Intellectual Property Law

Unit 3: Patent Law

 Definition
Section 2 of the Industrial Property Act 2019 (IPA):
“patent” means the title granted to protect an invention

“invention” means an idea of an inventor which provides, in

practice, the solution to a specific problem in the field of
technology and which may be, or may relate to, a product
or a process;

Patent gives an inventor exclusive rights to his invention.

It covers how things work, what they do, how they do it,
what they are made of and how they are made.
• Patent law concerns new, industrially applicable
inventions. It reserves a very powerful mode of
protection for new inventions that meet very
specific standards.

• The grant of a patent gives to the inventor a

monopoly over the invention for a period of time
not exceeding 20 years

• Once the duration of the patent expires, the

invention is then available to the public and
anybody can make use of it.
Requirements

Section 11(1) IPA provides:

Patentable invention
(1) An invention shall be patentable where it –

(a) is new;
(b) involves an inventive step; and
(c) is industrially applicable
a) Invention is “New”

• Section 11(2) IPA provides that

“An invention shall be new where it is not anticipated
by prior art.”

Section 2 IPA provides:

“prior art” includes anything disclosed publicly
anywhere in the world, before the filing date or,
where applicable, the priority date, of an application
for a certificate, whether by publication in tangible
form, by oral disclosure, by use or in any other
manner
Lux Traffic Controls Ltd v Pike Signals Ltd
[1993] RPC 107 CHd
What amounts to disclosure to the public?

Field trials of a traffic light control system were

carried out before the relevant filing in this case.
Where prior use is concerned, there is no need for a
skilled person to actually examine the invention as
long as they were free in law and equity to do so and
had a skilled person examined it, he would have
seen how it worked. If the invention has been
communicated to the public without inhibiting
fetter, then that would be enough to make it
available to the public. The relevant claim in the
patent was held to be invalid on the found of lack of
novelty.
“it is settled law that there is no need to prove
that anybody saw the disclosure provided the
relevant disclosure was done in public. Thus an
anticipating description in a book will invalidate
a patent even if the book is on a shelf in a library
open to the public whether or not anybody reads
the book or whether or not it was situated in a
dark and dusty corner of the library.”
b) Inventive step

Section 11(3) IPA :

(3) An invention shall involve an inventive step

where, having regard to the differences and
similarities between the claimed invention and
the prior art, the claimed invention as a whole
would not have been obvious to a person having
ordinary skill in the art at the filing date or,
where applicable, the priority date of the claimed
invention.
c) Industrially applicable

Section 11(4) of IPA:

An invention shall be industrially applicable

where it can be made or used in an industry
Matters excluded from patent protection
Section 10 IPA provides that the following shall be excluded from patent
protection –
(a) discoveries, scientific theories and mathematical methods;
(b) literary, dramatic, musical or artistic works and any other aesthetic
creation;
(c) schemes, rules or methods for doing business, performing purely mental
acts and playing games;
(d) computer programmes;
(e) methods for the treatment of the human or animal body by surgery or
therapy, including diagnostic methods practised on the human or animal
body;
(f) known substances for which a new use has been discovered and not
applicable to the use itself, where they constitute a patentable invention
under section 11;
(g) plants and animals, including their parts, other than microorganisms, and
essentially biological processes for the production of plants or animals and
their parts, other than non-biological and microbiological processes; and
(h) an invention, the primary or intended use of which would be contrary to
public order or morality, whether or not the commercial exploitation of the
invention is prohibited by law.
Rights conferred by patent

Section 21(1) (a) IPA:

The owner has the right to prevent any other person
from exploiting the patented invention.

Section 21(1) (b) IPA:

The rights of the owner of a patent shall be defined
by the claims set out in the application for the patent

Section 21(2) IPA: Provides for the circumstances

where rights conferred by the grant of a patent shall
not extend to
Employer and Employee
Generally, the inventor has a right to the patent (S. 12(1) IPA)

Invention is made by employee under an employment

contract
Where an employee made an invention, in the execution or
under an employment contract, in the absence of any contrary
contractual obligation the right to patent belong to the
employer,

Where the economic gains obtained by the employer are

disproportionately high as compared to the employee’s salary
and the reasonable expectations of gain that the employer had
from his employee’s inventive output at the time the employer
hired the employee, the employee shall be entitled to
appropriate compensation which shall not be less than one
third of the net direct and indirect gains obtained by the
employer from the exploitation of the invention. (S. 4(b) IPA)
Invention is made by employee outside an
employment contract
i) Inventor has a right to patent (S. 12(1) IPA)

ii) An invention made by an employee, otherwise than in the

execution of, or under, an employment contract;
but the employee used material, data or know-how of the
employer to make the invention,
the right to the patent shall, in the absence of any contrary
contractual provision, belong to the employer. (S. 5 IPA)

Employment of the employee has been terminated

Any invention claimed in an application for a patent filed by

an employee within one year from the date of termination of
an employment contract which falls within the scope of the
former employer’s main business shall be presumed to have
been made under the terminated contract, unless the
employee produces proof to the contrary.
When can an employee have a right to patent?
i) When an employer doesn’t wish to claim a
patent for the employee’s invention
• Within 60 days from the date of receipt of a
communication from an employee about the making
of the invention
• Employer gives written notification to employee that
he is not interested
• Employee has the right to patent exclusively

ii) Employer fails to file an application

• When the employer fails to file an application for a
patent within one year from the date he receives
written notification from an employee of the making
of an invention
• Right to the patent belong to the employee
Application to Patent
• The application is submitted to the Industrial Property
Office and the application fee

• The application will include the title of the invention, its

description, any claim, drawing and an abstract.

Withdrawal of the application

Section 8 IPA:
An applicant may, before an application is granted,
withdraw the application on payment of the prescribed
fee.
Where an application is withdrawn without having been
open for public inspection and no rights have been
claimed or are outstanding in connection with the
application, a subsequent application may be made in
respect of the same invention.
Duration of a patent

Section 22(1) IPA:

A patent shall expire 20 years after the filing
date of the application for the patent.

The patent owner shall pay such annual fee as

may be prescribed, within such time as may be
prescribed.

Where the prescribed annual fee is not paid

(i) the application for the patent shall be
considered to have been withdrawn; and
(ii) the patent shall lapse.
The application shall include –
• (a) the name of, and such other data as may be
prescribed concerning, the applicant, the
inventor and his agent, if any;
• (b) the title, a description of the invention and
the claims, including any drawing and an
abstract;
• (c) where the applicant is not the inventor, a
statement justifying the applicant’s right to the
patent; and
• (d) where the applicant’s ordinary residence or
principal place of business is outside Mauritius,
an address within Mauritius
Genetic and Biological Resources

The description referred to shall contain a clear

identification of –
(i) the origin of genetic or biological resources
collected in Mauritius and directly or
indirectly used in the making of the invention;
and
(ii) any element of traditional knowledge
associated or not associated with those
resources, which was, with the prior informed
consent of Mauritius, directly or indirectly
used in the making of the claimed invention.
Unity of Invention, Amendment, Division of application
and Withdrawal
Unity of Invention
An application for a patent shall relate to one invention only or to a
group of inventions so linked as to form a single general inventive
concept. (Section 14(1) IPA)

Amendment
Section 14(2) IPA provides that:
An applicant may, in writing, amend an application at any time
before it is granted where the amendment does not go beyond the
matter claimed in the initial application.

Division of Application
Section (3) IPA:
(a) An applicant may, before the application is open for public
inspection, divide an application into 2 or more divisional
applications which shall not go beyond the matter disclosed in the
initial application.
(b) Every divisional application shall be entitled to the filing date or,
where applicable, the priority date of the initial application.
Withdrawal
Section(8)IPA:
An applicant may, before an application is
granted, withdraw the application on payment of
the prescribed fee.

Where an application is withdrawn without

having been open for public inspection and no
rights have been claimed or are outstanding in
connection with the application, a subsequent
application may be made in respect of the same
invention.
Section 18 IPA:
Publication of patent application
The Director shall, after 18 months from the filing date –
(i) open an application for a patent for public inspection; and
(ii) give notice in the Gazette of the opening of the application
for inspection.

The notice shall include –

(i) the number and the filing date of the application;
(ii) the title of the invention;
(iii) the priority date, where applicable;
(iv) the name of the applicant or applicants and of the inventor
or inventors;
(v) the name and address of the approved agent, if any;
(vi) the International Classification;
(vii) one drawing, if any, that depicts the main elements of the
invention; and
(viii) the abstract.
Notice of Objection
• An interested party may, file a notice of
opposition with the Director.
• A copy of the notice of opposition is given to the
applicant.
• The applicant may file a counter-statement.
• IPO may conduct a hearing for the applicant and
the opponent to argue their case and submit
evidence
Invalidation of grant of patent
Section 25 IPA:
An interested person may apply to the Tribunal
for the invalidation of a patent where –
(a) the matter is excluded from patent protection
(b) It does not amount to an invention
(new/inventive step/industrial application)
(c) the owner of the patent is not the inventor or
his successor in title; or
(d) the owner of the patent is shown to have
engaged in inequitable conduct in order to be
granted the patent.
Compulsory licence for patent
Section 23 IPA:
Where the competent authority is satisfied that –
(a) the public interest, including national security, nutrition,
health or the development of other vital sectors of the
national economy, so requires;
(b) a judicial or administrative body has determined that the
manner of exploitation, by the owner of a patent or his
licensee, is anticompetitive, and that the exploitation of the
invention in accordance with this subsection would remedy
such practice;
(c) the owner of the patent is abusively exercising his exclusive
rights or neglecting to take measures to prevent his licensee
from abusively exercising those rights; or
(d) the invention is not available in sufficient quantities or
quality or at predetermined reasonable prices in Mauritius,
he may, without the consent of the owner of the patent,
authorise a Government agency or a third party to exploit
the patented invention.