Patent Rules in the UK - Case Study Example

Justification for stringency in the requirements of Patentability of Inventions. Patents are important in protecting the innovations of one’s business. Patents are also intangible assets of one’s business and can be sold or licensed in return for monetary income. Patents can also be beneficial in marketing one’s products and services, as customers like to follow innovative, forward-looking companies. Filing an application for a patent gives rise to a public record of the existence of one’s invention and one’s rights therein this, will deter others from working on similar ideas. Products and associated literature can be marked with the details of one’s patent application, which acts as a further deterrent to third parties considering working on similar ideas. (Brettell, Barker). A Patent is defined as a legal document granted by the government giving an inventor the exclusive right to make, use and sell an invention for a specified number of years. The endeavour of the patent system is to encourage inventors to advance the state of technology by awarding them special rights to benefit from their inventions. Patent Law has also been extended to cover Computer programs and various living organisms, such as specialized mice used in cancer research. A recent trend in the field of Patent Law is the extension of patentability to new ways of doing business for example; the method of conducting an auction on the Internet is patented. With respect to books, movies, and works of art the law of copyright is applicable. (Schechter, Roger E).1 The patent law has extremely stringent requirements. The three requirements for any invention or process to be patentable are: First, it must be novel in the sense that the invention did not have prior existence. This will be determined by the patent examiners who will make all efforts to determine the nature of the invention and if they find that the proposed invention had already been described in previous patents or written about in scientific magazines, then they will declare that the invention has been “anticipated.” Whenever it is concluded that such an eventuality has transpired then in such cases, the patent will be denied. The following case law illustrates this point: Case One: PROCEEDINGS OF THE PATENT OFFICE U.K. Application under section 72 for revocation of patent number GB 2371653 HEARING OFFICER D J Barford. BL O/045/05 1 March 2005 BETWEEN M-Systems Flash Disk Pioneers Ltd Claimant And Trek Technology (Singapore) Pte Ltd Defendant. The patent in suit number GB 2371653 (“the patent”) was granted on 6 August 2003 to Trek Technology (Singapore) Pte Ltd (“Trek”) under the title “A portable data storage device”. The facts in this case are that, the claimant’s grounds as set out in its statement filed on15 December 2003 are that the invention lacks novelty or inventive step, that the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art, and that the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed. The defendant denied the allegations of the claimant. Proceedings were conducted which, were favourable to the claimant. The above case illustrates the importance of novelty without which, a patent though granted will be revoked. The patent law is very strict and stringent in this regard. Secondly, the invention must not be obvious, which implies that the invention must be a significant improvement over the existing technology. Rudimentary changes to previously known devices do not qualify an invention for a patentable invention. The relevant case law in this regard is as follows: Case One: PROCEEDINGS OF THE PATENT OFFICE U.K. BL O/255/05 14th September 2005 APPLICANT Oracle Corporation ISSUE Whether patent application GB 2383152 A relates to a patentable invention. HEARING OFFICER Stephen Probert. In this case before the Patent Office , Oracle Corporation had applied for a patent for a Data Storage System. The application was rejected as detailed in the sequel: “I have decided that the advance in the art that is said in this application to be new and not obvious (and susceptible of industrial application) does not satisfy these criteria under the description of an invention.” Case Two: PROCEEDINGS OF THE PATENT OFFICE U.K. IN THE MATTER OF an application under section 72 by Eastman Kodak Company for the revocation of Patent No 2314719 in the name of American Photo Booths, Inc. D J BARFORD .Deputy Director, acting for the Comptroller 4th April 2002. Between Claimant Eastman Kodak Company And Defendant American Photo Booths, Inc. The patent relates to a photo kiosk of the type in which a customer poses for photographs which, are automatically taken, processed and delivered. Eastman Kodak Company (the claimant) applied for revocation of the patent under section 72(a) and (c), namely that: (1) the patent does not relate to a patentable invention in that the invention claimed is not capable of industrial application; and (2) the specification does not disclose the invention clearly enough for it to be performed by a person skilled in the art. The defendant insisted that this was a novel invention and capable of industrial application. The Comptroller did not countenance this argument and revoked the patent. These decisions clearly show that unless the inventive step is new and non – obvious a patent will not be granted. The stringency of the patent act is clearly illustrated here and no exceptions are permitted. Lastly, the proposed invention must have utility value and at the same time, the invention should not be designed for usage that will be solely for illegal or immoral purpose in accordance with commonly used legal parlance. Case: IN THE MATTER OF Application No GB 9801077.0 in the name of James Shanley Patent application number GB 9801077.0, was filed on 16 January 1998 in the name of James Shanley. The application relates to demountable partitions for buildings. The ruling given by Mr. DAVID BARFORD, Deputy Director, acting for the Comptroller THE PATENT OFFICE, is the following: I have found that the invention as claimed in claims 1, 2 and 3 is an aesthetic creation and is not in consequence an invention for the purposes of the Act. However, I note that there is considerable technical detail in the specification on which to draw, and the applicant is therefore offered the opportunity to amend the claims in order to introduce a technical contribution. If no such amendment is made, I shall refuse the application. Once again the stringency aspect of the patent law comes to the forefront. In respect of the renewal of patents , the patent act is very rigid and stringent and no delay condonation in usually permitted , the case given below illustrates this aspect of the patent act: Case One: PATENT ACT 1977. In the matter of applications under section 28 for restoration of patents EP0597558, EP0594268 and EP0429660 by Omnicell.com. Assistant Director, acting for the Comptroller M C Wright. Facts of the Case. Renewal fees in respect of the eleventh year for each of the patents fell Due on the 25th of May 2000. The fees were not paid on that date nor were they paid during the six months allowed under section 25(4) upon payment of the prescribed additional fees. The Patent Office ruled that the proprietor did not take adequate precautions in payment of fees. Hence, the application for restoration was rejected. The following provisions ensure the stringency of patent law. CONSOLIDATED PATENT RULES: Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information, which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct2. Vis – a – Vis the software industry, a heated debate as to patentability is taking place. Many discoveries are being granted patents outside the U.K . The software discoveries of the U.K could be patented in other countries leading to huge penalties and stoppage of the use of software developed in the U.K. The European Patent Office (EPO) and all EPC national patent offices (including the UK Patent Office) have a duty, when examining software-related inventions, to establish whether the software in question brings about a new technical effect that goes beyond the normal physical interaction between the program and the hardware represented by the computer itself — either through the introduction of a technical improvement to the running of the computer itself, or to an attached device. In the presence of a clear technical effect then — so long as it also meets the other requirements for patentability of being new, non-obvious, and susceptible to industrial application — the invention is patentable. (Poynder, Richard. Patenting Software). A patent gives one the right to stop others from using one’s invention. Alternatively, one can choose to let others use it under agreed terms. A patent also brings the right to take legal action against others who might be infringing the invention and to claim damages. The mere existence of a patent may be enough to deter a potential infringer. The Patent Office, however, does not take sides in any dispute. A patent empowers the owner (the "proprietor") of an invention to take legal action against others to prevent the unlicensed manufacture, use, importation or sale of the patented invention. This right can be used to give the proprietor sufficient time to develop a business based on the invention, or another person or company may be allowed to utilize the invention and pay royalties under a licensing agreement.3 (The U.K Patents Office, Patents.) A patent is a type of industrial or intellectual property. The owner of the patent can either sell this intellectual property or permit others to exploit the patent that he holds by issuing licenses. A patent being a creation of statute is territorial in extent. A patent is not granted for an idea or principle as such, but on the other hand for producing some article or for the process of making some article with the help or application of this idea or principle. The object of granting a patent is to encourage and develop new technology to benefit industry. An inventor will usually disclose a new invention only if he is rewarded, otherwise he will work it in secret. In consideration of the grant of monopoly for a limited period, the inventor discloses the details of new invention and the method of its working so that after the expiry of the monopoly period, twenty years in the United Kingdom and the United States of America, others can use the invention or improve upon it. Thus, the theory upon which the patent system is based is that the opportunity of acquiring exclusive rights in an invention stimulates technical progress in four ways: First, it encourages research and invention. Secondly, it induces an inventor to disclose his discoveries instead of keeping them as a trade account. Thirdly, it offers a reward for the expenses of developing inventions from the drawing board stage to the stage at which they are economically viable. Fourthly, it provides an inducement to invest capital in new productions, which might not appear profitable at the very outset. The benefits to the public are that they gain advance knowledge of technological developments, which they will eventually be able to use freely once the patent ceases. Society in general benefits from constant improvement in products and the manufacture of better-made products. Another perspective of a patent is as a bargain between the State and the inventor. The State offers a short-term monopoly in return for a full description of the invention. This exchange of a monopoly for a full description underpins the patent system and leads to published patent documents being the most comprehensive source of technical information in the world, in practically every area of technology. Adoption of the same kind of patent protection for inventions in all most all countries is an indication of the universal recognition of the value of the patent system. A worldwide exchange of technical information has been made possible by the publication of such patent specifications. In the absence of the existence of such a patenting system, which compels the inventors to disclose their inventions without fear of the benefit of their labour being lost to their competitors, much of the technological inventions and innovations would have remained secret.4 (The U.K Patents Office, Patents.) Not every discovery is patentable. Laws of nature and scientific principles due not fall under the purview of patent law. As such, laws of nature and scientific principles cannot be patented. Isaac Newton’s Universal Law of Gravitation5, Einstein’s Special Theory of Relativity, Einstein’s General Theory of Relativity, discovery of Partial Differentiation by Leonard Euler, The Heisenberg’s Uncertainty Principle or the formulation of Relativistic Quantum Mechanics by Paul Adrien Maurice Dirac6, are all cogent examples of discoveries, which do not fall under the purview of the patent law. A patent by its very nature is endowed with a public interest. Whenever The Patent Office is aware of and takes into consideration all relevant information and material at the time of examining an application then the public interest is best served. Each and every individual connected to the filing and prosecution of a patent application is duty bound and has to act in good faith with the Office. This encompasses a duty to disclose to the Office all relevant information known to that individual to be material to the patentability of the application. The European Commission has taken appropriate steps to issue a proposal for a new directive on software patents, which will rationalize and unify the laws of its member states. This proposal will bring in legislation that would make patentability more stringent than the patent laws obtaining in the U.S.A and Japan. From the foregoing, we conclude that a patent serves to give its owner the right to initiate legal action against the unlicensed manufacture, use, importation or sale of the patented invention. The benefit to the public is that they gain advance knowledge of technological developments, which will eventually be available freely once the patent ceases. Society in general benefits from constantly improving and better-made products. The State offers a short-term monopoly or bargain in return for a full description of the invention, which is published by the Patent Office. Since a lot of money is involved in the patenting paradigm it is evident that stringent restrictions and legislation are essential to ensure that the genuine and original inventor or discoverer is not deprived of the remuneration and recognition due to him, otherwise it will become a disincentive to research workers. The European Commission’s recommendation to harmonize the patent law worldwide will go a long way to ensure that uniformity is prevalent in the grant and protection of patents. Industrial and technological innovations have reached their present state of excellence due to this provision in the patent law. Immoral, harmful, vicious, salacious, etc, types of discoveries and inventions should necessarily be deprived of patentability. Such inventions and discoveries harm the people and corrupt the moral fabric of society. Human society has reached the present state of eminence solely due to the existence of values and laws, which promote equality of opportunity, and the patent law is a legislation that aids in this process. 3. Footnotes. 1. Please see the Roger E. Schechter. “Patent.” Microsoft Encarta Reference Library 2004. article for a fairly good introduction to the topic of Patents, this article gives a brief description of the history, US Patent Law and International Patent Law. 2. This reference gives all the required rules and regulations for patents in the United Kingdom – CONSOLIDATED PATENT RULES, Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights, USPTO. 25th November 2005. 3. This is the official web page of the U K Patents Office , the benefits of patenting are detailed here in addition to other useful information, this article’s details are - Patents. 30th September 2004. The U.K Patent Office. http://www.patent.gov.uk/patent/benefits/index. 4. op cit in footnote 2. 5. A profound and engrossing work on Classical Mechanics Gravitation Theory is contained Philosophiae Naturalis Principia Mathematica (Mathematical Principles of Natural philosophy, 1687), all the same gravitation theory cannot be patented. 6. Dirac combined Quantum Mechanics and the Special Theory of Relativity to formulate Relativistic Quantum Mechanics, for the first time the concept of bracket vectors , discovered by Dirac , were used in this exposition - The Principles of Quantum Mechanics (1930; 3rd ed. 1947). This is a path – breaking discovery in modern physics. Works Cited. 1. Roger E. Schechter. “Patent.” Microsoft Encarta Reference Library 2004. 2. Patents. 30th September 2004. The U.K Patent Office. http://www.patent.gov.uk/patent/benefits/index. 3 . CONSOLIDATED PATENT RULES, Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights, USPTO. 25th November 2005. 4. The Patent Office. BL O/255/05. 14th September 2005. Oracle Corporation, Applicant. 5. The Patent Office. U K Patent Application Nos. EP0597558, EP0594268 and EP0429660. 8thAugust 2002. Omnicell.com. 6. Barker, Brettell. “Guide to Intellectual Property Rights.” 7. Application under section 72 for revocation of patent number GB 2371653, BL O/045/05 1 March 2005. 8. PROCEEDINGS OF THE PATENT OFFICE U.K. application under section 72 for the revocation of Patent No 2314719 4th April 2002. Read More