Selection Inventions the Inventive Step Requirement, other Patentability Criteria and Scope of Protection

Transcription

1 Question Q209 National Group: Title: Contributors: AIPPI Indonesia Selection Inventions the Inventive Step Requirement, other Patentability Criteria and Scope of Protection Arifia J. Fajra (discussed by the members) Datum: January 10, 2009 Questions General Groups are asked to give a summary of the legal position as regards a patent for a purported selection invention in their jurisdiction in relation to the following: Q1 Legal developments on selection inventions What specific types of inventions are recognized under the concept of selection invention and are patentable in your jurisdiction? Do you have any examples of selection inventions in a field other than chemical, pharmaceutical or material science fields? According to our National Law of Intellectual Property Rights, on the Articles 1 (2) of Indonesian Paten Law no. 14/2001, it is stated that Invention shall mean an Inventor s idea that is poured in any activity of solving a specific problem in the field of technology, either in the form of a product or process, or an improvement and development of a product or a process. An improvement of a product may be made from an inventive selection from field that is already known. With respect to the subject matter of invention, Indonesian Patent Law no. 14/2001 only stipulates concerning the patentability requirement of a patent (Article 2 (1)) and some criteria for invention that shall not be granted (Article 7). Quotes Article 2 (1) : A Patent shall be granted to an Invention, which is novel, involves an inventive step and is susceptible of industrial application. Quotes Article 7 : A Patent shall not be granted to an Invention regarding: a. any process or product of which the announcement and use or implementation contravenes the prevailing rules and regulations, religious morality, public order or ethics; b. any method of examination, treatment, medication, and/or surgery applied to humans and/or animals; c. any theory and method in the field of science and mathematics; or d. i. all living creatures, except micro-organism

2 ii. any biological process which is essential in producing plant or animal, except non-biological process or microbiological process. Therefore, the are no provision stipulating concerning the specific types of inventions that are recognized under the concept of selection invention (from a field that is already known) and are patentable in our jurisdiction. In our experience, generally the selection invention is in a filed of chemical, pharmaceuticals, and material science fields. However, selection inventions can also be found in engineering and manufacturing processes, biotechnology, and telecommunications. Q2 Novelty Groups are asked to discuss any issues that should be considered with respect to the novelty of selection inventions. For example, is merely carving a range out of a broad prior art disclosure sufficient to make a selection invention novel? Is a different advantage or use, or the same advantage with an unpredictable improvement required for a selection invention to be novel? According to the Article 3 of Indonesian Paten Law no. 14/2001, it is stated that: (1) An Invention shall be considered novel, if at the date of filing of the Application said Invention is not the same with any previous technological disclosure. (2) A technological disclosure as referred to in paragraph (1) is one which has been announced in Indonesia or outside Indonesia in writing, by a verbal description or by a demonstration, or in other ways, which enable a skilled person to implement the Invention before; a. the Filling Date, or b. the priority rate. (3) The previous technological disclosure as referred to in paragraph (1) includes the documents of Applications filed in Indonesia, which have been published on or after the Filing Date of Application being substantively examined and which have a Filing Date that is prior to the Filing Date or priority date of Application being substantively examined. To make a selection invention to be novel, it is not sufficient only by merely carving a range out of a broad prior art disclosure an invention. It is required as well a different advantage/an improvement technical effects or use, or the same advantage with an unpredictable improvement. Q3 Inventive step or non-obviousness Groups are asked to discuss the inventive step or non-obviousness requirements in their jurisdiction. If experimental data is used to back up the inventive step or non-obviousness requirement can it be submitted after initial patent filing? Are there any prerequisites or limitations on the late submission of data? According to the Article 2 (2-3) of Indonesian Paten Law no. 14/2001, it is stated that: (2) An Invention shall be considered to involve an inventive step if said Invention does not constitute something that is obvious to a person skilled in the art.

3 (3) The evaluation of whether or not an Invention constitutes something that is obvious must be made taking into account the state of the art at the time the Application is filed or which has existed at the time the first Application was filed, in case the Application is filed on the basis of a Priority Right. The experimental data used to back up the inventive step or non-obviousness requirement should be submitted when filing a patent application, or at the latest before the pending patent application is granted. Provided that such experimental data does not extend the scope of invention as originally filed, and does not result in a different technical effects as original filed. Q4 Sufficiency and/or written description requirements Groups are asked to discuss the sufficiency or written description requirements in their jurisdiction. There may be several aspects to this question: (1) the threshold for sufficiency; (2) the allowable timing for submission of experimental data; (3) the time frame within which sufficiency or written description requirements must be satisfied; and (4) the breadth of claim scope that can be supported by a limited number of examples of asserted or proven advantages. With respect to item (1), please discuss to what extent all members of the class selected by the patentee are required to possess the requisite advantage in your jurisdiction. Is there an absolute requirement that all of the selected class possess the relevant advantage, or is the patentee excused if one or two examples fall short? Also, with respect to item (4) above, if a new utility is asserted as a selection invention, would it suffice to claim a particular range or selection of components which have been found to be associated with such a new utility or would it be necessary to recite such a new utility in the claims? With respect to the written description requirements in our jurisdiction, Indonesian Patent Law no. 14/2001, stipulates concerning the unity of invention, the amendment of invention, the division of a patent application. Quote Article 21: Each Application may be filed for one Invention only, or a number of Inventions that constitute a unity of Invention. Article 35: Amendment of an Application An Application may be amended by revising the description and/or the claims, provided that such amendments do not expand the scope of Invention applied for the original Application. Article 36: (1) An Applicant may request that an Application be divided if the said Application contains a number of Inventions that do not constitute a unity of Invention as referred to in Article 21. (2) The division of an Application as referred to in paragraph (1) may be filed separately in an Application or more, provided that the scope of protection applied for in each Application does not expand the scope of protection applied for in the original Application. (3) The request for the division of an Application as referred to in paragraph (1) may be filed at the latest before the original Application is granted a decision as referred to in Article 55 paragraph (1) or Article 56 paragraph (1). (4) The request for the division of an Application as referred to in paragraph (1) and (2) which has fulfilled the requirements as referred to in Article 21 and Article 24 shall be deemed to have been filed on the same date with the original Filing Date.

4 (5) In the case an Applicant does not file the request for the division of an Application within the period as referred to in paragraph (3), the substantive examination shall only be conducted on the Inventions as stated in the sequence of claims in the original Application. All the amendment of specification should not extend the scope of invention as originally filed, and should be filed, at the latest, before the patent application is granted. Q5 Infringement If a certain advantage or superior results were the reasons for the grant of a patent on a selection invention, does such advantage or superior result have to be implicitly or explicitly utilised by a third party for an infringement to be established? Yes, it should be explicitly utilized by a third party for an infringement to be established. If a selection invention is claimed as a new use, what are the requirements to establish infringement? The requirement to establish infringement is if the new use could be easily obvious from the people skilled the art when reading the prior art. Would a manufacturer of a product that may be used for the new use infringe the patent? Yes, if the invention only claimed the new use for a patent product, and such product has been considered having the same composition with the prior art, and the method for manufacturing of said product is also claimed by the prior art. Does the intention of an alleged infringer play any role in the determination of infringement? Yes, the intention of an alleged infringer also plays role in the determination of infringement. Q6 Policy Groups are asked to give a short commentary as to the policy that lies behind the law on selection inventions in their jurisdictions, and then to consider whether or not such policy considerations are still valid today as technology continues to advance. The selection invention is actually intended to motivate the inventor to be more creative in inventing and improving/developing a new technology or inventions based on the prior technology, by solving the previous technical problem which can not be solved by the prior technology it self. However, the concept of selection may not solely be used to claim a part of technology which is not explicitly stated some part of invention that caused by the default of the prior inventor. With Reference to the Examples Q7 Novelty In example 1 would the prior disclosure of the compounds containing the generic class of radicals anticipate any claim to a specific compound having a particular radical, or group of specific compounds having a selection of particular radicals in your jurisdiction? Yes, the prior disclosure of the compounds containing the generic class of radicals could anticipate any claim to a specific compound having a particular radical, or group of specific compounds having a selection of particular radicals. However, it will depend on how specific that the compounds containing generic class disclosing the

5 specific compound is, particularly in the embodiments of its compounds. The compound that is having class that too generic, for instance, the Marshkush formula (which is effectively concealed than clearly point out), Desideratum or free beer claims, and claims which having to much parameter, could give disadvantages to the compounds containing the generic class, since they are not clearly point out the claimed subject matter. In the analysis, does it matter how wide the prior disclosed generic class of compounds is i.e. would the analysis be different if the prior disclosed generic class consisted of 1,000,000 possible compounds (very few of which were specifically disclosed) as opposed to merely, say, 10? The prior disclosed generic class consisted of 1,000,000 possible compounds (very few of which were specifically disclosed) as opposed to merely, say, 10, would result in the differ analysis. As cited above, the prior art disclosed generic class consisted of 10 possible compounds will be clearly point out the more specific embodiment compound. Such prior art could more advantageously anticipate any claim to a specific compound having a particular radical, or group of specific compounds having a selection of particular radicals than the prior disclosed generic class consisted of 1,000,000 possible compounds. Q8 Inventive step or non-obviousness In example 2 would any of the three possibilities constitute an inventive step over the prior art in your jurisdiction? Scenario (iii) would constitute an inventive step over the prior art. Further, if, say, scenario (iii) does constitute an inventive step over the prior art, what scope of protection should the inventor be able to obtain? The scope of protection that inventor should be able to obtain is a new improved product/composition, or a new use of the compound/products. Should the inventor be able to obtain protection for the products per se (that happen to have this advantageous property), or should any patent protection available be limited to the use of the products for the advantageous property (as an adhesive) not possessed by, and not obvious over the prior art? The inventor should be able to obtain protection for the products per se, and including a new use of products for the advantageous property (as an adhesive) not possessed by, and not obvious over the prior art. Q9 Sufficiency and/or written description requirements To what extent are all members of the class selected by the patentee required to possess the requisite advantage in your jurisdiction? Is there an absolute requirement that all of the selected class possess the relevant advantage, or is the patentee excused if one or two examples fall short? All of the selected class should posses the relevant advantage.

6 Q10 Infringement By reference to example 3 to what extent is evidence of the knowledge of the advantageous property of the selection, or intention of the infringer as to its supply, required to find infringement in your jurisdiction? Even the competitor supplies the claimed product without the instructions as to its use, however, by manufacturing such claimed product, the competitor s product could be considered partially infringing the claimed invention. Q11 Policy Groups are asked to consider, in respect of example 1 / 2, whether it matters how much effort the inventor has invested in arriving at his selection in order to found a valid selection patent. The answer to this question is closely related to the policy considerations that underpin the grant of selection patents and the incentive / reward equation involved. The inventor may have expended considerable time and money in trawling through the whole host of possible compounds encompassed by the prior disclosed generic class, and the particular selection that he has made may constitute a leap-forward in the field. Surely the inventor should be rewarded for his efforts and obtain protection? On the other hand, it could be argued that such considerations may have been relevant in an age when the inventor's efforts actually involved many man-years of careful and painstaking laboratory work, but are now increasingly irrelevant in an age of combinatorial synthesis when large varieties of different compounds can be manufactured in a fraction of the time. Are such considerations relevant? Such considerations are relevant enough, provided that those efforts are really invested by the inventor in arriving at his selection in order to found a valid selection patent. Harmonisation Q12 Groups are asked to analyse what should be the harmonised standards for the patentability of selection inventions. In particular, the items discussed in Q1-Q6 and the examples discussed in Q7-Q10 above should be referred to. A Patent shall be really granted to an Invention, which is novel, involves an inventive step and is susceptible of industrial application. The compound that is having class that too generic, for instance, the Marshkush formula (which is effectively concealed than clearly point out), Desideratum or free beer claims, and claims which having to much parameter, could give disadvantages to the compounds containing the generic class, since they are not clearly point out the claimed subject matter. Such type of claims should be avoided and not allowed. Q13 Groups are also asked to recommend any issues for harmonisation not referred to in Q11 above.

7 Q13 Groups are asked to outline any other potential issues that merit discussion within AIPPI as regards selection inventions. - The significant limitation of scope of generic compounds in granted patent. - The importance of the susceptible of industrial application criteria of a patent as one of the patentability requirement. Note: It will be helpful and appreciated if the Groups follow the order of the questions in their Reports and use the questions and numbers for each answer.