The Requirement for an Invention in Patent Law
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Intellectual Property / Patent / Copyright

The Requirement for an Invention in Patent Law

By Justine Pila
Oxford University Press March 2010

Specifications

ISBN-13
9780199296941
Publisher
Oxford University Press
Publication
March 2010
Format
Hardback , 400 pages
Jurisdiction
U.K. ? Countri(es) for reference only

Details

  • Provides comprehensive analysis of one of the most complex and neglected concepts of contemporary patent law, making this a unique research tool for academics and practitioners.
  • Explores all the central areas of legal controversy in their doctrinal and historical contexts
  • Draws new connections between European and international law, facilitating a contextual and trans-regional understanding of an issue traditionally dealt with at the domestic and regional levels
  • Written by a well-respected academic of intellectual property law
  • Text includes extensive case-law and referencing
  • Contains detailed analysis of unpublished EPC materials

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 matter capable of supporting a patent, and the second is by restricting the protection conferred by a patent to individual 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 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 Europeanisation. 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 Europeanisation, international patent law and harmonisation, and the history of the UK patent system. Its elucidation of this complex area also makes it an excellent guide for practitioners.

Readership: Will be especially of interest to intellectual property academics, and students of advanced and/or international intellectual property. Also of interest to patent agents, patent attorneys, solicitors and barristers working in patent and intellectual property law in the EU and worldwide; and intellectual property makers (and consultants) in government as well as non-government organisations.

Table of Contents

Introduction


The Requirement for an Invention and Concept of Inherent Patentability


The Term 'Invention'


The Origins of the Contemporary (EPC) Definition of 'Invention'


The Uncertainty and Controversy Surrounding the Requirement for an Invention


The Need for a Conception and Epistemology of the InventionEL


Formulated in Light of the Purpose of the System, the Meaning of Europeanisation, and Insights from the History and Philosophy of Technology


Part I: The Requirement for an Invention in Historical Perspective


1: The Origins of the Patent as an Exceptional Monopoly Grant: Pre-1623


Introduction


The Royal Custom of Rewarding the Introduction of New Trades and Devices


The Justification of the Custom in Supporting the Discovery of 'Things Useful for the Public'


The Abuse of the Custom and Intervention of the Common Law


Section 6 of the Statute of Monopolies: The Common Law Invention in its Original Form


Conclusion


2: Inherent Patentability in the Pre-Modern Era of Mechanical and Chemical Manufacture: 1623 to 1882


Introduction


1623 to 1794: The Post-Specification Invention as an Idea or Discovery


1795 to 1829: The Invention in and after Boulton v Bull


1830 to 1851: The (Patentable) Invention as a Mechanically Inventive Subject Matter


1852 to 1882: The Basis of Losh v Hague in the Requirement for an 'Invention' the Patenting of which is not 'Generally Inconvenient'


Conclusion


3: Inherent Patentability in the Modern Era of New Technologies: 1883 to 1977


Introduction


1883 to 1959: The Invention as a Manner of New Manufacture, including an Alleged Invention


Post-1959: The Invention as a 'Proper Subject of Letters Patent According to the Principles EL Developed for Application of s 6 of the Statute of Monopolies'


Conclusion


Part II: The Requirement for an Invention in the Era of the European Patent Convention


4: The EPC Requirement for an Invention in its Interpretive Context


Introduction


The EPC Requirement for an Invention in its International and European Statutory Context


The European Framers' Intent Regarding the Requirement for an Invention


The European Framers' Intent Regarding Chemical Product Patents


Other European Perspectives on Chemical Product Patents: A Question of Non-Discrimination


The UK Model of Inherent Patentability at the Time of its Enactment


Conclusion


5: Articles 52(2) and 52(3) EPC According to the EPO


Introduction


Different Approaches for Different Categories of Subject Matters: 1977 to 1987


Articles 52(2) and 52(3) EPC as a Requirement for Technical Character: 1988 to 1999


Inherent Patentability in an Era of Harmonisation: 1999 to Present


Conclusion


6: Inherent Patentability in UK Law Since the EPC


Introduction


Different Approaches For Different Categories of Subject Matters: 1977 to 1989


Inherent Patentability as a Fact-Specific Enquiry: Computer-Related Subject Matters after Merrill Lynch


Inherent Patentability as a Requirement for a Subject Matter Sufficiently Supported Qua Invention: Biotechnology after Genentech


Revisiting the Computer Programs Exclusion in Light of Harmonisation: 2005 to Present


Conclusion



 



About the Author

Justine Pila, Dr Justine Pila is the University Lecturer in Intellectual Property Law at the University of Oxford, and an Official Fellow and the Senior Law Tutor at St Catherine's College, Oxford


 


 



Reviews

"Her analysis is accompanied by concise and digestible case notes, and her commentary provides a compelling narrative that ties the work together without being repetitive. a though provoking and informative book to suit anyone with a legal background and a strong interest in how and why contemporary society protects ideas" - www.ip-brands.com/blog
 
 
 

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