The Requirement For An Invention In Patent Law

Properly construed, the requirement for an invention in patent law sets the boundaries of the patent system in two ways. The first is by defining the categories of subject matter capable of supporting a patent, and the second is by restricting the protection conferred by a patent to subject matter conceived qua invention. In serving these functions, the requirement for an invention helps to fulfil the public benefit objectives of the patent system by mediating the balance struck by patents between individual patentees and the public. This book offers an analysis of the requirement for an invention in patent law and its development from before the first patent legislation of 1623 through the patent system's recent phase of Europeanisation. It includes a detailed study of the contemporary (EPC) requirement for an invention and its construction by the European Patent Office and UK Courts, and an analysis of the legal and methodological issues which they raise. It also places the EPC in its interpretive context, including its international statutory context. Finally, it concludes with some reflections on the nature of (and requirement for) an invention moving forward.

The Requirement for an Invention in Patent Law provides a critical analysis of legal conceptions of the invention in UK patent law and under the European Patent Convention. Dr Justine Pila brings to this text her extensive experience in intellectual property law. A central theme of the book is that the requirement for an invention, properly construed, sets the boundaries of the patent system in two ways. The first is by defining the categories of subject matters capable of supporting a patent, and the second is by restricting the protection conferred by a patent to individual subject matters conceived qua inventions. In serving these functions, the requirement for an invention helps to fulfil the public benefit objectives of the patent system by mediating the balance struck by patents between individual patentees and the public. This book offers an analysis of legal conceptions of the invention in UK patent law and their development from before the first patent legislation of 1623 through the patent system's recent phase of Europeanization. It includes a detailed study of the contemporary (EPC) requirement for an invention and its construction by the European Patent Office, and an analysis of the legal and policy issues which that construction raises. It also places the UK and EPC law in its interpretive context, including its international statutory context, and offers a detailed account of international law-making in the field of patents. The Requirement for an Invention in Patent Law is an indispensible reference text for students and academics of intellectual property law in general and contemporary patent law in particular, and will appeal to anyone interested in Europeanization, international patent law and harmonization, and the history of the UK patent system. Its elucidation of this complex area also makes it an excellent guide for practitioners.

Although the pivotal role of the inventiveness requirement in patent law is broadly accepted, it has long remained an ill-defined concept, and in current debates the question is often raised whether the requirement is capable of functioning as an adequate ‘gate-keeper’. By providing a broad and historical perspective on the inventiveness concept in patent law, this groundbreaking work lays a very thorough conceptual basis for further and more in-depth discussions on current standards of inventiveness. In a method guided by geography and chronology, the author weaves developments in numerous countries – focusing primarily on the United States, the United Kingdom, Germany, and the Netherlands – into a fullscale analysis of the inventiveness concept. Among the questions raised and examined are the following: - How do industrial–economic considerations influence the requirement? - Are there different doctrinal ‘schools of thought’ that can be distinguished? - Should the current requirement stay in close relationship with its predecessors or is it fundamentally different? - Which socio-economic and political forces have influenced or diverted the evolution of the requirement? - What are the most conspicuous similarities and dissimilarities among the jurisdictions under examination? And how can they be explained? - To what extent is the ‘inventive step’ requirement applied in a uniform manner within the European Patent Convention area? - To what extent has the enormous recent growth of patent grants been brought about by relaxation of the inventiveness requirement? This book provides crucially important fundamental commentary for lawyers, jurists, and scholars coming to grips with a hugely complex legal phenomenon: the dramatic growth worldwide in recent years of patents as instruments for the protection of industrial property. Particularly welcome in these times of intensifying scrutiny of patent law, this incomparable analysis will quickly become a cornerstone resource for intellectual property lawyers, patent officers, in-house counsel in multinational manufacturing companies, and other interested practitioners.

A straightforward guide to inventing, patenting, and technology commercialization for scientists and engineers Although chemists, physicists, biologists, polymer scientists, and engineers in industry are involved in potentially patentable work, they are often under-prepared for this all-important field. This book provides a clear, jargon-free, and comprehensive overview of the patenting process tailored specifically to the needs of scientists and engineers, including: Requirements for a patentable invention How to invent New laws created by President Obama's 2011 America Invents Act The process of applying for and obtaining a patent in the U.S. and in foreign countries Commercializing inventions and the importance of innovation Based on lecture notes refined over twenty-five years at The University of Akron, How to Invent and Protect Your Invention contains practical advice, colorful examples, and a wealth of personal experience from the authors.

Patent laws are different in many countries, and inventors are sometimes at a loss to understand which basic requirements should be satisfied if an invention is to be granted a patent. This is particularly true for inventions implemented on a computer. While roughly a third of all applications (and granted patents) relate, in one way or another, to a computer, applications where the innovation mainly resides in software or in a business method are treated differently by the major patent offices in the US (USPTO), Japan (JPO), and Europe (EPO). The authors start with a thorough introduction into patent laws and practices, as well as in related intellectual property rights, which also explains the procedures at the USPTO, JPO and EPO and, in particular, the peculiarities in the treatment of applications centering on software or computers. Based on this theoretical description, next they present in a very structured way a huge set of case studies from different areas like business methods, databases, graphical user interfaces, digital rights management, and many more. Each set starts with a rather short description and claim of the "invention", then explains the arguments a legal examiner will probably have, and eventually refines the description step by step, until all the reservations are resolved. All of these case studies are based on real-world examples, and will thus give an inexperienced developer an idea about the required level of detail and description he will have to provide. Together, Closa, Gardiner, Giemsa and Machek have more than 70 years experience in the patent business. With their academic background in physics, electronic engineering, and computer science, they know about both the legal and the subject-based subtleties of computer-based inventions. With this book, they provide a guide to a patent examiner’s way of thinking in a clear and systematic manner, helping to prepare the first steps towards a successful patent application.

As a result of the incorporation of computer software into countless commercial and industrial products, the patentability of software has become a vital issue in intellectual property law. This indispensable book provides an overview on the current status of computer-implemented inventions in patent law across Europe and major jurisdictions worldwide. A hugely practical field research tool with guidance based on case law, it examines the major hurdles in each particular country and describes the best practice to be adopted. Clearly showing how enforceable software patent applications can be competitively drafted and how a patent portfolio for computer-implemented inventions can be established in several countries without spending money unnecessarily on problematic examination proceedings, this book covers such issues and topics as the following: • claim categories for patent applications; • sufficient level of abstraction/breadth of the claimed invention; • fundamental terms of computing and terminological traps; • probability for patents dependent on software application areas; and • patents in core areas of computing. With separate chapters for the key countries, Germany, the United Kingdom, France, the United States, China, Korea, Japan, India, and the European Patent Office the legal situation for computer-implemented inventions in each country or region, this book includes guidance on prosecution under national law, analyses of relevant court decisions, practice checklists, and an outlook on future developments.. The authors describe claim formulation based on actual cases and on principles of computer science in order to show what might be or might not be patentable in each jurisdiction. With this incomparable resource, patent attorneys and patent professionals in companies will get a basis for making decisions about the most appropriate jurisdictions in which to file patent applications. This book will also be of great value to computer professionals who are affected by the protection of software or who are actively involved in the protection of software by patent law.