Problem: Excess heat in tropical roofs.

   • Solution: Multi-layer self-cooling roof tile (PCM core + nano-reflective layer + vent channels).

2. Product/Process (62(2))

   • Tangible composite tile ⇒ product invention.

3. Excluded Matter (62(3))

   • Not a discovery, live organism, business method, etc. ⇒ passes.

4. Novelty (63 / 64)

   • Analyse each prior-art reference individually (comparison-in-isolation).

   • German PCM wall panel (2008) ≠ roof tile; Indian nano coating lacks PCM; Japanese vent tile lacks PCM & nano layer.

   • Therefore none disclose all three elements together ⇒ novelty likely intact (alternative argument: lack of novelty if examiner views roof vent design as sufficient).

5. Inventive Step (65) – Windsurfing 4-step

   1. Inventive concept = combining PCM, nanotech reflection & venting into one roof tile.

   2. PHOSITA = civil/thermal engineer familiar with PCM walls, nano roof paints, ventilated tiles.

   3. Differences = integration & synergy of three technologies.

   4. Non-obvious?

      • For +ve argument: prior art teaches elements separately, no suggestion to combine; synergy unexpected ⇒ inventive.

      • For −ve argument: mosaicing could render combination obvious; examiner may find motivation to integrate heat-reduction techniques.

6. Industrial Applicability (66) – mass-manufacturable roofing; criterion met.

7. Conclusion – State probability (grant / refusal) & mention possible claim-limitation strategy (e.g., claim only composite structure, drop generic vent concept).

7. Rights of a Patent Owner

• Exclusive rights (negative rights) to prevent others from:

  • Making, using, offering for sale, selling, or importing patented product/process (Sections $70$–$74$ – not covered in transcript but examinee must cite).

• Duration in Sri Lanka: $20$ years from filing date (§$83(1)$).

• Patent ≠ automatic “freedom to operate” – separate third-party rights or regulation may block practice.

7.1. Limitations & Exceptions (future lectures)

• Government use & compulsory licences (Natco v. Bayer model – Indian precedent).

• Experimental use, Bolar exception, prior user rights, etc.

8. Exam & Study Tips

• Memorise the section numbers $62$–$66$ and $83$—write them in every answer.

• Always follow the structured ladder: problem–solution → product/process → exclusions → novelty → inventive step → utility.

• Quote at least one landmark case for each major concept (e.g., Windsurfing, Chakrabarty, Alice, KSR).

• For international filings, contrast Paris 12-month priority vs. PCT 30-month two-phase system.

• In essay/problem questions, even if you conclude “patent fails”, still analyse all later steps to capture marks.

9. Key Cases & Statutory Provisions Quick Reference

• Windsurfing International v. Tabur Marine – 4-step obviousness test (UK).

• Pozzoli v. BDMO – refinement of Windsurfing.

• Comvik (EPO T 641/00) – PSA foundation.

• KSR v. Teleflex – US obviousness flexibility.

• Diamond v. Chakrabarty – GMO micro-organism patentable.

• Alice Corp. v. CLS Bank – abstract business methods.

• Sri Lanka IP Act: §§$62$–$66$ (eligibility), §$83$ (term).

End of notes.