Comparative Patent Law Uk, Eu, Us.
Comparative Patent Law: UK, EU, and US
Patent law across jurisdictions shares some core principles—novelty, inventive step (or non-obviousness), and industrial applicability (utility)—but differs in patentable subject matter, enforcement, and scope.
We’ll examine the UK, EU, and US frameworks, highlight key differences, and explain case law that illustrates these principles.
1. Core Requirements of Patentability
| Jurisdiction | Requirements |
|---|---|
| UK (Patents Act 1977) | Novelty, inventive step, industrial applicability, sufficiency of disclosure, non-excluded subject matter |
| EU (EPC 1973 / EU Regulations) | Novelty, inventive step, industrial applicability, excluded subject matter includes methods of treatment, plant varieties (some exceptions) |
| US (35 USC) | Novelty (102), Non-obviousness (103), Utility (101), enablement and written description, subject matter includes processes, machines, compositions of matter, excludes abstract ideas, laws of nature |
Key Differences:
US utility requires “specific, substantial, and credible” utility; UK/EU focus on industrial applicability.
Software/AI: UK/EU exclude “programs as such”; US allows patenting if technical effect or application exists.
Medical methods: EU excludes methods of treatment; US allows process patents (with exceptions for natural laws).
2. Case Laws Illustrating Patent Law Principles
Case 1: Aerotel Ltd v Telco Holdings Ltd [2006] (UK)
Facts: Patent for a method of making telephone calls using software.
Issue: Whether the invention was patentable subject matter.
Judgment:
UK Supreme Court established the Aerotel/Macrossan test for computer-implemented inventions:
Properly construe the claim.
Identify the contribution.
Ask whether it falls solely within excluded subject matter.
Check whether the contribution is technical in nature.
Principle: Software is patentable in the UK if it provides a technical contribution.
Case 2: Eli Lilly v Actavis (2015) (UK)
Facts: Patent dispute over pharmaceutical formulations.
Issue: Interpretation of patent claims and scope of protection.
Judgment:
Courts allowed broad interpretation of claims to include equivalents (doctrine of equivalents).
Principle: UK patent law protects not only literal infringement but also equivalent technical solutions.
Case 3: G 1/19 – European Patent Office (EPO) (2021) (EU)
Facts: EPO Board of Appeal examined AI-generated inventions.
Issue: Can an AI system be named as an inventor in Europe?
Judgment:
Only a natural person can be named as inventor. AI cannot hold patent rights.
Principle: EU law recognizes human inventorship, influencing patent filing and ownership of AI innovations.
Case 4: Biogen v Medeva [1997] (UK)
Facts: Patent on a new therapeutic protein.
Issue: Whether the patent disclosed enough for industrial application.
Judgment:
Patent must allow a skilled person to reproduce the invention without undue experimentation.
Principle: UK and EU require sufficiency of disclosure; US has similar “enablement” requirement under 35 USC §112.
Case 5: Diamond v Chakrabarty (US, 1980)
Facts: Patent on a genetically modified bacterium capable of breaking down crude oil.
Issue: Whether living organisms are patentable in the US.
Judgment:
US Supreme Court held that “anything under the sun made by man” is patentable.
Principle: US patent law is broad on patentable subject matter, unlike EU/UK, which may exclude some living matter.
Case 6: Mayo Collaborative Services v Prometheus Labs (US, 2012)
Facts: Method for determining drug dosage based on metabolite levels.
Issue: Patent-eligibility of natural laws.
Judgment:
US Supreme Court invalidated the patent as it claimed a natural law, not a patentable invention.
Principle: US law excludes laws of nature, abstract ideas, similar to EU exclusions, but UK courts often focus on technical contribution.
Case 7: Halliburton v Smith International (UK, 2006)
Facts: Software-implemented oilfield process patent.
Issue: Whether software-based method is patentable.
Judgment:
Patent valid only because it produced a technical effect in oilfield operations.
Principle: Reinforces UK/EPO emphasis on technical contribution for computer-implemented inventions.
Case 8: Association for Molecular Pathology v Myriad Genetics (US, 2013)
Facts: Patents on isolated DNA sequences.
Judgment:
US Supreme Court invalidated patents on naturally occurring DNA sequences.
Principle: US excludes natural phenomena; EU and UK follow similar reasoning for genes (Directive 98/44/EC allows isolated sequences only if industrial application is shown).
3. Comparative Summary
| Aspect | UK | EU | US |
|---|---|---|---|
| Patentable Subject Matter | Technical contribution required; software/methods may be patentable if technical | Technical effect; excludes methods of treatment and plant varieties; AI must have human inventor | Broad; anything made by man; excludes abstract ideas, laws of nature, natural phenomena |
| Software/AI | Patentable if technical effect (Aerotel) | Technical effect required | Patentable if useful application; technical implementation preferred |
| Medical Methods | Excluded in principle (methods of treatment) | Excluded (methods for treatment) | Allowed for processes; natural laws excluded |
| Sufficiency/Enablement | Must allow skilled person to reproduce | Same | Must enable a person skilled in the art (35 USC §112) |
| Doctrine of Equivalents | Yes (Eli Lilly v Actavis) | Limited | Yes, under 35 USC 112(f) |
| Inventorship (AI) | Human only | Human only | Human only (currently) |
4. Key Observations
US patent law is broader in scope and more permissive for biotech and software innovations.
UK/EPO emphasize technical contribution for software/AI and exclude certain methods of treatment.
Enablement/sufficiency is critical across all three jurisdictions; inventions must be reproducible.
AI-generated inventions face challenges in all jurisdictions because inventorship must be a human.
Patent enforcement strategies differ due to scope differences: US allows broader claim interpretation, UK/EPO focus on technical contribution and industrial applicability.
5. Practical Implications
Innovators must tailor patent applications to each jurisdiction.
AI, biotech, and software inventions face inventorship and patentable subject matter hurdles in UK/EU, less so in the US.
Conduct freedom-to-operate and prior art searches across jurisdictions to mitigate infringement risk.
Carefully draft claims to maximize technical effect coverage in UK/EU and broad functional coverage in the US.
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