Q178 draft report.pdf - SFIR

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8 other public institutions, there may be resistance towards accepting the patent obstacles regarding research tools to freedom to operate. In Sweden, the researchers themselves still principally own their inventions conceived at public universities and other institutions with public funding. Whether it be a favorable or unfavorable situation for society is debatable. On the one hand it may arguably promote the entrepreneurial aspect of the patent system. On the other hand it may delay the release of new knowledge because of the secrecy requirements in the early stages of patent processes. The Swedish Group believes, however, that the same principal issues be present if universities and other public institutions would instead own the inventions. 3.4 How should new kinds or categories of inventions be treated? Should there be an enlargement of patent protection? If so, what are the reasons? In the opinion of the Swedish Group, new kind of inventions and categories of inventions should be evaluated within the framework of the current patent system and that the traditional patentability criteria be applied. Hence, if a new invention or category of inventions possess technical character and is novel, if it is sufficiently disclosed and have inventive step it should be granted a patent if it show industrial applicability. The Swedish Group believes, however, that for new inventions and categories of inventions it is important to still strictly apply, for example, the criteria of inventive step and sufficient disclosure. 3.5 If you find the field of patentable subject matter too wide, how should it be limited? What would be the reasons for such a limitation? What do you see as the positive effects of such a limitation? As set forth supra, the Swedish Group believes the balance to be appropriate regarding the field of patentable subject matter. The Swedish Group emphasizes again that it is the strict application of the traditional patentability criteria that should be the focus. 8
9 4. Further points of discussion 4.1 Which upcoming problems do you see specifically as a result of a change of the scope of patent protection regarding the requirements for patentability, in particular novelty and inventive step? We understand the question as referring to possible problems if extending patentable subject matter. Given that the European patent system for patentability has the requirement of technical character, which also seems to be applied by the EPO and national courts, the Swedish Group believes that the traditional patentability requirements be adequate to control any extension of patentable subject matter. This being said, The Swedish Group identifies the importance of a strict application of the patentability criteria, specifically inventive step and sufficient disclosure to commensurate with the scope of the granted patent claim. Because novelty is but one patentability requirement and the initial one to meet, the Swedish Group does not believe that novelty is an issue. If the invention was not in the prior art, i.e., every element of the claim, it is and should of course be novel. The relevant threshold should be inventive step, whose strict application will ensure that only inventions having inventive merit will be granted a patent and, thus, allowed patent protection. In addition, specifically regarding certain fields such as, for example, the biotech field, the Swedish Group perceives that the requirement of sufficient disclosure should be applied so that granted claims commensurate with the disclosure and, hence, with the protection granted to the inventor. 4.2 What are specific problems of the granting proceedings (search, examination) if the scope of patent protection is enlarged? Conducting relevant searches can pose a problem if a technical field is in its initial stage for the obvious reason that there will not be many references published and, thus, be searchable. Another problem can be that the Examiners lack the basic scientific knowledge within a new area and, therefore, will not know how to search for and evaluate 9
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Q178 draft report.pdf - SFIR

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