The LexCampus Weekly Newsletter No. 14
7th April, 2021
This week we discuss a case presented before the IPAB dealing with the relevance of natural justice in hearings conducted during patent prosecution, as well as the non-applicability of Section 3(d) in certain patent applications. Our blogpost this week discusses the response received by the United Kingdom Intellectual Property Office (UK IPO) regarding IP policy and Artificial Technology. We focus on the representation made by the ACT-The App Association which is a conglomerate of small business software application development companies and technology firms across the mobile economy. ACT in its response to the call for views urged the UK IPO prioritise access to reasonable and technology-neutral protections as well as enablement of AI tools to prevent and tackle IP infringement. We offer tips on how to draft the transition clause in a patent, and conclude with a patent related FAQ answered by Dr. Feroz Ali.
PATENT CASE LAW SUMMARY
Pfizer Products Inc. v. Controller of Patent & Designs
Pfizer filed a patent application with the Indian Patent Office in connection with PCT application bearing no. PCT/IB2002/01905. Following the filing of the First Examination Report and amendment of claims thereof, a hearing was held and the application was rejected by the Controller. An application for review of this order was dismissed by the Controller. The IPAB in an appeal filed by Pfizer ordered that fresh hearing be conducted. Following the second hearing also, the application was rejected on the grounds of non patentability. The IPAB heard the appeal against this and set aside the rejection order issued by the Controller. Read more
FROM OUR PATENT BLOG
Patents and Artificial Intelligence : Representation by ACT to the UK IPO
The relationship between Patents and Artificial Intelligence (AI) is of paramount interest to academics and scientists alike. As discussed in our previous newsletter various organisations and Intellectual Property (IP) offices across the world had called for recommendations and views regarding legal personhood to AI, as well as the impact of recognising AI, on the patent and inventorship ecosystem. The United Kingdom Intellectual Property Office (UK IPO) has received responses from various quarters and this week we look at the submission by ACT-The App Association. Read more
DRAFTING A PATENT – TRANSITION CLAUSE
It is important to keep in mind that
- “Comprising” or “including” when used in a transition clause enables a subset of a group of elements that are present, to be seen as possessing the claimed characteristics while another subset of the same elements do not have the claimed characteristics. This would hold true for interpretation of claims as well as examination of an accused device for infringement.
- The contrary may also be true. In spite of using the word “comprising” for transition, it is possible that a claim be interpreted to mean that all elements of one type have a claimed characteristic, although the text of the claim recites that a plurality of such elements have that characteristic. This would mean that even if the accused device had elements which lacked the characteristics of the claimed product/process, they would still be in conflict with the claim.
QUESTION: In case the invention has been assigned, can applicant and assignee be different?
No, it will be the same. Understand that there can be only one person who can make an application that is the applicant. The applicant can be a true and first inventor, by which I mean the inventor .. .. Read more and watch video explanation
That’s all folks for this week