PATENT

Patent in simple terms refers to the MONOPOLY granted

by the state to an inventor for a limited period, in return
for the disclosure of the invention, so that others may
gain the benefit of the invention.

When an invention is disclosed by its inventor the

document-patent-is issued, upon application, by the
government office which describes the invention and
creates a legal situation in which the patented invention
can normally only be exploited (manufactured, used,
sold, imported) with the authorization of the owner of
the patent Section 1(i) of Act 657 states that patent means
the title granted to protect an invention.

See also Article 28 of TRIPS AGREEMENT an invention

according to A1659 means “an idea of an inventor which

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permits in practice the solution to a specific problem in
the field of technology”.

An invention may relate to a PRODUCT or a PROCESS.

Section 1(3).

Patents are frequently referred to as “monopolies”, but

nowhere, in most Jurisdictions is the inventor or the
owner of a patented invention given the right to make,
use or sell anything. Rather the effect of the grant of a
patent are that the patented invention may not be
exploited in the country by persons other than the owner
of the patent unless the owner agrees to such
exploitation.

In FREE WORLD TRUST V ELECTRO SANTE INC.

[2000] 2 SCR 1024, 2000 SCC 66 Binnie J explained: that

“patent protection rests on the concept of a bargain
between the inventor and the public. In return for
disclosure of the invention to the public, the inventor

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acquires for a limited time the exclusive right to exploit
it…”

Thus the monopoly is limited to the exploitation of the

patented invention-so while the other is not given a
statutory right to practice his invention, he is given a
statutory right to prevent others from exploiting his
invention which is frequently referred to as a right to
exclude others from making, using or selling his
invention.

The right therefore to take action against any person

exploiting the patented invention in the country without
his consent constitutes the patent owner’s most import
and right.

It should however be emphasized that, while the state

may grant patent right it does not automatically enforce
them, and it is up to the owner of a patent to secure it. It
must be stated that while patents can provide great
reward to successful inventors, the presence of it in a

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particular field can be a disincentive to others to invent
in any area close to the patent.

To curtail thus otherwise hindrance, patent protection is

limited to a period of absolute monopoly in exchange for
revealing his invention to the world so that science and
progress are advanced.

Under Section 12 of Act 657, a patent exist for 20 years

from the date of filing the application for the patent.

REQUIREMENTS OF PATENTABILITY

See Section 3

An invention must meet several criteria in order to make

it eligible for patent protection.

An invention satisfy’s the conditions of patentability if

a. It is a patentable subject matter.

b. It is novel or new
c. It involves an inventive step
d. It is of Industrial application
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PATENTABLE SUBJECT MATTER

In order for an invention to be eligible for patent

protection, it must fall within the scope of patentable
subject matters and with strict reference to statute and is
usually defined in terms of the exceptions to
patentability. This leaves the general rule that patent
protection should be available for inventions in all fields
of technology.

If follows that the exceptions to the field of technology

which are excluded from the scope of patentability by
Act 659 include the following!

a. Discoveries, scientific theories and mathematical

methods;

b.Schemes, rules or methods for doing business,

performing purely mental acts or playing games;

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 c. Methods for treatment of the human or animal
body by surgery or therapy, as well as diagnostic
methods practiced on the human or animal body;
this provision shall not apply to products for use
in any of those methods.
d.Inventions, the prevention within the country of
the commercial exploitation of which is necessary
to protect public order or morality, which
includes;

i. The protection of human, animal or plant life or

health; or
ii. The avoidance of serious prejudice to the
environment; if the exclusion is not made because
the exploitation is prohibited.

e. Plants and animals other than micro-organisms

f. Biological processes for the protection of plants or

animals other than non-biological and micro-
biological processes; and
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 g. Plant varieties

See Article 27 of TRIPS PROVISIONS

In addition to the above statutory exceptions, temporary

exclusions from patent protections may be provided for
certain kinds of products or processes for reasons of
public interest, such as for example, pharmaceutical,
agricultural chemicals or inventions in the nuclear field.

NOVELTY

Once the applicant is able to show that the invention is a

form of a patentable subject matter; Act 659 requires that
the invention be “NEW” /Novel.

Section 3

An invention is new according to the Act if it is not

anticipated by the “prior art; (made available to the
public) A prior act shall consist of everything disclosed
to the public, anywhere in the world, by publication in
tangible form or by oral disclosure, by use or in any way,
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prior to the filing or, where appropriate, the priority
date, of the application claiming the invention.

This goes to add that Novelty is a fundamental

requirement in any examination as to the undisputed
condition of patentability.

Novelty is not something which can be proved or

established; only its absence can be proved.

The requirement is strictly “absolute NOVELTY” thus

any relevant “prior art” anywhere in the world in any
form, can defeat the patent. The patent will not be
granted, or if it has been granted, will be revoked.

IDENTIFICATION OF THE PRIOR ART

The disclosure of an invention so that it becomes part of

the prior art may take place in three ways;

(a) - By a description of the invention in a published

writing or publication in other tangible form;
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Publication in tangible form requires that there be some
physical corner for the information, a document, and that
document must have been published, i.e. made available
to the public in any manner such as by offering for sale
or deposit in a public collection.

Publication will include issued patents or published

patents application, writings (in any manner, pictures (in
any manner) and recording, whether they be discs or
tapes in either spoken or coded language.

See Synthan v Smithkline Beecham, (2005) UKHL 59

Where Lord Hottmann summarized two important law
on the subject of disclosure by saying that the “…prior
art must disclose subject-matter which if performed,
would necessarily result in an infringement of the
patent”

It may be that the “prior art” expressly discloses the

same invention so that there will be no question that the
performance of the earlier invention would infringe but

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patent infringement need not require awareness of
infringement

See also Unilin Beheer NV v Berry Floor NV (2005) FSR

56 Jacob LY.

(b) – by a description of the invention in spoken words

altered in public, such as an oral disclosure. Oral
disclosure as the expression suggests, implies that the
lords or form of the disclosure may not necessarily be
recorded as such and includes lectures and radio
broadcasts.

This oral disclosures will not anticipate a patent if they

are in confidence see Vis x Inc v Nidek Co Ltd (1999)
FSR 405

See also Windsurfing Int. Inc. v Tabur marine (Great

Britain) ltd (1985) RPC59

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See pall Corp v Commercial Sty drautics (Bedford) Ltd
(1990) FSR 329 the scope of prior art is not restricted
geographically and there is no restriction on the mode of
disclosure.

The test there for is the priority date of the invention, had
the invention been made available to the public, other by
the invention or by others? The inventions will be said to
have been made available to the public if sufficient
information has previously been disclosed to enable the
invention to be put into effect.

NB: This makes it an objective test. The Courts have also

recognized “Novelty of purpose” meaning an inventor
can seek patent protection for a new use for an old thing.

This mostly arises with drugs and medicines, where new

uses are found for old drugs. So long as the use was not
anticipated, a patent can be granted.

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(C) – Use of the invention in public or by putting the
public in a position that enables any member of the
public to use it.

This includes visual disclosure such as by display, sale

demonstration, unrecorded television broadcasts and
actual public use.

See Lux Traffic Controls Ltd v Piker

Signals Ltd (1993) RPC 107

 Evans Medical’s Patent [1998] RPC. 517

MUST INVOLVE AN INVENTIVE STEP

This requirement is also sometimes described as the

requirement of NON OBVIOUSNESS.

This leaves us with the question of whether or not the

invention “would have been obvious to a person having
ordinary skill in the art;

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This requirement is premised on the ground that
protection should not be given to what is already known
as part of a prior arts or to anything that the person with
ordinary skill could deduce as an obvious consequence.

The expression ordinary skill is intended to exclude the

“best” expert that can be found. It is limited to a person
having the average level of skill reached in the field
concerned. It should be noted that NOVELTY and
INVENTIVE STEP are different Criteria.

Novelty exists if there is any difference between the

invention and the prior art but the inventive step only
arises if there is novelty.

The expression “inventive step” conveys the idea that it

is not enough that the claimed invention is new, that is,
different from what exists in the state of the art, but
that this difference must have two characteristic

First It must be “inventive” that is, the result of a creative

idea, and 2nd It must be a step that is, it must be
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noticeable. That is there must be a clearly noticeable
difference between the state of the art and the claimed
invention.

Secondly, the advance or progress must be significant

and essential to the invention.

THE TEST

In order to access the nature of the differences which are

relied upon as constituting an inventive step, account has
to be taken of the prior art as a whole.

It is the sum, of the differences that have been discovered

which must be compared with the prior art and judged
as to obviousness, and not each of the elements of the
invention taken individually, except where there is no
technical link between them.

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Lord Hoffmann in Biogen Inc v medeva Plc [1997] RPC
1 said of inventive step thus

“Sometimes, it is the idea of using established techniques

to do something which no one had previous though of
doing.

In that case, the inventive step will be doing the new

thing.

Sometimes, it is finding a way of doing something which

people had wanted to do but could not think how, the
inventive idea 1(step) would be the way of achieving the
goal in set other cases, many people…may have a
general idea of how they might achieve a goal but not
know how to solve a particular problem which stands in
their way.

If someone devises a way of solving the problem, this

inventive step will be the solution but not the goal itself
or the general method of achieving it”.

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  Judge Hand of the Us C.A has described the
requirement of inventive step as “one of the most
“Fugitive, impalpable, way ward and vague a
phantom as exists in the whole paraphernalia of
legal concepts”

The question of ‘inventive step is usually a question of fact.

The justification for the inventive step requirement is that
patents should only be granted for inventions that are truly
inventive, and not for just slight changes or improvements to
existing technologies.

As the Court of Appeal said in PLG RESEARCH V ARDON

INT. [1995] RPC 287. The philosophy behind the doctrine of
obviousness is that the public should not be prevented from
doing anything which was merely an obvious extension or
workshop variation of what was already known at the prior ...

The test for inventive step as laid down in WINSURFING

INTERNATIONAL V. TABUR MARINE (GREAT BRITAIN
LTD) [1985] RPC 59
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(1). Is that the Court or patent office must begin by
identifying the inventive concept embodied in the patent.

(2). The Court should then identity the differences that

exists between the cited prior art and the alleged invention.

(3). Finally, the Court should ask whether, issued without

any knowledge of the alleged invention, those differences
constitutes steps that would have been obvious to the
skilled man or whether they required a degree of
invention?
This test requires that the invention be examined through the
eyes of someone skilled (experts) in the art.
This test is an objective one viewed through the eyes of the
average practitioner.
The actual process used is irrelevant. The applicant may have
engaged in years of research and experimentation- but if THE
ANSWER FOUND WOULD HAVE BEEN OBVIOUS TO
THE AVERAGE PRACTITIONER SKILLED IN THE ART,
IT IS STILL OBVIOUS.
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INDUSTRIAL APPLIABILITY
An invention in order to be patentable, must be of a kind
which can be applied for practical purposes, not be purely
theoretical.
If the invention is intended to be a product or part of a product,
it should be possible to make it and if the invention is intended
to be a process or part of a process, it should be possible to
carry it out or “use” it in practice.

“Applicability” as an expression reflects respectively, the

possibility of making and manufacturing in practice, and that
of carrying out or using in practice and “Industrial” connotes a
technical activity on a certain scale, thus the industrial
applicability of an invention means the application of an
invention by technical means on a certain scale.

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See ELILILLY & CO. V HUMAN GENANE SCIENCES

INC. [2008] RPC 29 [2010] RPC 14 CHIRON CORP V

ORIGANON

[1994] FSR 202 AND [1996] F.S.R 153.

EXCLUSIVE RIGHT

Section 4 of the Acts 657 provides that the right to a patent

belongs to the inventor.

Where two or more persons have jointly made an invention,

the right to the patent belongs to them jointly

Where an inventions is made in Execution of an employment

contract, the night to the patent belongs in the absence of any

contracted provisions to the contrary, to the employer.

 UNILIVER PLC * ORS V SHANKS [2010] EW CA Civ

1283

 ELECTROLUX LTD V HUDSON [1977] FSR 312

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The right given to an inventor of a patent is not MONOPOLY.

He acquires the right enforceable at law to decide who exploits

his patented invention.

He retains this right for the term of the patent, provided

he pays the necessary annual renewal fee

See Section 12 (2)

In UNITED STATES V DUBILIER CONDENSER CORP

289 US 178 [1933]

The S.C. said “Though often so characterized, a patent

is not accurately speaking a monopoly, for it is not
created by the executive authority at the expense and to
the prejudice of all the community except the grantee of
the patent. The term ‘monopoly’ connotes the giving of
an exclusive privilege for buying, selling, working or
using a thing which the public freely enjoyed prior to the
grant…An inventor deprives the public of nothing
which it enjoyed before his discovery, but gives

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something of value to the community by adding to the
sum of human knowledge”.

The exclusive right given the inventor is as enumerated

under Section 11

 The exploitation of the patented invention in the

country by a person other than the owner of the
patent or with his consent.

The exploitation of a patented products means

i. Making, importing, offering for sale, selling and

using the product; or
ii. Stocking the product for the purposes of offering
for sale, selling or using;

The exploitation of a patented process means

i. Using the process

ii. Doing any of the acts supra in respect of a product
obtained directly by means of the process. Section
11(2)6

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LIMITATION

The patent owners rights over his invention are however

limited in a number of ways.

The rights shall not extend to

a. Acts in respect of articles which have been put on

the market in any country by the owner of the
patent or with the consent of the owner
b.The use of articles on aircraft, vehicles or vessels of
other countries which temporally or accidentally
enter the airspace, territory or waters of the Ghana;
or
c. Acts done only for experimental purposes relating
to a patent invention or
d.Acts performed by a person who is good faith,
before the filing or, where priority is claimed, the
priority date of the application on which the patent
is granted in the country, was using the invention or

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 was making effective and serious preparations for
the use.

The exclusive right of the patent owner has two main

application in practice, namely protection against
infringement, and the possibility of assigning or licensing
the right in part or in whole.

Section 4 (4) provides that the right to a patent may be

assigned, transferred or devolve by Succession.

REMEDIES FOR INFRINGMENT

See Section 11 (6, 7 & 8)

Section 13

Section 14

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