Managing Intellectual Property - Paul Trott - Chapter Summary

 

Understanding the law related to intellectual property and protecting IP  is an important aspect of innovation management.

Patent

 The earliest known English patent of invention was granted to John of Utynam in 

1449. The patent gave Utynam a 20-year monopoly for a method of making stained 

glass that previously had not been known in England. For a patent to benefit from 

legal protection it must meet strict criteria:

 ● novelty;

 ● inventive step; and

 ● industrial application.

Novelty

 An introduction to patents

 The Patent Act 1977, section 2(1), stipulates that ‘an invention shall be taken to be 

new if it does not form part of the state of the art’. A state of the art is defined as all 

matter, in other words, publications, written or oral or even anticipation (see 

Windsurfing International Inc. v. Tabur Marine (GB) Ltd below), will render a  

patent invalid.

 Inventive step

 Section 3 of the Patent Act 1977 states that ‘an invention shall be taken to involve 

an inventive step if it is not obvious to a person skilled in the art’. In the United 

States, the term ‘non-obvious’ is used as a requirement for patentability. Although 

the basic principle is roughly the same, the assessment of the inventive step and non

obviousness varies from one country to another. A set of rules regarding the 

approach taken by the United Kingdom courts was laid out by the Court of Appeal 

in Windsurfing International Inc. v. Tabur Marine (GB) Ltd [1985] RPC 59, in 

determining the requirements for inventive step:

 1 identifying the inventive concept embodied in the patent;

 2 imputing to a normally skilled, but unimaginative, addressee what was common 

general knowledge in the art at the priority date;

 3 identifying the differences, if any, between the matter cited and the alleged inven

tion; and

 4 deciding whether those differences, viewed without any knowledge of the alleged 

invention, constituted steps that would have been obvious to the skilled man or 

whether they required any degree of invention.

 Industrial applications

 Under the Patent Act, an invention shall be taken to be capable of industrial applica

tion if it can be a machine, product or process.