Biotechnological inventions

PROTECTION OF BIOTECHNOLOGICAL INVENTIONS

  • – biological material means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system,
  • – microbiological process means any process involving or performed upon or resulting in microbiological material,
  • – essentially biological process for the production of plants or animals means such a process, which consists entirely of natural phenomena such as crossing or selection.


Patentable biotechnological inventions

Biotechnological inventions are patentable, if they concern

  • – biological material, which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature,

  • – plants or animals, if the technical feasibility of the invention is not confined to a particular plant or animal variety, or

  • – microbiological or other technical process and a product, other than a plant or animal variety, obtained by this way.


Exclusions of patentability

Patents shall be not granted to

  • -inventions, whose commercial exploitation would be contrary to public policy or to principles of morality, namely to processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, processes of using human embryos for industrial or commercial purposes or processes for modifying the genetic identity of animals, which are likely to cause them suffering without any substantial medical benefit to man or animal, and also to animals resulting from such processes; however, the contradiction to public policy or to principles of morality shall not be deduced merely from the fact that the exploitation of the invention is prohibited by legal regulation,
  • -human body at various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene; it does not apply to an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, even if the structure of that element is identical to that of a natural element, and plant and animal varieties or essential biological processes for the production of plants or animals.

Special provisions on the application of biotechnological invention

Where an invention involves the use of or concerns biological material which is not available to the public and which cannot be described in a patent application in such a manner as to enable the invention to be reproduced by a person skilled in the art, the description shall be considered inadequate unless:

  • – the biological material has been deposited no later than the date, from which the right of priority belongs to the applicant, with the recognised depositary institution, which has acquired this status by virtue of Article 7 of the Budapest Treaty of 28 April 1977 on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, (hereinafter referred to as the “Budapest Treaty”),
  • – the application of invention as filed contains such relevant information as is available to the applicant on the characteristics of the biological material deposited, and
  • – the patent application states the name of the depository institution and the accession number of the sample.

Access to the deposited biological material shall be provided through the supply of a sample:

  • -between the first publication of the application and the granting of the patent, to anyone requesting it (hereinafter referred to as the “petitioner”) or, if the applicant so request, only to an independent expert, or
  • -after the patent has been granted, and notwithstanding cancellation of the patent, to anyone requesting it.

The applicant is entitled to limit access to the deposit material for 20 years from the date on which the patent application was filed to anybody, except an independent expert, even in case, where the application is refused or withdrawn; in that case. The applicant shall notify the limitation of access to the deposit biological material, to the Industrial Property Office (hereinafter referred to as the “Office”) at the latest on the date, on which the preparations for publishing the patent application have been completed. The Office will publish such a limitation of access to the deposit biological material together with the invention application in the Bulletin of the Industrial Property Office. If the biological material deposited ceases to be available from the recognised depository institution, a new deposit of the material shall be permitted on the same terms as those laid down in the Budapest Treaty.

Any new deposit shall be accompanied by a statement signed by the depositor and certifying that the newly deposit biological material is the same as that originally deposited. If the application concerns an invention of the sequence or partial sequence of a gene, their industrial applicability must be made obvious in the patent application.


Scope of protection

The protection conferred by a patent on a biological material possessing specific characteristics as a result of the invention shall extend to any biological material derived from that biological material through propagation or multiplication in an identical or divergent form and possessing those same characteristics.

The protection conferred by a patent on a process that enables a biological material to be produced possessing specific characteristics as a result of the invention shall extend to biological material directly obtained through this process and to any other biological material derived from the directly obtained biological material through propagation or multiplication in an identical or divergent form and possessing those same characteristics.

The protection conferred by a patent on a product containing or consisting of genetic information shall extend to all material, in which the product is incorporated or in which the genetic information is contained and performs its function, except the human body at the various stages of its formation or development.


Limitation of rights of patent holder

The person, who has obtained the plant propagating material being subject of the patent from its holder or with his consent, is authorised to use for reproduction during his agricultural activity except commercial exploitation, also the product of his harvest.

The person, who has obtained the animal reproductive material being subject of the patent from its holder or with his consent, is authorised to use this material during his agricultural activity except commercial exploitation; this includes making the animal or other animal reproductive material available.

Revocation of the Patent

– The Office shall revoke the patent, if it is ascertained subsequently:

  • a) that the invention did not meet the conditions of patentability;
  • b) that the invention is not disclosed in the patent so clearly and completely, to be carried out by a person skilled in the art;
  • c) that the subject-matter of the patent extends beyond the content of the invention application as filed or the subject-matter of the patents granted on the divisional application extend beyond the content of the invention application as filed, or the extent of the protection arising from the patent was extended;
  • d) revocation upon the request of the authorised person;

If the grounds for revocation concern only a part of the patent, the patent shall be revoked in part. The partial revocation of the patent shall be carried out by the amendment of claims, description or drawings. Revocation of a patent shall have retroactive effect to the date on which the patent became valid. The request for revocation of a patent may be filed even after lapse of the patent if the person filing the request can prove a legal interest.

Patentability of Inventions

Patents shall be granted for any inventions which are new, which involve an inventive step and which are susceptible of industrial application.

The following in particular shall not be regarded as inventions:

  • – discoveries, scientific theories and mathematical methods;
  • – aesthetic creations;
  • – schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers;
  • – presentations of information.

The patentability of the subject-matter or activities is excluded only to the extent to which an application or a patent relates to such subject-matter or activities as such.

Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application. This provision shall not apply to products, in particular substances or compositions, for use in these methods for treatment and these diagnostic methods.

Exclusions from patentability

Patents shall not be granted in respect of:

– inventions the exploitation of which would be contrary to public order or morality; this fact may not be concluded merely because the exploitation of invention is prohibited by law;
– plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes and the products thereof.


Novelty

– An invention shall be considered to be new if it does not form part of the state of the art.

– The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, prior to the date from which the right of priority belongs to the applicant.

– The state of the art shall also comprise the content of applications for inventions filed in the Czech Republic which enjoy earlier priority and have been published on or after the date from which the priority right belongs to the applicant. This provision shall also apply to the international applications of inventions with the earlier right of priority, where the Office acts as a designated Office, and to the European patent applications with the earlier right of priority where the Czech Republic is a validly designated state. Invention applications kept secret under special provisions shall be considered to have been published on expiry of an 18-month period as from the date on which the priority right began.

– The disclosure of an invention which took place no earlier than six months prior to the filing of the application shall not been considered as being part of the state of the art if it was due to or in consequence of:

  • a) an evident abuse in relation to the applicant or his legal predecessor,
  • b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised, exhibition within the terms of the relevant international treaty.In such case, it shall be for the applicant to declare, when filing the application, that the invention has been displayed and to produce in support of his declaration, within a period of four months as from filing, a certificate attesting that the invention has been displayed in compliance with the provisions of the international treaty.

Inventive step

– An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

– However, the content of applications that have only been published as of the date on which the applicant’s priority right began shall not be taken into consideration in assessing the inventive step.

Industrial application

An invention shall be considered as susceptible of industrial application if its subject-matter can be made or used in any kind of industry, agriculture or other fields of the economy.