Patent sufficiency a UK and European perspective

Published on June 29, 2021   28 min

Other Talks in the Category: Methods

0:00
Hello, my name is Dr. Jonathan Atkinson from HGF Limited in Leeds, and I am a European patent attorney specialising in the field of pharmaceuticals. I have a degree and 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 and a Chartered Scientist. Today I'm going to talk to you about the legal concept of sufficiency in the field of patents.
0:35
Before I delve into the concept of sufficiency, I will provide a little introduction to the background regarding the nature of a patent itself. A patent is normally granted for a maximum of 20 years, apart from in certain exceptional cases in the pharmaceutical industry, which allow for a longer patent term to compensate for regulatory delays. All granted patents need to be renewed annually by payment of renewal fees to the relevant national patent office. Patents are granted for novel and inventive, i.e. non-obvious subject matter, and are intended to protect the practical application of a concept or idea, and not simply the idea itself. Patents are territorial in nature, this means a patent only has effect in the country in which it was granted. Finally, the scope of protection afforded by a patent is defined in the language of the claims which can be found at the end of a patent specification.
1:29
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, which means that the invention must not already be in the public domain. This has been a subject of a previous Henry Stewart Talk in which the specific criteria for determining novelty were discussed in more detail. Basically, an invention must be different in some technical way from what is already known. The second criterion is that the claimed invention must be inventive, i.e. must not be obvious, taking into account what is known already. This has also been the subject of a previous Henry Stewart Talk, in which the specific criteria for determining inventive steps were discussed in more detail. In short, the technical difference from what is already known must not be trivial or obvious to somebody knowledgeable in the field. The third criterion is that the invention must be sufficient, i.e. the invention must be adequately described in the patent specification, so that it can be reproduced by other people. This is the subject of today's presentation. Fourthly, the invention must be capable of industrial application. This criterion is relatively easily met by most commercially-important inventions, because they are being used for some purpose in industry. Finally, the fifth criterion is that the invention must not be one of a number of statutorily-excluded categories, such as discoveries, mental acts, or computer programs, etc. These subject matters are deliberately excluded from patentability by law, as a matter of public policy. However, in passing, I should mention that there are certain exceptional cases, when things like computer programs or other excluded subject matter may be patented, if some technical benefit does arise from them.
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Patent sufficiency a UK and European perspective

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