Patent

2020 SCMR 1437 SUPREME-COURT-OF-UK Judicial Precedent

InventionSufficient disclosure of informationScopePatent reflected a bargain between the inventor and the public

Essence of the bargain between the patentee and the public was that the patentee dedicated the invention to the public by making full disclosure of it, in return for a time-limited monopoly over its use

Benefit afforded to the public was not merely the disclosure, but the ability to "work the invention" after the expiry of the monopoly by the use of the disclosure

Where the invention enabled patentees to make a particular product, and they sought a monopoly over the making and exploitation of the product (which was what a product claim did), they must disclose enough in the teaching of the patent to enable the public also to make the product

If the patentee were able to obtain a product monopoly without disclosing how to make the product, the public would get nothing of substance in return for the grant of the monopoly

Furthermore, other inventors would be deterred from conducting the research and development in fact necessary to take advantage of the inventive idea for the benefit of society as a whole, since during the period of the monopoly they could derive no benefit from their own inventiveness.

2020 SCMR 1437 SUPREME-COURT-OF-UK Judicial Precedent

InventionSufficient disclosure of informationSufficiencyScope

Protection covered by a patent should correspond to the technical contribution to the art made by the disclosure of the invention described therein

Said principle, and the other principles that were relevant to determining sufficiency, could only be applied having close regard to the facts of the particular case

Assessment of sufficiency did depend very much upon the nature of the individual invention and the facts of the particular case.

2020 SCMR 1437 SUPREME-COURT-OF-UK Judicial Precedent

InventionSufficient disclosure of informationSufficiency, principle ofScope

Sufficiency was one of the established tools by which was measured the correspondence, or lack of it, between the protection afforded by the claim and the technical contribution to the art made by the disclosure of the invention in the patent

Other main tools were novelty, inventive step and industrial application

In relation to a product claim, sufficiency required substantially the whole of the range of products within the scope of the claim to be enabled to be made by means of the disclosure in the patent, and this both reflected and applied the principle that the contribution to the art was to be measured by the products which could thereby be made as at the priority date, not by the contribution which the invention may make to the value and utility of products, the ability to make which, if at all, laid in the future.

2020 SCMR 1437 SUPREME-COURT-OF-UK Judicial Precedent

ValidityInventionSufficient disclosure of informationSufficiency, principle ofScopeInformation disclosed in patents only enabling some product types within range to be made

Question as to whether sufficiency test would be satisfied if an invention disclosed generally applicable principle with potential to yield benefits across range of product types

Per Lord Briggs (Majority view): Disclosure in the patent should enable substantially all products within the scope of a product claim to be made by the skilled person at the priority date

Where a range of products was claimed, subject to de minimis exceptions, the essential patent bargain was not satisfied in relation to products in that part of the range which could not be made, using the teaching in the patent

[Per Lady Black (Minority view): Protection covered by a patent should correspond to the technical contribution to the art made by the disclosure of the invention described therein

Assessing sufficiency (of information disclosed) depended on the nature of the invention and the facts of the particular case]

2020 SCMR 1437 SUPREME-COURT-OF-UK Judicial Precedent

Invention

Principles regarding patents as found in European and United Kingdom case law.

2018 CLD 557 KARACHI-HIGH-COURT-SINDH Judicial Precedent

Ss. 13, 16, 1(1)(c), 8, 23, 27, 69(3) & 88Patent Rules, 2003, Rr. 14(6)(7), 18(8), 21(2), 24(3) & 62PatentObject, scope and purposeDisclosure, extension in timePrinciple

Appellants filed opposition to patents filed by respondents without accompanying statement setting out fully nature of opponent's interest and facts upon which appellant relied

Authorities dismissed opposition filed by appellants

Validity

Concept of patent revolved around fundamental principle that inventor be granted monopoly upon his disclosure to public

Monopoly hinged on disclosure

Monopoly and disclosure were two legs of patent system and one could not stand straight without the other

Under relevant law, a mechanism was provided for filing patent by an inventor, disclosure requirements were given longish period of four months by statute itself and not left to the Rules

Such window was closed after lapse of four months and there was no legal possibility to reopen same as inventor's rights cemented on expiry of four months period, whereafter, inventor was only required to pay ceiling fee and had his patent granted to him, and enjoyed monopoly upon him having made disclosure to public, which disclosure had gone into public domain and people at large were free to use this information, except to reproduce the product or to use the process for commercial gains or in any manner violating scheme envisaged by patent laws

Appellants had clear opportunity to file their opposition within four month's period which they failed to do without providing mandatory statement under S. 18(1)(c) of Patents Ordinance, 2000

If Controller of patents had admitted documents mandated to be filed along with Form-P-7 after expiry of statutory period of four months under S. 21 of Patents Ordinance, 2000, such act would have amounted to enlarged time limit of four months prescribed under S.21 of Patents Ordinance, 2000 of which there was no legal opportunity

Controller's power to enlarge time was only restricted to situations which were described in heading of Form-P-7

Controller had rightly refused opposition filed by appellants as there was no power to extend period for meeting requirement of R. 18(1)(c) of Patents Ordinance, 2000

High Court declined to interfere in order passed by Controller of Patents

Appeal was dismissed in circumstances.

2014 SCMR 381 SUPREME-COURT-OF-UK Judicial Precedent

Patent, infringement ofStrict liabilityKnowledge and intention of alleged infringerPrimary and secondary infringerScope

Patent infringement was a wrong of strict liability: it required no knowledge or intention on the part of the alleged infringer, whose state of mind was wholly irrelevant to the issue of whether he infringed the patent

Fact that the alleged infringer did not know of the existence, contents or effect of the patent was completely irrelevant to the question of infringement, even if he had thought the invention up for himself

Logically a person who, while wholly innocent of the existence, contents or effect of the patent, could nonetheless be secondarily liable if he assisted the primary infringer in his patent-infringing acts.

2014 CLD 473 SUPREME-COURT-OF-UK Judicial Precedent

Patent, infringement ofStrict liabilityKnowledge and intention of alleged infringerPrimary and secondary infringerScope

Patent infringement was a wrong of strict liability: it required no knowledge or intention on the part of the alleged infringer, whose state of mind was wholly irrelevant to the issue of whether he infringed the patent

Fact that the alleged infringer did not know of the existence, contents or effect of the patent was completely irrelevant to the question of infringement, even if he had thought the invention up for himself

Logically a person who, while wholly innocent of the existence, contents or effect of the patent, could nonetheless be secondarily liable if he assisted the primary infringer in his patent-infringing acts.

2013 SCMR 922 SUPREME-COURT-INDIA Judicial Precedent

Grant of patent for a productConditions that a product needs to satisfy to qualify as an "invention"

For qualifying as an "invention" a product must be "new"; it must be "capable of being made or used in an industry"; it must come into being as a result of an invention which has a feature that entails technical advancement over existing knowledge, or has an economic significance, and makes the "invention" not obvious to a person skilled in the art.

2013 SCMR 922 SUPREME-COURT-INDIA Judicial Precedent

Pharmaceutical patentEver greening of pharmaceutical patentPharmaceutical drug derived from a patented chemical compound/ substanceGrant of patent for such a drugScopeLegal requirement that patent for such a drug could only be granted if it qualified as an "invention"

Multi-national pharmaceutical company ("company") had a patent for a chemical compound with which it manufactured a cancer treatment drug ("drug")

Subsequently company made some alterations to the chemical compound and launched an updated version of the drug, which the company claimed was a new "invention"

Company was refused patent for updated version of the drug on the basis that it was not a new drug but an amended version of its earlier product; that invention claimed by the company was anticipated by its previous patent of the chemical compound; that the invention claimed was obvious to a person skilled in the art in view of the disclosure provided in previous patent specifications; that if company was granted patent for updated version of its drug, it would adversely affect lives of poor cancer patients and their families due to the high price of the drug

Validity

Updated version of the drug emerged from the chemical compound for which the company already had a patent

Company had obtained approval for updated version of the drug (in a foreign country) on the basis that it was part of the patented chemical compound

Company had also used the chemical compound patent (in a foreign country) to stop another pharmaceutical company from selling its cancer drug, which contained the same active pharmaceutical ingredient as present in the updated version of the drug

Pharmacological properties of the updated version of the drug were also known in the patented chemical compound

Updated version of the drug did not qualify the tests of "invention" and patentability, in circumstances

Appeal filed by company was dismissed accordingly with cost.

2013 SCMR 922 SUPREME-COURT-INDIA Judicial Precedent

Pharmaceutical patentEver greening of pharmaceutical patentPharmaceutical drug derived from a patented chemical compound/substanceGrant of patent for such a drugScope

Legal requirement that patent for such a drug could only be granted if it was shown that it had enhanced "efficacy" compared to the chemical compound/substance it was derived from

Enhanced "therapeutic efficacy" of a pharmaceutical drug

Scope

Multi-national pharmaceutical company ("company") had a patent for a chemical compound with which it manufactured a cancer treatment drug ("drug")

Subsequently company made some alterations to the chemical compound and launched an updated version of the drug, which the company claimed was a new "invention"

Company was refused patent for the updated version of the drug

Plea of pharmaceutical company that patented chemical compound from which the updated version of the drug was derived did not have any known efficacy, therefore, there was no question of showing that the updated version had any enhanced efficacy, and that even otherwise the updated version of the drug had a 30% increased bioavailability and was more easily absorbed as compared to the patented chemical compound

Validity

Updated version of the drug was a new form of a known substance, i.e. patented chemical compound, efficacy of which was well known

Company was obliged to show the enhanced efficacy of the updated version of the drug over the patented chemical compound, however, there was no material (on record) to make any such comparison of efficacy

Test of efficacy depended upon the function, utility or the purpose of the product, therefore, in the case of a medicine that claimed to cure a disease, the test of efficacy could only be "therapeutic efficacy"

"Therapeutic efficacy" of a medicine had to be judged strictly and narrowly, thus, not all advantageous or beneficial properties (of an updated version of a drug) were relevant, but only such properties that directly related to its therapeutic efficacy

Additional properties that could be attributed to the updated version of the drug were limited to its improved process ability and better and longer storability but, on the basis of such properties alone, the updated version of the drug could not be said to possess "enhanced therapeutic efficacy" over the patented chemical compound

Increased bioavailability (of an updated version of a drug) alone might not necessarily lead to an enhancement of therapeutic efficacy

Increase in bioavailability leading to an enhancement of therapeutic efficacy had to be specifically claimed and established by research data, which was lacking in the present case

Appeal filed by company was dismissed accordingly with cost.

2013 SCMR 922 SUPREME-COURT-INDIA Judicial Precedent

Pharmaceutical patentPharmaceutical drug derived from a known chemical compound/substance with known efficacyGrant of patent for such a drugConditions

Where the (pharmaceutical) product for which patent protection was claimed was a new form of a known substance with known efficacy, then the product must pass the test of "invention", "inventive steps" and the test of enhanced (therapeutic) efficacy.