Continued from last week
An ‘invention’ means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology (Section 62 (1) of the Act). It may be or may relate to a product or process (Section 62(2) of the Act).
It is essential that an invention must be defined in terms of the technical features of the invention. An invention is patentable if it is new, involves an inventive step and is industrially applicable (Section 63 of the Act). These three elements of a patentable invention are referred to below.
Novelty
An invention is new if it is not anticipated by prior art (Section 64(1) of the Act). The prior art consists of (a) everything one disclosed to the public, anywhere in the world, by written publication, oral disclosure, use or in any other way, prior to the filing date or where appropriate, the priority date of the patent application claiming the invention; and (b) the contents of the patent application made in Sri Lanka having an earlier filing date or where appropriate, a propriety date than the patent application referred to in paragraph (a) to the extent that such contents are included in the patent granted on the basis of such patent application (Section 64(2) of the Act).
The disclosure referred to above is disregarded
If such disclosure occurred within one year preceding the date of the patent application by reason or in consequence of acts committed by the applicant or his predecessor in title (Section 64(3) (a) of the Act); or
If such disclosure occurred within six months preceding the date of the patent application by reason or in consequence of any abuse of the rights of the applicant or his predecessor in title. (Section 64 (3) (b) of the Act).
Inventive step
An invention involves an inventive steps if, having regard to the prior art relevant to the patent application claiming the invention, such inventive step would not have been obvious to a person having ordinary skill in the art (section 65 of the Act). If the invention is not new, it fails. If the invention is new, the next test – inventive step – comes in. Even though the invention is new, it is not patentable if the claimed technology is obvious to a person who is ordinarily skilled in the respective technology. In other words, the invention must be a result of human creative efforts.
Industrial application
An invention is considered industrially applicable if it can be made or used in any kind of industry (Section 66 of the Act).
Non-patentable inventions
There are certain non-patentable inventions found in the Act (section 62 (2) of the Act). Discoveries, scientific theories and mathematical methods.
Plants and animals and micro-organisms other than transgenic micro-organisms and essentially biological processes for the production of plants and animals other than non-biological and micro-biological processes. Schemes, rules or methods for doing business, performing purely mental acts or playing games.
Methods for the treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. However, a product used in any such method can be patented.
An invention which is useful in the utilisation of special nuclear material or atomic energy in an atomic weapon.
An invention, the prevention within Sri Lanka of the commercial exploitation of which is necessary to protect the public order or morality including the protection of human, animal or plant life or health or the avoidance of serious prejudice to the environment.
Right to a patent
According to section 67 of the Act, the right to a patent belongs, subject to section 68 of the Act, to the inventor. Where two or more persons have jointly made an invention, the right to a patent belongs to them jointly. If and to the extent to which two or more persons have made the same invention independently of each other, the person whose application has the earliest filing date or, if priority is claimed, the earliest validly claimed priority date is entitled to the patent, so long as that application is not withdrawn, abandoned or rejected. Thus, the law of Sri Lanka recognises the right to a patent on the principle of ‘first to apply’ and not on the principle of ‘first to invent’.
Usurpation
Section 68 of the Act provides for the assignment of a patent application or a patent in case of usurpation. Accordingly, where the essential elements of the invention claimed in a patent application or a patent have been unlawfully derived from an invention for which the right to the patent belongs to another person, such other person may apply to the court for an order or assigning the patent application or patent to him. However, where, after a patent application has been filed, the person to whom the right to patent belongs gives his consent to the filing of the concerned patent application, such consent is, for all purposes, deemed to have been effective from the date of filing of such application.
Employee created or commissioned inventions
In the absence of any provision to the contrary in any contract of employment or for the execution of work, the right to a patent for an invention made in the performance of such contract of employment or in the execution of such work is accrued to the employer or to the person who commissioned the work (Section 69(1) of the Act). If such invention acquires an economic value much greater than the parties could have reasonably foreseen at the time of concluding the contract of employment or for the execution of work, the inventor is entitled to equitable remuneration which may be fixed by the Court in the absence of agreement between the parties (Ibid). It is also noted here that the right of the inventor to have equitable remuneration referred to above cannot be restricted by any contract (Section 69(3) of the Act).
Naming the inventor
It is the obligation of the Director General to name the inventor as the inventor in the patent which is subject to condition. Unless, by a declaration in writing signed by him or on his behalf and submitted to the Director General, the inventor indicates that he does not wish to be so named (Section 70 (1) of the Act). This requirement cannot be modified by the terms of any contract (Section 70(2) of the Act). In general, the application for the patent may be accompanied by a declaration signed by the inventor, giving his name and address and requesting that he be named as such in the patent (Sections 71 (21) (d) of the Act).
Granting a patent
The granting a patent involves a multi-faceted procedure.
Application
An application for the grant of a patent is made to the Director General in the prescribed form and contains (Section 71(1) (a) of the Act).
a request for the grant of the patent;
a description of the invention;
a claim or claims
a drawing or drawings, where required;
an abstract;
date and number of any application for a patent filed by the applicant abroad (hereinafter referred to as ‘the foreign application’), if any, relating to the same, or essentially the same, invention as that claimed in the application; and Page 148;
(vii) a declaration that the applicant or his predecessor in title has not obtained a patent abroad before the application was filed relating to the same or essentially the same invention as that claimed in the application. Where the applicant’s residence or principal place of business is outside Sri Lanka, the applicant must be represented by an agent resident in Sri Lanka (Section 71 (1) ( c) of the Act).
The request that the application carries must contain: (i) a petition that the patent be granted (ii) the title of the invention; (iii) the name, address, description and any other prescribed information concerning the applicant; the inventor and the agent, if any (section 71 (2) (a) of the Act).
Applicant
The applicant can be the inventor or the owner of the invention. Where the applicant is not the inventor, the request must accompany a statement by the applicant justifying the applicant’s right to the patent. The Director General is required to send a copy of the statement to the inventor who has the right to inspect the application and to receive, on payment of the prescribed fee, a copy thereof (Section 71(2) (b) and (c) of the Act). If two or more persons have jointly made an invention, the application for the grant of a patent must be made by them jointly. Where an invention has been duly assigned, the assignee must make the application for the grant of a patent. A statement specifying the basis of the applicant’s right to the patent must accompany such application.
Description
In terms of section 71 of the Act, it is essential for the application for the patent to contain a description of the invention. The description must disclose the invention in a manner sufficiently clear and complete for the invention to be evaluated and to be carried out by a person having ordinarily skill in the art and must in particular indicate the best mode known to the applicant for carrying out the invention (Section 71 (3) of the Act).
Claims and the role of the courts in construction of claims
The claims are the most important part of a patent specification. The claim or claims must be clear, concise and supported by the description (Section 71 (4) of the Act). They should not be different from what was already described. They must also relate only to one invention. The objective of the claims is the clear and precise definition of the claimed monopoly or the protection sought and its parameters and boundaries. The claims may also be explained as the statements of technical facts expressed in legal terms defining and identifying the scope of the invention the protection of which is sought. Anything outside the claims is not protected.
The Courts also have a role to play. Accordingly, the construction of claims which is a core area in the law of patents requires the court to decide exactly the meaning of the claims made in respect of the patented invention not only in infringement proceedings but also in other proceedings dealing with issues such as ‘novelty’ and ‘disclosure’.
The construction of claims by a Court generally takes place in terms of the plain language used and in the light of the description. The Court does not allow expanding or narrowing the scope of the monopoly by importing words into a claim. The modern approach in the English law is the ‘purposive construction’ (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183 – 243 as cited in D.M Karunaratne – Elements of the Law of Intellectual Property in Sri Lanka (2010 July) Sarasavi Publishers, Sri Lanka.
The terms of the claims determine the scope and extent of the protection afforded by the patent (Section 71 (6) of the Act). The description and drawings may be used to interpret the claims (Section 71(6) of the Act). In terms of section 71 (6) of the Act, it is necessary to first understand the contents of the description before embarking upon the construction of claims. (Tubes Ltd v Parfeeta Seemless Steel Tube Company (1900) 17 Reports of Patent, Design and Trade Mark Cases (RPC 569) claims must be appreciated objectively (American Cyanmaid v Bank Pharmaceuticals (1976) RPC 231) cited in D.M Karunaratne, op cit, p 290).
The regulations made under Act require certain specified norms to be followed with regard to making claims. It is necessary to refer to those regulations also.
Drawings
‘Drawings’ may be used for interpreting and understanding the claimed invention (Section 71 (6) of the Act) and Regulation No. 38 (1) (a)). Where without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings – (i) the applicant may include drawings in the application when filed; (ii) the Director – General may require the applicant to file such drawings within a specified time limit. It is also necessary that where drawings are supplied, the applicant is required to furnish a reduction of the most illustrative drawing in the size and within the limit specified by the Director – General.
Abstract
The abstract serves the purpose of technical information (section 71(7) of the Act). It cannot be used for the purpose of determining or interpreting the scope and the extent of the protection afforded by the patent (Ibid). An application for the grant of a patent is not entertained unless the prescribed fee has been paid to the Director – General (Section 72 of the Act). Any application made outside Sri Lanka under the Patent Cooperation Treaty (PCT) for a patent designating Sri Lanka is if the applicant files a corresponding application with the Director General, deemed to be an application made under the Act (Section 71 (8) of the Act).
Search report
Every applicant is required to furnish an international type search report to the Director – General in two copies within three months from the date of issue of such international type search report (Section 73 (1)). If the international type search report is not in the English language, an English translation of the report is required. An applicant may amend the application provided that the amendment does not go beyond the disclosure in the initial application (Section 75 (1) of the Act).
An applicant may divide the application, as declared by section 75 (2) of the Act, into two or more applications (divisional applications) provided that each divisional application does not go beyond the disclosure in the initial application. Each divisional application is entitled to the filing, or where applicable, priority, date of the initial application (Section 75(2) (b) of the Act. A division of the application is subjected to a prescribed fee.
Other related provisions of the Act
Section 76 of the Act makes several provisions in connection with the right of priority under international conventions (under the Paris Convention for the Protection of Industrial Property concluded in 1883 as amended). The applicant or his duly appointed agent, if so authorised in that benefit by the applicant may withdraw the application at any time during its pendency. The withdrawal of the application must be effected by a written declaration addressed to the Director – General.
In the case of several applicants, the declaration must be signed by all the applicants or their duly appointed agents. The date of receipt of the application for the patent is in terms of section 77 of the Act, the date of application in general. Section 77 carries several norms relating to the filing date. The Director General is required in terms of section 78 (1) of the Act to examine the application and make sure that certain specified conditions are fulfilled.
Where the applicant fulfills the requirement of section 78 (1) and section 79 (2), the Director General is required to grant the patent. Upon the grant, he must forthwith (a) record the prescribed information relating to the patent in the Register of Patents and (b) to issue to the applicant a certificate of grant of the patent together with a copy of the patent documents including the search report.
As soon as possible after the grant of the patent, the Director – General is required to (a) cause to be published in the Gazette a reference to the grant of the patent; and (b) make available to the public, on payment of the prescribed fee, copies of the patent together with copies of the search report.
A patent is deemed to be granted on the date that the Director – General records the particulars relating to the patent in the Register of Patents as required under section 79 (2) (a) referred to above (Section 79(4) of the Act.
The Director General keeps and maintains a Register called the ‘Register of Patents’ wherein all patents are recorded in the order of their grant (Section 80 of the Act).
Any person may examine the Register of Patents and obtain certified extracts therefrom on the payment of the prescribed fee (Section 81 of the Act). As provided by section 82(1) of the Act, any person may after the grant of a patent, inspect, subject to sections 82(2) and 82 (3), file relating to the patent and may obtain certified extracts therefrom on payment of the prescribed fee.
To be continued next week
