‘Academic’ Intelligence: Are Genes Patentable Under UK Law? Part One, Overview of Patent

Link to podcast to follow

As promised last week, in today’s article, I shall endeavour to provide the readers with a critical discussion of whether human genes can be patented under UK law.

In order for me to be able to so, however, it is essential to first of all look at the intellectual property (‘IP’) right of ‘patent’ in a bit more detail.

Thus, part one of the article will look at the criteria required to register a patent and part two of the article will assess whether a gene (or the process of extracting it fits those criteria).

The current UK law dealing with patents is the Patents Act 1977 (‘PA’) as amended.

Under the act, one can patent both a product AND a process.

It must be noted that, as with registered design and trademark, a patent gives the owner a monopoly right; id est, so long as the patent is registered in his name, the owner can enforce it against the world without having to prove subsistence in it.

Further, as with any other IP right, patents can be assigned or licensed (fully or partly) to other parties (s. 30 (2) PA, s. 33 PA + s. 30 (6) PA requirement for the grant of an assignment or license to be in writing).

The requirements that need to be satisfied before registered a patent are outlined in s. 1 PA.

Namely:

• Novelty
• Inventive Step
• Capable of Industrial Application
• Not excluded by the PA

For the purposes of today’s article, a brief explanation of each is essential.

Novelty- s. 2 PA

The product/ process must be ‘new’ and must NOT form a part of the state of the art available to the public  at the priority date (date of filing application as per s. 5 PA)

The ‘state of the art’ is defined in s. 2 ( 2) as:

“All matter (whether a product, a process, information about either, or anything else) which has, at any time before the priority date of that invention, been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.”

It must also be noted that exposing a product/ process to the public might result in enabling disclosure which will prevent the owner from registering a patent for the said process/ product. (so long as the disclosure has disclosed enough for a skilled person to be able to work the product/ process, Windsurfing International v Tabur Limited [1985] RPC 59)

Inventive Step- s.3 PA

 The new product/ process must involve an ‘inventive step’ which is not obvious to the person skilled in the art. Id est, it must have not been apparent to the skilled but unimaginative professional.

Capable of Industrial Application- s. 4 PA

The invention is capable of industrial application if it can be ‘made or used in any kind of industry, including agriculture’

Not Excluded by PA

S. 1 (2) provides an non- exhaustive list of a number of things that cannot be registered as patents:

•  A discovery, scientific theory or mathematical method.
• A literary, dramatic, musical or artistic work.
•  A scheme, rule or method for performing a mental act, playing a game or
• doing business, or a program for a computer.
•  The presentation of information.

In next week’s article, by applying the above criteria, I shall try to establish whether a human gene (or the process for extracting or cloning one) can be patented under PA and whether the position closely resembles or greatly differs the one in the USA.