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Creators’ acid tests: Practical implications of three-fold patentability criteria


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The Intellectual Property (IP) system of Sri Lanka is governed and regulated by the Intellectual Property Act No. 36 of 2003. Further, there are international legal documents such as trade-related aspects of Intellectual Property rights (TRIPS) by World Intellectual Property Organization and Patent Cooperation Treaty (PCT) of 1970 which are important to understand the practical and permissive uses of IP. Patents, copyrights and trademarks among other things are the different categories of “properties created by the intellects and cognitional skills of human-being”. 

However, creations of the mind are almost like “crops on unfenced land” and could be stolen, hacked or attacked by others. These are by competitors who have malicious intentions to harm the inventions of creators. In this light, all forms of intellectual property needs to be legally protected as a means of managing IP. In Sri Lanka, patent protection is granted for the applicable subject matter derived from technology or technical underpinnings, for 20 years from filing date of application for its registration (S. 83, 2003). However, there is a legitimate and complex procedure to grant registrations for the patent applications. 

n Application and registration of resident patents is 263 and 38 respectively in 2017 (NIPO, Jan-Nov); 225 resident patent applicants denied patent registration.

n Application and registration of non- resident patents is 223 and 102 respectively in 2017 (NIPO, Jan-Nov); 121 non-resident patent applicants denied patent registration.

Evidence shows that while patent protection is important for different commercial reasons the testing criteria are systematic and competitive (Chapter X1). Novelty, inventive step and industrial applicability are the three (03) patentability tests prescribed by law (S. 63, 2003) and endorsed by international legislation (Article 27(1), TRIPS). The test of novelty or newness (S. 64, 2003) is a measure of to what extent an invention is made publicly available and made-known to different stakeholders or future investors of such products. 

The awareness of such inventions is driven by classes of novelty: absolute (Universal), relative and local which are three different forms. When a product is known to a specific country, region or locality it is supported by local novelty. Universal newness is when a creation is known over the world without any doubt. Novelty is a test of “comparison in isolation”. Information of the creation is available in one single document or database and, combining separate information from former creations is not permitted. 

Golan Heights Wine is a creation protected by local novelty and lately attained relative novelty standards as it was aware by the middle-eastern competitors. The production, processing and packaging criteria are specified in a single winery recipe which is known to manufacturer and the wine industry in particular. Well-known beverages are supported by universal novelty standards. 

The second test of patentability – inventive step (S. 65, 2003) means that a new creation is non obvious to any person who is skilled in the art (PHOSITHA) under consideration. In the case of hybrid vehicles it can win the test if the vehicle mechanism has a functional feature(s) which is remarkable to any person skilled as a vehicle mechanic or similar skill or automobile enthusiast. It means the product is unique and arouses “wow” in the eyes of any PHOSITHA. It is a “comparison in whole” and a holistic perspective of a novel creation. Thus the creation is compared as a whole against any existing or previous creations (prior art) as a whole. 

In the example of fizzy drinks with low-sugar there is a mosaicking effect between the novel drink and existing products, by manufacturer or competitors. A low-sugar drink has literally passed the test of novelty since it is a creative product made aware to public and health conscious persons. However, the relatively stringent test of inventive step requires that the low-sugar beverage is a development over existing drinks in terms of taste and healthiness. The technical-basis for formulae, calories and nutrition percentages should be appealing to both the health conscious persons and nutritionists to enable succeeding the second test. 

The final test – capable of industrial application or utility (S. 66, 2003) is a functional test for subject matter which is already regarded novel and inventive. The practical application and usefulness of a creation is sought for in this test. In the case of glass lenses the utility test is attained when the creation beyond prior art, can be used in any related industry. Hence glass lenses can be used for spectacles, photographic cameras, photochromic services, telescope and scientific creations catering to diverse; but related industries. 

In the case of pharmaceuticals, the bacteria and micro-organisms used for production of drugs or surgical methods to treat humans may be excluded from patentability (Article 27 (3) (a), TRIPS; S. 62(3)(d), 2003 ). Despite being an inventive, effective and technically-advanced drug as a cure for cancer, Glivec TM was not patented as it violated the norms of the industry. The formulae bacteria was harmful and against the interests of chemists, patients and the medical fraternity. 

Hence, there are several practical implications on resident patent applicants both individuals and organisations. Firstly, research on prior-art with due diligence. This would facilitate the development of creations that well surpasses the test of inventive step. Secondly, tender applications for patent registrations without undue delay. It would sharpen the consciousness of local creators that foreign applicants could also be imminent competitors when patent registration is granted by the National IP office of Sri Lanka. Thirdly, justify multiple uses of novel creations based on diverse industries both locally and overseas. This would permit the creations to be patented despite not reaching the utmost standards of novelty and inventive steps. The creators of inventions firmly stand by the acid tests of patentability. 

 (The writer is a lawyer by profession, university lecturer, researcher and an IP consultant.)


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