9) Challenging patents & Revoking Flashcards
Who can issue a Declaration of Non-Infringement (DNI)?
- Patentee
- Court
- Comptroller
When can a third party file observations in UK?
What about at EPO
During prosecution of an application, specifically btw:
- Publication
and
- Administrative date of grant
EPO allows for TPOs even after grant of EP (during opposition proceedings)
What can be questioned in TPOs? What cannot be?
Patentability can be questioned
But Entitlement cannot…
How confidential does a request under r53 that TPOs be treated as confidential make TPOs?
Name of party will no be revealed (anonymous)
Possible that some parts of the TPOs are not laid open to public inspection
but TPOs will still be sent to Applicant
At what timepoints will TPOs not be considered by the Examiner?
If received:
1. After the Compliance Period (even if received before s18(4) comm)
2. On or after the date a report under a s18(4)
3. On or after the date of issue of the grant letter
What events must have happened for a DNI to be ordered by the Court?
1) The requester must have written to the patentee to provide full particulars of their activities + requesting acknowledgement of the DNI
2) Patentee refuses to acknowledge DNI or no response
If, in assessing the DNI, the Comptroller finds that the patent is invalid what is the effect?
No effect, there is no automatic revocation.
The requester can decide whether to go down this route.
On what condition shall a person who falsely represents that a product is “PATENTED” or “PAT. PENDING” be liable for fine?
On what level?
If he disposes of it for value
Fine up to level 3 on the standard scale (£1,000)
Give 3 examples of false representation that a product is “PAT. PENDING”
Application for a patent was
1. Never even made
2. Withdrawn
3. Refused
Give 2 examples of false representation that a product is PATENTED.
- Patent has not yet been granted
- Patent is no longer in force (eg by expiration or revocation)
Is a person who selling for value:
- a product falsely (no longer in force) represented as “patented”
- a product falsely (expiry/withdrawal) represented as “patent pending”
always an offence?
No, there is a grace period of “reasonably sufficient time” following the expiry/ withdrawal or revocation of the application/patent, for the person to stop such representation.
I.e., to get rid of their stock
What should the stamped, engraved or impressed on or otherwise applied product also include to be provide protection again infringement? s62
- Number of the patent
OR - Relevant web address
What is a defence to avoid the offence of falsely representing that a product is PATENTED or PAT PENDING?
Due diligence was used to prevent the commission of the offence
Where can an application for revocation be made?
- UKIPO
- Court:
a. IPEC
b. Patent Court
c. Court of Session (Scotland)
d. High Court (Northern Ireland)
e. High Court of Justice (Isle of Man)
What are the grounds for revocation - s72(1)
What cannot be questioned? -s26
a) Lack of patentability
b) Lack of entitlement to grant of the patent
c) An insufficiently enabling description
d) Added matter
e) Amendment extending protection after grant
Unity of invention cannot be brought up, even if the Examiner has wrongly decided that there was unity…
Which UK revocation ground (S72) is not an EP ground for opposition (A100) ?
72(1)(b) Lack of entitlement to grant of the patent
Who can raise grounds 72(1)(a, c, d, & e): Patentability, Insufficiency, AM and extension of protection?
Anyone, including the Proprietor.
Who can raise ground 72(1)(b): Lack of Entitlement to grant of the patent?
A person with proprietary interest (eg, the rightful owner)
In order to raise this ground, the person must have been found to be entitled following a s37 dispute
When the person with proprietary interest successfully argues that she is entitled to the patent and the patent in under licence, what happens to the licence upon change of ownership?
The licence is void if the proprietor changes.
Will need to draft a new one.
Court will force one on “reasonable” terms
What kind of body is not entitled to bring revocation proceedings?
An unincorporated body
When can a “ground 72(1)(b): Lack of Entitlement to grant of the patent” be raised?
What is the exemption?
By the 2nd anniversary of the date of grant
Unless it can be shown that the current proprietor knew they were not entitled at grant (bad faith)
When a patent was granted to a sole person when it should have been granted jointly, can you use the “Lack of Entitlement” ground?
No.
Use s37(2)(a) to allow 2nd person to be included as one of the Patentees