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Pila, Justine --- "The Future of the Requirement for an Invention: Inherent Patentability as a Pre- and Post-Patent Determinant" [2011] ELECD 973; in Arezzo, Emanuela; Ghidini, Gustavo (eds), "Biotechnology and Software Patent Law" (Edward Elgar Publishing, 2011)

Book Title: Biotechnology and Software Patent Law

Editor(s): Arezzo, Emanuela; Ghidini, Gustavo

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781849800402

Section: Chapter 3

Section Title: The Future of the Requirement for an Invention: Inherent Patentability as a Pre- and Post-Patent Determinant

Author(s): Pila, Justine

Number of pages: 36

Extract:

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 con-
tribution to the art for which a European patent is granted is the inven-
tion.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 ...