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Inventive step in patents: a European perspective

Published on August 29, 2019   41 min
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0:00
Hello, my name is Dr. Jonathan Atkinson from HGF limited in Leads and I am a European patent attorney specializing in the field of pharmaceuticals. I have a degree and a doctorate in chemistry from Oxford University and my doctoral thesis concerned the synthesis of chiral derivatives of morphine-type alkaloids in a stereo selective manner. In addition to being a UK and European patent attorney, I'm also a fellow of the Royal Society of Chemistry. Today I'm going to talk about the concept of inventive step in the field of patents.
0:32
Before I delve into the concept of inventive step, I'm going to provide a little introduction to the background regarding the nature of the patent system itself. A patent is normally granted for a maximum of 20 years apart from certain exceptions in the pharmaceutical industry which allow for a longer patent term. This is to compensate for regulatory delays. All granted patents need to be renewed annually by payment of renewal fees to the national patent offices. Patents are granted for novel and inventive, i.e non-obvious subject matter, and are intended to protect the practical application of the concept or idea which is the subject of the patent. The patent only has effect in the country in which it was granted. The scope of protection afforded by a patent is defined in the language of the claims which can be found at the end of the patent's specification. The patent claims are very important.
1:27
We can now consider what makes an invention patentable. There are five fundamental criteria that must be met if a patent is to be granted. Firstly, the claimed invention must be novel. This means that the invention must not already be in the public domain. This has been the subject of a previous Henry Stewart talk in which the specific criteria for determining novelty are discussed in more detail. Basically, an invention must be different from what is already known in order to be patentable. The second criterion is that the claimed invention must be inventive. In other words, it must not be obvious taking into account what is already known. This is the subject of today's presentation. In short, the difference is relative to what is already known, must not be obvious. The third criterion is that the invention must be sufficient. This means that the invention must be adequately described in the patent's specification so that it can be reproduced by other people. Fourthly, the invention must be capable of industrial application. This criterion is relatively easily met by most commercially important inventions. Finally, the fifth criterion is that the invention must not be one of a number of statutorily excluded categories. This includes subject matters such as discoveries, mental acts, computer programs and certain biological subject matter concerning living organisms. However, in passing I should mention that there are certain exceptional cases when excluded subject matters such as computer programs may be patented if there is some particular technical benefit arising.
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Inventive step in patents: a European perspective

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