UNIVERSITY OF LUSAKA

SCHOOL OF LAW
L340 – IP LAW
UNIT 13 – CONDITIONS OF PATENTABILITY
George Mpundu Kanja
 Structure of Presentation
• Introduction
• Novelty
• Inventive Step
• Industrial Application
• Patentable Subject Matter
• Disclosure of Invention
 Introduction

• A patent is an exclusive right granted for the

protection of an invention, which is a
solution to a specific problem in the field of
technology.
 Introduction

• An invention, which is a solution to a technical

problem, may relate to either a product or a
process.
• Section 2 of Patent Act defines invention as any new
and useful art (whether producing a physical effect
or not), process, machine, manufacture or
composition of matter which is not obvious, or any
new and useful improvement which is not obvious,
capable of being used or applied in trade or
industry.
 Introduction

• For an invention to be eligible for patent

protection, it must satisfy the following
conditions:
 It must be novel (new);
 It must involve an inventive step (be non-
obvious);
 It must be capable of industrial application; and
 It must fall within patentable subject matter.
 Novelty

• An invention is new or ‘novelty exists’ if there is a

difference between the invention and the current
knowledge or the ‘prior art’.
• The claimed invention must be not be anticipated by
the prior art at the effective date of the patent
application to prevent novelty from being destroyed.
• ‘Prior art’ is all the knowledge that existed before the
relevant filing or effective date of a patent application,
whether it existed by way of written or oral disclosure.
 Novelty

• Section 2 of the Patents Act defines the

‘invention’ to be new if on or before the effective
date of patent application the invention was not:
• (a) known or used anywhere…;
• (b) worked anywhere other than by way of
reasonable technical trial or experiment by the
applicant or any person or persons from or
through whom such applicant has derived his
right or title;
 Novelty

• (c) described in a patent for public inspection… and

bearing a date of less than fifty years prior to such
effective date;
• (d) described in writing in any publication of which there
was a copy anywhere… at the effective date of the
application, or in a publication printed and published…
less than fifty years prior to such date Section 2 Patents
Act
• (e) claimed in any complete specification for a patent
lodged though not available to public inspection at the
effective date of the application…
 Novelty

• Availability to the Public

• An invention will not qualify for a patent if it
relates to an invention that is anticipated, that is,
already published or made available to the public.
• Thus novelty of the invention will be destroyed if
the information about the invention or the
invention has been published, performed or
exhibited in public, before the effective or priority
date.
 Novelty

• Similarly, an earlier patent application that

discloses the invention, even if it was actually
published at the effective date of the later
application, destroys the novelty of the later
patent application for the same invention,
whether or not the applicant knew about the
earlier publication or previous patent.
 Novelty

• The requirement of novelty exists to ensure

that the public interest is not prejudiced by
the grant of the patent over something that
is already in the public domain.
• This is in line with the purpose of the patent
system, which exists to encourage fresh
innovation.
 Novelty

• Disclosure
• If there is any disclosure of the invention
before the effective or priority date this may
be fatal to the patent application as novelty
will be destroyed.
 Novelty

• Exceptions to Destruction of Novelty

• The Patents Act provides a number of
exceptions to allow the novelty requirement
of a patent not to be destroyed either
because the patent has been made available
to the public or has been disclosed or used.
• These exceptions are available:
 Novelty

• (a) where a patent is worked or used by way of

reasonable technical trial or experiment by the
applicant or any person or persons from or through
whom such applicant has derived his right or title;
• (b) applications for patents relating to the Paris
Convention for the protection of industrial property
if lodged in Zambia within 12 months after the
effective or priority date of the first application for
protection in the first convention country in which
the application was made;
 Novelty

• (c) where an invention is communicated through

any agreement or arrangement made by or on
behalf of the government of Zambia with the
government of any country for the supply or
mutual exchange of information or articles relating
to the invention, and as a result of such agreement
or arrangement the invention is published, made,
used, exercised or vended, or an application for a
patent has been granted on such an application
 Novelty

• (d) where the invention applied for was

published, used or known prior to the
effective or priority date of the application
and the applicant proves that the publication
or use was made without his knowledge or
consent, and that the matter published or
used was derived or obtained from him.
 Inventive Step

• Not everything that is new is patentable. The

next requirement that the invention must
satisfy in order for it to qualify for
patentability is that it must involve an
inventive step.
• This does not require an invention to be
revolutionary but simply that the subject
matter of the patent is not an obvious or
routine development.
 Inventive Step

• An invention involves an inventive step if it would

not have been obvious to the person skilled in the
art at the priority or effective date of the
application for the patent, in view of the common
knowledge of the person skilled in the art.
• The key issues therefore, are whether the person
skilled in the art would find the results achieved
‘surprising’ or unexpected or mere routine and
what is considered to be ‘common general
knowledge’.
 Industrial Application

• The third key requirement of the Patents Act is

that in order to be eligible for a patent, an
invention must be capable of industrial
application.
• Under Section 2 of the Act the invention
whether it relates to a product or process
must be capable of being used or applied in
trade or industry.
 Industrial Application

• An invention must therefore, be of a kind that can

be applied for practical purposes, not be purely
theoretical.
• If the invention is intended to be a product or part of
a product, it should be possible to make that
product.
• If the invention on the other hand, is intended to be
a process or part of the process, it should be
possible to carry that process out or use it in
practice.
 Patentable Subject Matter

• An invention, though it satisfies the requirements of

patentability namely novelty, inventive step and
industrial application, will not qualify for
patentability if it does not fall within the scope of
patentable subject matter.
• Patentable subject matter is established by a patent
law, and is usually defined in terms of the
exceptions to patentability, the general view being
that patent protection shall be available for
inventions in all fields of technology.
 Patentable Subject Matter

• Examples of fields of technology that a patent law

may exclude from the scope of patentable subject
matter include:
• (a) discoveries of materials or substance already
existing in nature;
• (b) scientific theories or mathematical methods;
• (c) plant or animal varieties, or essentially biological
processes for the production of such plant or animal
varieties, other than microbiological processes;
 Patentable Subject Matter

• (d) schemes, rules or methods of doing

business, performing purely mental acts or
playing games;
• (e) methods for treatment of the human or
animal body by surgery or therapy, as well as
diagnostic methods;
• (f) mere presentations of information; and
• (g) computer software in a certain limited
context.
 Patentable Subject Matter

• The Patents Act also provides circumstances under

which a patent application can be refused.
• These circumstances are:
• (i) Where a patent application is frivolous on the
ground that it claims as an invention anything
obviously contrary to well-established natural laws;
• (ii) Where the use of the invention in respect of
which the application is made would be contrary to
law or morality;
 Patentable Subject Matter

• (iii) Where claims as an invention a

substance capable of being used as food or
medicine which is a mixture of known
ingredients possessing only the aggregate of
the known properties of the ingredients, or
that it claims as an invention a process
producing such a substance by mere
admixture.
 Patentable Subject Matter

• The issue of whether an invention falls within the scope of

patentable subject matter has been a subject of judicial
interpretation in many jurisdictions.
• In Diamond, Commissioner of Patents and Trademarks v
Chakrabarty, the Supreme Court of the United States
addressed the question of whether an artificially created
life form, in this case a new form of bacterium obtained
by genetic alteration, is patentable subject matter.
• The court observed a boundary line between the discovery
of a naturally occurring life form which is not patentable,
and the creation of a new life form.
 Patentable Subject Matter

• Chakrabarty had developed a new microorganism, a

pseudomonas bacterium, which degraded hydrocarbons,
and so was potentially useful in clearing up oil spills. The
U.S Patent office had allowed patent claims to the method
of producing the bacterium and an inoculum, but
objected to a claim of ‘a bacterium from the genus
pseudomonas containing therein at least two stable
energy-generating plasmids, each of the said plasmids
providing a separate hydrocarbon degradative pathway’. It
rejected this claim on the basis that “as living things,
microbes are not patentable subject matter.”
 Patentable Subject Matter

• The Supreme Court overruled this decision and

allowed this claim. The court had to consider
whether the fact that a bacterium was a living thing
was sufficient to exclude it from patent protection.
• It reviewed the purpose of the patent system,
including the statement by legislators accompanying
the 1952 Patent Act that Congress intended
statutory subject matter to “include anything under
the sun that is made by man”.
 Patentable Subject Matter

• The court acknowledged that, “the laws of nature,

physical phenomena, and abstract ideas have been
held not patentable….Thus, a new mineral
discovered in the earth or a new plant found in the
wild is not patentable matter. Likewise, Einstein
could not patent his celebrated law that E= mc²;
nor could Newton have patented the law of
gravity. Such discoveries are manifestations of
nature, free to all men and reserved exclusively to
none.”
 Disclosure of Invention
• Disclosure of inventions is at the centre of the
patent system.
• The patent right that is granted to an inventor is in
return for the inventor to disclose the details of the
invention so that it can be freely used by the public
at the end of the term of the patent, and that
researchers can use the invention in their research,
and that the invention is available for educational
purposes, even while the patent right is still in
force.
 Disclosure of Invention
• The details of the invention are called the
‘enabling disclosure’ and are included in the
patent specification lodged with the patent office.
• The requirement of full description of an
invention is a mandatory obligation under the
Patents Act.
• The Patent Act provides that a provisional
specification shall fairly describe the invention.
• As regards a complete specification, it shall:
 Disclosure of Invention
• (a) fully describe the invention and manner in
which it is to be performed;
• (b) disclose the best method of performing the
invention known to the applicant at the time
when the specification is lodged with the
Patent Office; and
• (c) end with a claim or claims defining the
subject matter for which the protection is
claimed.
 Disclosure of Invention
• The need for disclosure of the invention was
considered by the House of Lords in the case
of Biogen Incorporation v Medeva PLC.
 Disclosure of Invention
• The House of Lords, while suggesting it
considered Murray’s process to involve a
sufficient inventive step, decided the case on
other grounds.
• The House of Lords invoked the concept of
the enabling disclosure, and held that Biogen
did not, in its patent application in fact
disclose the more efficient sequencing
method of producing the antigen.
 Disclosure of Invention
• Thus, Biogen’s claims for all recombinant
methods of producing the antigen are
overboard.
• Allowing claims of this scope, without
requiring sufficient enabling disclosure would
be an impediment to scientific development.
THANK YOU