A Comparative Review of New Developments
New Directions in Patent Law series
Edited by Emanuela Arezzo and Gustavo Ghidini
Chapter 3: The Future of the Requirement for an Invention: Inherent Patentability as a Pre- and Post-Patent Determinant
* Justine Pila INTRODUCTION In 2009, in the United Kingdom, the House of Lords held that the contribution to the art for which a European patent is granted is the invention.1 If this is true, we need a robust and meaningful definition of what constitutes an invention, and an understanding of how individual subject matter are properly conceived as inventions. Implicit is a view of the EPC2 requirement for an invention as existing to perform two (pre- and post-patent) functions.3 The first is to help set the threshold limits of the patent system by determining the categories of subject matter for which a patent may be granted. The second is to restrict the protection conferred by a patent to individual subject matter conceived as inventions. In serving these functions, the requirement helps to fulfil the public benefit objectives of the patent system by mediating the balance struck by patents between individual patentees and the public. * This chapter is based on a paper first presented in public at the University of Leeds on 5 May 2010, thanks to an invitation by Graham Dutfield and César Ramirez-Montes, and later presented at the University of Oxford and the London School of Economics, thanks (in the case of the LSE) to an invitation by Siva Thambisetty and Dev Gangjee. A shorter version was published as J. Pila, ‘On the European Requirement for an Invention’ (2010) 41 IIC: International Review of Intellectual Property and Competition Law 906–926. 1 See Generics Inc v Lundbeck A/S...
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