Intellectual Property Law 3340/3341

Seminar 3 – Patent Law

Introduction:

This seminar provides an introduction to patent law. It encourages you to apply your legal
knowledge to advise on the requirements an invention must meet in order to be capable of
patent protection. We will also consider patent law in its wider global-political context; what
effect might patent monopolies have on the affordability of essential medicines, particularly
in developing countries?

Essential Reading:

 Aplin & Davis, Intellectual Property Law (3rd ed, 2016) chapters 11-13.
 Mobil/Friction reducing additive v (Opposition by Chevron) [1990] E.P.O.R. 73
 V K Unni, ‘Compulsory Licensing of Pharmaceutical Patents in India: Whether Natco
Decision will Meet the Global Benchmarks’ [2015] E.I.P.R. 37(5), 296-304.
 Al Jazeera Inside Story, ‘ I n d i a : - H u m a n L i v e s v P h a r m a P r o f i t s ’ , Al
Jazeera (16/03/2012) accessible at https://www.youtube.com/watch?v=F1U-
1bjcYE8

Recommended Reading (optional):

 O Owoeye, ‘International Patents Law & Public Health: Revisiting the TRIPS
Compulsory Licensing Regime & the Doha Paragraph 6 System [2015] E.I.P.R.
37(12), 782-795.
 Emmanuel Kolawole Oke, ‘Defining the Right to Health Responsibilities of Patent-
Owning Pharmaceutical Companies’ [2019] Intellectual Property Quarterly, 433-60.
 Pozzoli SPA v BDMO SA [2007] FSR 37

Questions

Question 1

Advise on the patentability of the following inventions:

a) A system for formulating a mathematical equation which allows the future value of a
commodity to be estimated to within 5% accuracy. This will allow commodity traders to
invest with less risk.

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Is it a mathematical clam
- Assesment possible invention there is too claim
- A system itself to formualte the mathematical equation itself
- The actual contribution – the system and mathematical equatio
The system allowed investos to estimate the commodity
Fall under the exclusion subject matter
PA 19777 – technical effect as to the mathematical equation

The system itself – does it have the chance to be patent – it cannot be patented

Can the system survive being not exclude – it could not be protected as patent as it is a
business – pass this exclusion

- Follow the first stage of the asssessmet. In order to answr question

- The invention itself is a subject matter of assessment
- Assess what is claim in the invention – define the claim here and it is not laid down u
contstrue the claim
- Each invent must contribute to something
- Whether this invention is excluded from patentabiliy even if they satisfied all other
aspects they are excluded
- Then if it is excluded subject matter then no more prcoeed
- It must be technicial contribituon
- This invention make u happy then it is not technical contributon
- After invention of statisfy
- Invention there is new steps

b) A new way of immunising pet cats against a potentially fatal form of ‘feline dementia’.

- The way of immusnsign cats

- One is immusing
- One is vaccine
- A method of treating feline dementia
- S4A and C – it states clearly in s4a is excluded from subject mehod
The invention is trying a new way of immunising the cats – it is not a method of treatment it
is a subsjtance used could be protected

- The method of treatment can be protected

- Method of treatmet in order to see how you construe the claim
- It will not be suceed of third stage
Vaccine – can passed through the fouth stage – used specific substante it is a technical
soluton

PA 1977 – both of them have similar language

c) A new substance that shrinks cancer cells. It is a protein, ‘Alto-X’, that is created by
chemically and centrifugally-treating two-day-old human embryos (which are destroyed
immediately following the process).

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 the claim is the substance, the contribution
 Question 1- Invention C 1) The claim: 'Alto-X'- a novel protein substance which able
to shrink cancer cells. 2)Contribution: a method of scientific treatment 3) Exclusion:
Contrary to public policy and morality- S1(3) of PA 1977; Use of human embryos for
industrial or commercial purpose- S4A of PA 1977; Sch A2, Para 3(d) of PA 1977;
Art 6, Para 2(c) of EC Biotechnology Directive

Patent protection is absolute novel – Is it a general one or a specific one

Thecontribution is shrink cancer cell

For them to succeed – if it beneficial to human embroys then they could patent it .

Case – depends on current scientific knowledge

d) The same substance as (c), but made using rabbit embryos.

- Does It make a difference in the third stage or not
- The patent act sch a (2)- sub (e)
- Wthout any substnatial benefit to men
- It could maketheanirmals contrary to puvlic polict

The benefit exceed the animanla

Assess the patentability of each of the above invention by following the approach
restated and followed in Aerotel Ltd v Telco Holdings Ltd, [2007]

“1. Properly construe the claim

2. Identify the actual contribution.
3. Asking whether it falls solely within the excluded subject matter [(Section 1 (2) and
only as such]
4. whether the actual or alleged contribution is technical in nature.”

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 What is the claim?

Identify the actual contribution

Whether it falls solely within the

excluded subject matters?

Whether the actual or alleged

contribution is technical in
nature

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Question 2

Cleopatra is a junior doctor employed at the Radcliff Infirmary Hospital. The hospital is a
teaching hospital and so many staff also work in the School of Medicine in the nearby Oxford
Cherwell University, a highly regarded research institution. Since she joined the Radcliff
Infirmary Hospital, Cleopatra has been looking into problems encountered in open heart
surgery. Tests have shown that there is a quicker recovery time and fewer complications if
the patient’s blood can be kept cool during the operation. Modern heart-lung machines chill
the patient’s blood but there is the risk of the blood starting to clot below 150C. Cleopatra’s
experiments involved adding various substances to blood to see if they would assist in
reducing temperatures whilst at the same time preventing clotting.

In 2009 Cleopatra’s mother was prescribed Esidrix which is a known substance used, amongst
other things, in the treatment to help improve blood flow through the arteries. After checking
her mother’s body temperature for two weeks, Cleopatra noticed that it was constantly lower
than usual. Cleopatra thought that Esidrix might have certain cooling properties and so tried
adding some milligrams of Esidrix to each litre of blood processed by the heart-lung machine.
She discovered that by adding 20 milligrams of Esidrix to each litre of blood processed by the
heart-lung machine, the machine used less energy in keeping the blood cool. Cleopatra
concluded that Esidrix possessed certain cooling properties. In addition, the risk of clots
forming in patients’ blood was much reduced.

The following items of prior art have now come to light:

(i) A patent granted in 2002 to PharmaChems plc for a pharmaceutical preparation,

the key ingredient of which is Esidrix. This product is widely prescribed as a
painkiller for arthritis.
If it is a matter of treatmen then it is excluded
Specific substance ,specific machine to achieve a specific thing
It still could still satisfy a it is not a matter of treatment – satisfies technical contribution –
technical issue and open heart surgery by keeping the blood cool

The invention is novelty before the state of the art everthing filed prior to the art – the use of
Esdidrix -prescirbed as paracetamol – do you think it is a state of art – not the same use – not
enough to destoyed novelty of the prior art – prior rt everyting all over the world – cooling
agent of Ecidrix and specific claim -she cannot claim ecidrix for a cooling agent – cooling
properties is already known cannot claim – specific use of 20 mg – is inventie the field –
person skill in theart in the meidicen field – researcher, doc equip with genral knowledge of
the field – general knowledge – the specific use of 20mg – what does it non obviousness to
the state of the art – is the specific use of quanity of eciferixi used – degree of iention in the
sense
Quite specifc it cannot be argue to be obvious – make it obvious to the skill of the art – the
specici use of 20mg it cannot claim to be obvious – to the person of skll of the art – there is
degree of inention – Can it be used – she able to acquire patent

(ii) A report in the Daily News, a Russian newspaper, in December 1995 to the effect
that the (then) problem of mild winters in Siberia had been overcome by the
practice of combining

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 Esidrix with distilled water and then mechanically spraying the resultant mixture
over existing snow to stop it melting.

(iii) An article in the January 1998 issue of Die Gesundheit, a German scientific journal
published in German only, detailing possible uses for Esidrix. One suggestion was to use it
as an additive to ice cream, the effect being to enable the product to remain frozen over a
longer period of time whilst being transported from supermarket to home freezer.

Is the invention patentable?

Begin examining the claimed invention following the same process we followed in
question 1.

The first part of the assessment of patentability is specifying the claim and whether it is a
patentable subject matter. The second part is assessing whether the invention claimed
satisfies the requirements for patentability under Section 1 PA 1977.

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 Capable of
Novelty Inventive Industrial Patent
(Sec.2) Step (Sec.3) Applciation Granted
(Sec.4)

 Novelty Sec.2 PA 1977

o In relation to the state of the art
 Inventive Step Sec.3 PA 1977
o Non-obvious to the person skilled in the art.
1. Identify the person skilled in the art and the relevant common
knowledge.
2. Identify the inventive concept in the claim
3. identify differences between the state of the art and the inventive
concept of the claim
4. Do the differences constitute obvious steps to the person skilled in
the art or do they require a degree of invention?
 Capable of Industrial Application Sec.4 PA 1977

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Question 3

‘Via the Article 31bis compulsory licensing flexibilities, the TRIPS regime provides a fair
and appropriate balance between protecting the property rights of pharmaceutical companies
and facilitating access to much-needed medicines in developing countries.’

With reference to the Unni, Owoeye and Al Jazeera sources above, to what extent do you
think this is an accurate account of international patent law and why?
Examine
 TRIPS Agreements Article 30
 TRIPS Agreement Article 31
 TRIPS Agreement Artice 31bis

ART 31 AGRMENT IMPLEMENTED I 2017 – new amendmet remedy some deficinen in

art 31 – irt is aporpery – access to medicine would be expensive – do whatever they want
with it -pbluc interest of acquiring it – people accessing it

Allow least evleoping countries to activate a compulsory license scheme to grant the
maufactuere to manufacture of the medicine
6% of the royalty is to be paid
Art 31 allowed u to do that domestically – they donthave the resources – u are not able to
take advantange
By adding art 31 bis = shall not apply to extent to the pharmaceutical protect to te important
member – they can ask another company to manufacture then there is two compulsory licence
One to the importing and exporting countries –
It allow importing countries to least developed nations , that countries could use it to
manfucature medicine to the important member
This article was praised as a good step – take advantage of art 31 not to puruse argrement
Speific disease for HIv is they legally pursue to acquiring but they are being warned to be
exposed to unfair trade terms
Trump was trying to acquire license