Case Study Analysis: Patentability and Trademarks

Running head: CASE STUDY ANANLYSIS
CASE STUDY ANANLYSIS
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Total Words: 1996

1CASE STUDY ANANLYSIS
Introduction:
In the given case study, the main issue in this case was whether Sandra could apply for
patent for her invention under the given scenario under the Patents Act1.
The main purpose of securing a patent is to have a monopoly right to use such invention.
The patent provides justice to the original inventor and it encourages innovation. According to
the provisions of the Patents Act, patent protection is allowed to only patentable inventions.
Patents mean rights legally granted by the UK Intellectual Property Office on behalf of the
Government for any new invention2. It allows the inventor or the patentee to take legal steps
against others who has used the invention without the assent of the original patentee. When a
patent is granted it becomes the property of the inventor, which like any other property can be
purchased, sold, rented or hired. They are territorial rights that can be exercised in particular
territory only. The patents granted in UK will give holder to execute it in UK only and not
outside. The holder can stop its infringement in UK only. The characteristics of a patentable
invention laid in Section 1 of the act comprises of four essentials which are:
a) Invention must be new and not anticipated. It does not form part of the state of art.
b) Invention must not be obvious. It must involve an inventive step.
c) Invention must be capable of industrial application.
d) Invention must not be excluded under sections 1(2) and 1(3) of the said act.
1 The Patents Act 1977.
2 Tom Harris, "How can you protect your ideas?." (Start-up. Springer, Cham, 2019) 23-38.

2CASE STUDY ANANLYSIS
The foremost criteria to obtain a patent is it must be new, inventive and does not form a
part of state of art3. In order to form a state of the art, the invention related information is to be
made available to any member of the public in UK or elsewhere, before the priority date as laid
down by LZ Bowen in Humpherson v Syer4. Elsewhere as in section 2(2) means matter to be
made available worldwide. However such invention will not be regarded to be made to public
when such disclosure is made by a person under a duty of confidentiality as given in section 2(4)
of the act. This has been reiterated in the case of Pall Corpn V Commercial Hydraulics5.
Similarly, such disclosure will not be presumed to be made to public when made to few
individual research workers experimenting in private as held by LJ Purchas in Genentech’s
Patent6. The information can be made available to the public not only by written or oral
description but also by use or in other way as given in section 2(2) of the Patents Act7.
For the subject matter to have been anticipated, it must coincide with other previous
inventions exactly. The test to find out anticipation is given in the case of General Tire v
Firestone8. According to the case, two situations are to be kept under consideration. Firstly, the
earlier invention is to be analyzed such that whether its publication provides a clear description
to do or to make anything which if executed would infringe the patent of later invention. If the
answer is affirmative, the later invention is said to be anticipated and its patent will not be
granted. The second situation is when the earlier inventor and the later patentee have reached the
particular invention from two different aspects but have explained their ideas in such a manner
3 Mark James Thompson, Measuring patent quality: A claim and search report approach. (World Patent
Information 45 2016) 47-54.
4 Humpherson v Syer [1887] 4 RPC 407.
5 Pall Corpn V Commercial Hydraulics [1990] FSR 329 at 347.
6 Genentech’s Patent [1989].
7 Gov.uk. (2019). Section 2: Novelty - The Patents Act 1977 (as amended) - Guidance - GOV.UK. [online] Available
at: https://www.gov.uk/guidance/the-patent-act-1977/section-2-novelty.
8 General Tire v Firestone Tyre and Rubber Company Limited HL ([1976] RPC 197, [1975] 1 WLR 819, [1975] 2
All ER 173, [1975] FSR 273) .