New use for old...
by Georgina Richards
The concept of ‘newness’ or novelty in relation to the patentability of an invention is very particular under patent law. An invention is regarded as new if it does not form part of what is known as ‘the state of the art’. The state of the art when considering an invention is taken to comprise of all matter which has, at any time before the priority date of the patent application for the invention, been made available to the public by use, written or oral description, or otherwise, anywhere in the world. Included in such art are matters contained in prior patent applications.
A person merely having an idea about an invention would not be enough to challenge its novelty providing details were not made available to the public.
Section 3 of the Act goes on to clarify the second condition relating to patentability of the invention and to introduce the concept of obviousness. This section provides that an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms the state of the art.
Will a new use for an old invention form part of the state of the art? The answer will be no if the claims in respect of the ‘new’ use are substantially different to those of the existing invention. It is interesting to note that the Act does not contain a definition of an invention. We are left to determine this from the application of the Act in reported cases. In a House of Lords case (Biogen v. Medeva, The Times, 1st November 1996) the four conditions were considered in detail but the judgement fell short of actually stating that something which fulfils the four conditions of patentability could be called an invention.
In earlier proceedings before the House of Lords in 1956, relating to the infringement of the patent granted for a writing instrument to Laszlo Biro, Viscount Simonds confirmed that a patentable invention may consist of a new combination of old integers so placed together that by their working inter-relation they produce a new or improved result.
Thus a new invention from an existing invention may be patentable if some new technical effect can be shown by the combining of the two inventions in a non-obvious and new way. Thus any new use of an existing invention will always be viewed on its own particular merits and will be examined in the light of what is already known.
Claims of the Indian Government that western scientists are exploiting the healing properties of the spice turmeric raises the question can a new use for an already existing ‘invention’ or product be patented?
Turmeric, made from the roots of a plant native to southern India and Indonesia, has been used by the peoples of those countries for generations in cooking and as a dye, but the yellow powder’s healing properties are now the subject of various patent applications. Similarly, products of the neem tree, which is cultivated throughout India and whose properties as an antiseptic have been known for a number of years, are also the subject of various patent pending applications relating to pesticides.
How is a new use for an old ‘invention’ viewed under British law? Section 1 of the Patents Act 1977 (‘the Act’) provides that a patent may be granted for an invention if four conditions are satisfied. Namely, that the invention is new; that it involves an inventive step; that it is capable of industrial application and finally that the invention is not an ‘excluded invention’ within the meaning of the Act.
The Act provides that certain inventions will not be patentable. These include those inventions which consist of discoveries, scientific theories, schemes or methods of performing a mental act or playing a game, and those which are covered by copyright. Also excluded are computer programs and inventions whose publication or exploitation would be expected to encourage offensive or anti-social behaviour. In addition, a patent will not be granted for any variety of animal and plant.