INTELLECTUAL

PROPERTY LAW II
The law of patents
 OBJECTIVES FOR TODAY
Appreciate the policy rationale for the
law of patents
Have a broad overview of how the patent
system works in Ghana
Identify patentable subject matter, as
well as exclusions
Explain NOVELTY requirement for
patentability
 REQUIREMENTS
FOR PATENTABILITY
 REQUIREMENTS FOR PATENTABILITY
S.1(1)
An invention is Novelty
patentable if it is
new, involves an Non
inventive step obviousness
and is Utility
industrially
applicable.
NOVELTY
 Section 3Patentable Inventions.

(1) An invention is patentable if

it is new, involves an inventive
step and is industrially
applicable.
 QUESTION

WHAT DOES IT MEAN

FOR AN INVENTION
TO BE NEW?
 Meaning of New
S. 3

(2) An invention is new if it is

not anticipated by a prior art.
 Key Expressions
S. 3(2)

(2) An invention is new if it is

not anticipated by a prior art
PRIOR ART
 Meaning of New
S. 3

(2) An invention is new if it is

not anticipated by a prior art.
 Prior Art
S.3(3)
Prior art shall consist of everything
disclosed to the public, anywhere in the
world, by publication in tangible form or
by oral disclosure, by use or in any other
way, prior to the filing or, where
appropriate, the priority date, of the
application claiming the invention.
 FROM THIS DEFINITION WE CAN
DECIPHER 3 THINGS
1. NATURE OF PRIOR ART:
Everything disclosed to the public, anywhere in the world.

2. FORM OF DISCLOSURE
Disclosure can be by:
a) publication in tangible form, or
b) by oral disclosure, or
c) by use, or
d) in any other way.

3 TIME LIMIT
Disclosure must have occurred prior to
a) filing date for application or,
b) where appropriate, the priority date
PRIOR ART -
NATURE
EVERYTHING DISCLOSED ANYWHERE IN THE WORLD
 Prior Art
S.3(3)
Prior art shall consist of everything
disclosed to the public, anywhere in
the world, by publication in tangible
form or by oral disclosure, by use or in
any other way, prior to the filing or,
where appropriate, the priority date, of
the application claiming the invention.
 DISCLOSURE MUST BE UNFETTERED
that is, in other words, had
this information been
communicated to any member
of the public who was free in
law and equity to use it as he
pleased. If so, the
information had been given to a
member of the public and there
was nothing further to serve as
consideration for any patent.
Bowen, LJ
Humpherson v Syer (1887) 4 R.P.C. 407, 413
by Sir Leslie Ward www.npg.org.uk
 DISCLOSURE DOES NOT DEPEND ON DEGREE OF
DISSEMINATION
It seems to us that we are bound by this
authority to reject the contention that
publication depends either upon anything in the
nature of a dedication to the public or upon the
degree of dissemination of the information
alleged to have been published. On the contrary,
if the information, whether in documentary form
or in the form of the invention itself, has been
communicated to a single member of the public
without inhibiting fetter that is enough to
amount to a making available to the public

Bristol Myers Co's Application, [1968] F.S.R. 407

Note: Definition Based on English Statute of the definition of
Parker, CJ
made available to the public I think it is relevant here
by Godfrey Argent www.npg.org.uk
DISCLOSURE NEED NOT HAVE BEEN SEEN
Further it is settled law that there is no need
to prove that anybody actually saw the
disclosure provided the relevant disclosure
was in public. Thus an anticipating description
in a book will invalidate a patent if the book is
on a shelf of a library open to the public,
whether or not anybody read the book and
whether or not it was situated in a dark and
dusty corner of the library. If the book is
available to the public, then the public have
the right to make and use the information in
the book without hindrance from a monopoly
granted by the State.
Lux Traffic Controls Ltd v Pike Signals Ltd [1993] R.P.C. 107

ALDOUS J
 RATIONALE FOR PUBLIC DISCLOSURE
once the information is made available
to one single person who is free to make
such further use of the information as
they please, including communicating it
to others, then the information is part of
the state of the art; it can no longer be
held back. The underlying principle here
is that since, in theory at least, it could
then immediately be freely disseminated
to and used by anybody, a subsequently
granted patent should not validly prevent
its use.
 RATIONALE FOR PUBLIC DISCLOSURE
Whether in practice the information
actually was so disseminated is
completely irrelevant. Thus the
presence of a single document in a
little-used foreign language on the
shelves of an obscure library is
enough to make its contents part of
the state of the art, even if in fact it
was never read, because its
contents are thereby available to be
further disseminated without
restriction.
 NOTE

TO QUALIFY DISCLOSURE
MUST BE AN ENABLING
DISCLOSURE
 DISCLOSURE MUST BE
ENABLING
It is settled law that to
invalidate a patent a disclosure
has to be what has been called
an enabling disclosure. That is
to say the disclosure has to be
such as to enable the public to
make or obtain the invention.

Lux Traffic Controls Ltd v Pike Signals Ltd [1993] R.P.C. 107 ALDOUS J
 ENABLEMENT DEFINED
Enablement means
that the ordinary
skilled person would
have been able to
perform the invention
which satisfies the
requirement of
disclosure Lord Hoffmann

Synthon BV v SmithKline Beecham Plc (No.2), [2003] EWCA Civ 861 http://
www.brickcourt.co.uk/people/profile/lord-hof
Para 26 fmann
 DISCLOSURE & ENABLEMENT
In order to make good their case,
Synthon had to satisfy the judge on two
points. The first was that their application
disclosed the invention which had been
patented as claim 1. I shall call this
requirement disclosure. The second was
that an ordinary skilled man would be
able to perform the disclosed invention if
he attempted to do so by using the
disclosed matter and common general
knowledge. I shall call this requirement
enablement. If both these requirements
are satisfied, the invention is not new.
Synthon BV v SmithKline Beecham Plc (No.2), [2003] EWCA Civ 861 Para 14
Lord Hoffmann
http://
www.brickcourt.co.uk/people/profile/lord-hof
fmann
NATURE OF PRIOR ART - SUMMARY
1. Involves everything known to the public.
2. It can be known anywhere in the world .
3. It is met even if known to only one person (other
than inventor)
4. It is met even when it has never been accessed
before
5. That which is known, must be able to be
performed by PHOSITA (Enablement)
PRIOR ART-
FORM OF
DISCLOSURE
 PRIOR ART
S. 3(3)
1. NATURE OF PRIOR ART:
Everything disclosed to the public, anywhere in the world.

2. FORM OF DISCLOSURE
Disclosure can be by:
a) publication in tangible form, or
b) by oral disclosure, or
c) by use, or
d) in any other way.

3 TIME LIMIT
Disclosure must have occurred prior to
a) filing date for application or,
b) where appropriate, the priority date
 Prior Art Form
S.3(3)
Prior art shall consist of everything
disclosed to the public, anywhere in the
world, by publication in tangible form or
by oral disclosure, by use or in any other
way, prior to the filing or, where
appropriate, the priority date, of the
application claiming the invention.
 Prior Art - Form
S.3(3)
Prior art shall consist of everything
disclosed to the public, anywhere in the
world, by publication in tangible form or
by oral disclosure, by use or in any other
way prior to the filing or, where
appropriate, the priority date, of the
application claiming the invention.
 Disclosure can be by:

a)publication in tangible form,

or
b)by oral disclosure, or
c)by use, or
d)in any other way.
 Summary-Form of Disclosure
IT DOES NOT
MATTER IN WHAT
FORM DISCLOSURE
OCCURS, ONCE
THE INVENTION IS
KNOWN AND
ENABLING,
REQUIREMENT IS
MET
PRIOR ART TIME
 PRIOR ART
S. 3(3)
1. NATURE OF PRIOR ART:
Everything disclosed to the public, anywhere in the world.

2. FORM OF DISCLOSURE
Disclosure can be by:
a) publication in tangible form, or
b) by oral disclosure, or
c) by use, or
d) in any other way.

3 TIME LIMIT
must have existed prior to
a) filing date for application or,
b) where appropriate, the priority date
 CUT OFF POINT FOR PRIOR ART
(a) as of the date of filing
the patent application

(b) where appropriate the

priority date
 PRIOR ART
EXCLUSIONS
 PRIOR ART EXCLUSION
SECTION 3(4)
For the purposes of subsection (3), disclosure to the
public of the invention shall not be taken into
consideration if it occurred within twelve months
preceding the filing date or, where applicable, the
priority date of the application, and if it was by
reason or in consequence of acts committed by the
applicant or the applicants predecessor in title or of
an abuse committed by a third party with regard to
the applicant or the applicants predecessor in title.
 INFORMATION WONT BE CONSIDERED PRIOR
ART WHERE
1. Disclosure occurred within twelve months
preceding the filing date or, where applicable,
the priority date of the application, AND
2. The disclosure was by reason or in consequence
of:
a. acts committed by the applicant or the applicants
predecessor in title, or
b. an abuse committed by a third party with regard to
the applicant, or the applicants predecessor in title.
 Meaning of New
S. 3

(2) An invention is new if it is

not anticipated by a prior art.
ANTICIPATION
1. WHAT DOES IT MEAN TO
ANTICIPATE PRIOR ART???
2. HOW IS AN INVENTION
ANTICIPATED BY PRIOR
ART ???
 Inhale Therapeutic Systems Inc v Quadrant
Healthcare Plc, [2002] R.P.C. 21
43 A claim can be anticipated in two ways.
First, if the prior art describes something
falling within its scope then, assuming that
the description is enabling, the claim is
anticipated. In such a case it is not
necessary to carry out any experiments, or
give evidence of what would have happened
if the prior art were put into practice,
because it already describes what it
achieves
44 The second way of proving anticipation is
by showing that the inevitable result of
carrying out what is described in the prior art
would be a product or process falling within Laddie J
http://
the scope of the claim. www.artandjewelryofsue.c
 NOVELTY IN A NUTSHELL
1. For an invention to be patentable
it must be new
2. New means that when we
research all the knowledge available,
at the time of filing, we would not
find information about how to create
that invention.
INVENTIVE STEP
 REQUIREMENTS FOR PATENTABILITY
S.3(1)
An invention is Novelty
patentable if it is
new, involves an Non
inventive step obviousness
and is Utility
industrially
applicable.
 Meaning of Inventive Step
S 1(5)
An invention shall be considered as
involving an inventive step if, having
regard to the prior art relevant to the
application claiming the invention and
as defined in subsection (3), it would
not have been obvious to a person
having ordinary skill in the art.
IS MY INVENTION OBVIOUS TO A
PHOSITA??
 MEANING OF OBVIOUS
There were also cited to us a considerable
number of cases in which the meaning of
this word was discussed in relation to
particular facts. We agree, however, with
what was said by Diplock, L.J. (as he then
was) and Willmer, L.J. in the Johns-Manville
case [1967] R.P.C. 479 at 493 and 496
deprecating coining phrases which may
later be suggested to be of general
application. Obvious is, after all, a much-
used word and it does not seem to us that
there is any need to go beyond the primary
dictionary meaning of very plain
General Tire & Rubber Co Ltd v Firestone Tyre & Rubber Co
Ltd (No.1), [1971] F.S.R. 417 @ 460
 Person Having Ordinary Skill In The Art
The question of obviousness has to be assessed
through the eyes of the skilled but non-inventive
man in the art. This is not a real person. He is a
legal creation. He is supposed to offer an
objective test of whether a particular
development can be protected by a patent. He is
deemed to have looked at and read publicly
available documents and to know of public uses
in the prior art. He understands all languages and
dialects. He never misses the obvious nor
stumbles on the inventive. He has no private
idiosyncratic preferences or dislikes. He never
thinks laterally. He differs from all real people in
one or more of these characteristics.
Laddie J
Pfizer Ltds Patent [2001] F.S.R. 16, [62]. http://
www.artandjewelryofsue.c
 Person Having Ordinary Skill In The Art
A real worker in the field may never look at a piece of
prior artfor example he may never look at the contents
of a particular public libraryor he may be put off
because it is in a language he does not know. But the
notional addressee is taken to have done so. This is a
reflection of part of the policy underlying the law of
obviousness. Anything which is obvious over what is
available to the public cannot subsequently be the
subject of valid patent protection even if, in practice, few
would have bothered looking through the prior art or
would have found the particular items relied on. Patents
are not granted for the discovery and wider
dissemination of public material and what is obvious over
it, but only for making new inventions. A worker who
finds, is given or stumbles upon any piece of public prior
art must realise that that art and anything obvious over it
cannot be monopolised by him and he is reassured that it
cannot be monopolised by anyone else. Laddie J
http://
Pfizer Ltds Patent [2001] F.S.R. 16, [62]. www.artandjewelryofsue.com/
 MUST BE TECHNICALLY OR
PRACTICALLY OBVIOUS
The word obvious is I believe directed to whether or not
an advance is technically or practically obvious and not to
whether it is commercially obvious.
The basis of the law is that the public are entitled to
manufacture that which has been published, in the sense of
made available to the public, with obvious modifications. By
obvious modifications are meant that which technically or
practically would be obvious to the unimaginative skilled
addressee in the art. Such a skilled man should be assured
that his actions will not be covered by any monopoly granted
to another if he does that which is part of the state of the art
with modifications which are workshop modifications or
otherwise technically or practically obvious alterations. He
does not and should not have to look further and consider
whether the step he is taking is obvious or not for
commercial reasons. The prize for a good commercial
decision or idea is a head start on the competition and not a
monopoly for twenty years.
Hallen Company v Brabantia (UK) Ltd, [1989] R.P.C. 307, 327
ALDOUS J
 TEST OF OBVIOUSNESS
WINDSURFING CASE
There are, we think, four steps which require to be taken in answering
the jury question. The first is to identify the inventive concept
embodied in the patent in suit. Thereafter, the court has to assume the
mantle of the normally skilled but unimaginative addressee in the art
at the priority date and to impute to him what was, at that date,
common general knowledge in the art in question. The third step is to
identify what, if any, differences exist between the matter cited as
being "known or used" and the alleged invention. Finally, the court has
to ask itself whether, viewed without any knowledge of the alleged
invention, those differences constitute steps which would have been
obvious to the skilled man or whether they require any degree of
invention.
WINDSURFING INTERNATIONAL INC V TABUR MARINE
(GREAT BRITAIN) LTD - [1985] RPC 59 Oliver LJ
[1985] RPC 59 at 73
 TEST OF OBVIOUSNESS
POZZOLI CASE
In the result I would restate the Windsurfing questions thus:

(1)(a) Identify the notional person skilled in the art;

(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done,
construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the
state of the art and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences
constitute steps which would have been obvious to the person skilled in the art or do they
require any degree of invention?

Pozzoli SPA v BDMO SA and another - [2007] EWCA Civ Jacob LJ

588
NOTE THAT TEST IS NOT
DEFINITIVE
[34] No one suggests that this always the
appropriate test. In the end the inquiry is simply
that posed by the statute,

SmithKline Beecham plc and others v Apotex

Europe Ltd and others [2004] EWCA Civ 1568 Jacob LJ
 OBVIOUSNESS MUST BE CONSIDERED
ON A CASE BY CASE BASIS
The question of obviousness must be considered on the facts
of each case. The court must consider the weight to be
attached to any particular factor in the light of all the
relevant circumstances. These may include such matters as
the motive to find a solution to the problem the patent
addresses, the number and extent of the possible avenues of
research, the effort involved in pursuing them and the
expectation of success.

Kitchin J
Generics (UK) Ltd v H Lundbeck [2007] EWHC 1040,
[72]
 COURT MUST AVOID HINDSIGHT BIAS
In considering the vital fourth question it is always important to
avoid hindsight, as Jacob LJ re-emphasised in Ferag v Muller
Martini [2007] EWCA Civ 15 at 13. The question must be
considered without assuming knowledge of the invention. Once
an invention has been made it is often all too easy to postulate
how it might have been arrived at by a series of apparently
obvious steps from something that was known.

Kitchin J
Generics (UK) Ltd v H Lundbeck [2007] EWHC 1040,
[68]
 OBVIOUSNESS A QUESTION OF
FACT
The words obvious and inventive step
involve questions of fact and degree
which must be answered in accordance
with the general policy of the Patents Act
to reward and encourage inventors
without inhibiting improvements of
existing technology by others. The
question is therefore whether in
accordance with this policy the patent
discloses something sufficiently inventive
to deserve the grant of a monopoly.
SOCIT TECHNIQUE DE PULVERISATION STEP v
EMSON EUROPE LTD AND OTHERS - [1993] RPC Lord Hoffmann
513 http://www.brickcourt.co.uk/people
/profile/lord-hoffmann
 COURT MUST CONSIDER EXPERT EVIDENCE

The primary evidence to be considered is that of properly qualified

expert witnesses who can explain to the court whether the relevant
step would have been obvious to the skilled person having regard to
the state of the art. All other evidence is secondary to that primary
evidence. Evidence of contemporaneous events can be of
assistance when testing the expert's primary evidence. So also can
evidence of commercial success. Secondary evidence has its place
and the weight to be attached to it will vary from case to case.
However, such evidence must be kept firmly in its place

Kitchin J

Generics (UK) Ltd v H Lundbeck [2007] EWHC 1040,

[69]
 INVENTIVE STEP SUMMARY

For an invention to receive patent protection it must

involve an inventive step
Inventive step means that it should not be OBVIOUS
to a PHOSITA
What is obvious to a PHOSITA is contextual, and must
be looked at on a case-by-case basis, and involve the
use of expert witnesses
Court must avoid hindsight bias