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FD1 > 9) Challenging patents & Revoking > Flashcards

9) Challenging patents & Revoking Flashcards

1
Q

Who can issue a Declaration of Non-Infringement (DNI)?

A
  1. Patentee
  2. Court
  3. Comptroller
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2
Q

When can a third party file observations in UK?
What about at EPO

A

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)

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3
Q

What can be questioned in TPOs? What cannot be?

A

Patentability can be questioned

But Entitlement cannot…

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4
Q

How confidential does a request under r53 that TPOs be treated as confidential make TPOs?

A

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

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5
Q

At what timepoints will TPOs not be considered by the Examiner?

A

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

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6
Q

What events must have happened for a DNI to be ordered by the Court?

A

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

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7
Q

If, in assessing the DNI, the Comptroller finds that the patent is invalid what is the effect?

A

No effect, there is no automatic revocation.

The requester can decide whether to go down this route.

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8
Q

On what condition shall a person who falsely represents that a product is “PATENTED” or “PAT. PENDING” be liable for fine?

On what level?

A

If he disposes of it for value

Fine up to level 3 on the standard scale (£1,000)

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9
Q

Give 3 examples of false representation that a product is “PAT. PENDING”

A

Application for a patent was
1. Never even made
2. Withdrawn
3. Refused

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10
Q

Give 2 examples of false representation that a product is PATENTED.

A
  1. Patent has not yet been granted
  2. Patent is no longer in force (eg by expiration or revocation)
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11
Q

Is a person who selling for value:

  1. a product falsely (no longer in force) represented as “patented”
  2. a product falsely (expiry/withdrawal) represented as “patent pending”

always an offence?

A

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

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12
Q

What should the stamped, engraved or impressed on or otherwise applied product also include to be provide protection again infringement? s62

A
  1. Number of the patent
    OR
  2. Relevant web address
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13
Q

What is a defence to avoid the offence of falsely representing that a product is PATENTED or PAT PENDING?

A

Due diligence was used to prevent the commission of the offence

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14
Q

Where can an application for revocation be made?

A
  1. UKIPO
  2. Court:
    a. IPEC
    b. Patent Court
    c. Court of Session (Scotland)
    d. High Court (Northern Ireland)
    e. High Court of Justice (Isle of Man)
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15
Q

What are the grounds for revocation - s72(1)

What cannot be questioned? -s26

A

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…

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16
Q

Which UK revocation ground (S72) is not an EP ground for opposition (A100) ?

A

72(1)(b) Lack of entitlement to grant of the patent

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17
Q

Who can raise grounds 72(1)(a, c, d, & e): Patentability, Insufficiency, AM and extension of protection?

A

Anyone, including the Proprietor.

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18
Q

Who can raise ground 72(1)(b): Lack of Entitlement to grant of the patent?

A

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

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19
Q

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?

A

The licence is void if the proprietor changes.
Will need to draft a new one.
Court will force one on “reasonable” terms

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20
Q

What kind of body is not entitled to bring revocation proceedings?

A

An unincorporated body

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21
Q

When can a “ground 72(1)(b): Lack of Entitlement to grant of the patent” be raised?

What is the exemption?

A

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)

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22
Q

When a patent was granted to a sole person when it should have been granted jointly, can you use the “Lack of Entitlement” ground?

A

No.

Use s37(2)(a) to allow 2nd person to be included as one of the Patentees

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23
Q

In what scenario will revocation proceedings continue even when the original requester has dropped out?

A

The Comptroller will continue revocation proceedings, if considered to be in the public’s interest.

24
Q

Compare and contrast the effect of revocation (s72) and surrender (s29)

A

Revocation –> Retroactive, ex tunc, ab initio
Patent deemed “never to have been granted”

Surrender –> Ex nunc
Only takes effect from the date when Notice of Acceptance of the Surrender is published in the Journal.

25
Q

Would an offer to surrender the patent by the patentee during revocation proceedings terminate those proceedings?

A

No

26
Q

What is the overriding objectives of the Civil Procedure Rules in litigation?

A

Parties must bring forward their whole case.

Court should deal with cases justly by saving expense and ensuring that they were dealt with expeditiously and fairly

27
Q

What is the benefit of requesting central amendment of an EP(GB) application, rather than amendment of the patent at UKIPO?

A

Central Limitation at EPO –> Amendments are effective in each Contracting State

Amendment at UKIPO –> would only affect EP(GB) claims

28
Q

Apart from any third party and the Proprietor, who else can revoke the patent?

A

The Comptroller (on his own initiative)

29
Q

How can the Comptroller act to avoid double patenting by different parties?

A

Comptroller may revoke the patent if:

  1. A novelty-destroying s2(3) prior art surfaces post grant
  2. A s74A Opinion that patent lacks N or I.S is issued by Comptroller

Proprietor can object and amend if possible (added matted)

30
Q

Are the amendments following s73 “Comptroller’s Power to Revoke” advertised?

A

No, s73 proceeding occur ex parte, so third parties cannot intervene!

31
Q

How can the Comptroller act to avoid double patenting by the same party?

What is the effect on licence/assignment?

A
  1. If native GB patent is granted first, EP(GB) will replace it
  2. If EP(GB) patent is granted first, it can be surrendered before grant of native GB patent

Licence/assignment will lapse - need a new one

32
Q

Is the Comptroller allowed to refuse grant of a GB application based on Double-Patenting?

A

NO

This must be done post-grant.

NB. Failure to differentiate the patents will result in its revocation

33
Q

What opportunity does the Proprietor have to keep both EP and GB patent?

A

Comptroller gives Proprietor an opportunity to

(i) Make observations to convince Comptroller that they are not 2 patents in respect of the same invention; and/or

(ii) Amend the specification of the patent

34
Q

For parallel EP/GB patents, when does the Comptroller’s power to revoke the native GB start from?

A

The later of:
a) End of the EP opposition period (9M from the publication of the Mention of Grant)
b) After opposition proceedings have finished

35
Q

Can Comptroller initiate s73 proceedings (revoke) against a conflicting GB when there are ongoing court proceedings which could result in an EP(UK) being revoked?

A

Yes

36
Q

What can a patentee pro-actively do if an EP(GB) has granted (and has not been opposed), and we receive a s18(4) OA (informing date on which Notice of Grant will be published in Journal)?

A

Short window of time (before grant of GB) to surrender EP (GB)

Must be pro-active, to avoid revocation proceeding by the Comptroller.

37
Q

Can you apply directly to the Court/Comptroller seeking only a Declaration of Validity/Invalidity of a patent?

A

No.

Proceedings directed solely to the question of validity are specifically prohibited

38
Q

List the 4 situations where you can put the validity of a patent at issue - s74

A

(a) As defence/counterclaim in proceeding for infringement of:
i. a patent - s61
ii. a published application - s69

(b) Actionable threat proceedings - s70a

(c) In applying to Court/Compt for a DNI - s71

(d) In applying to Court/Compt for Revocation - s72 also includes EP(GB) oppositions

39
Q

On what grounds can the validity of a patent be put in issue?

A

Same grounds as GB Revocation:

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

NB. Lack of entitlement is only raisable if entitlement proceedings - s37(1) find “in favour of the applicant”

40
Q

Who can request an opinion on a patent?

Can this be done anonymously?

A

The proprietor or any third party

Yes!

41
Q

What must you provide to request an Opinion

A

Form + fee

42
Q

Who is notified of the request of a UKIPO Opinion

A
  1. Any person named on the request (eg. someone having an interest in the question)
  2. The patentee
  3. Any registered licensees or sub-licensees
43
Q

What can an UKIPO opinion be about?

A

1) INFRINGEMENT: If an act would infringe the patent
2) VALIDITY of
a) GB or EP(GB) patent (N, IS, sufficient, added matter, post-grant broadening)
b) SPC

44
Q

When are you allowed to request a UKIPO opinion?

A

Anytime, even after patent no longer in force (expiry/ surrender)

45
Q

When can the Comptroller refuse to issue an Opinion?

A

a) Circumstances excluded by rules (eg. when the patent/SPC has already been revoked)
b) if he thinks request is “inappropriate” (eg. other proceedings are dealing with the issue OR request is “frivolous or vexatious”)

46
Q

What is the trigger and DL for filing observations to the request for a UKIPO Opinion? Is it extendable?

Who can make observations?

A

Trigger = Advertisement in the Register

DL = 4 weeks
Extendable at Comptroller’s discretion - R108(1)

Anyone can make observations

47
Q

What is the trigger and DL for the recipient of the filed observations to make counter-observations? Is it extendable?

A

Trigger = 4 weeks from the advertisement in the Register

DL = 2 weeks
Also extendable at Comptroller’s discretion - R108(1)

48
Q

In what situation does the UKIPO Opinion not get issued? R94

A

If the request is withdrawn by the requester in writing.

In that case, the requester can get the full or part of fee back

49
Q

When does a Hearing take place, following a UKIPO Opinion?

A

If the Opinion goes against the requester’s interest

50
Q

Who is entitled to a Hearing as part of the UKIPO Opinion procedure?

A

Only the person requesting the Opinion

51
Q

Is an Opinion by UKIPO binding?

A

No, it is just a “valuable expert opinion”
It can be referred to in subsequent proceedings

52
Q

Who may apply for a Review of an Opinion? s74B

A
  1. Patentee
  2. Exclusive licensee
53
Q

What is the trigger and DL for applying for Review of an Opinion?
Is it extendable?

A

Trigger = Publication of the Opinion

DL = 3M
Extendable under R108(1)

54
Q

On what grounds can an application for a Review of an Opinion be made?

A

Opinion has wrongly concluded that:
1. Patent is wholly or partially invalid
2. Patent is not infringed (because of an erroneous construction of the patent specification)

55
Q

Can others make observations about the application for a Review of an Opinion. If yes, by when?

A

Yes, similar to procedure for Opinion procedure, the application for review is advertised and people can make observations.

DL = the later of:
1. Publication of Advertisement of Review + 4 weeks
2. Publication of the Opinion + 2M

56
Q

What are the possible outcome of the Review of an Opinion

A
  1. Opinion is set-aside (good for Patentee)
  2. Opinion is maintained (good for the Requester of Opinion)

NB. No “new” Opinion is issued

57
Q

What is the Formstein defence? Can it be used in the UK?

A

Concept under German patent law

If an alleged infringer can show that a notionally-infringed equivalent lacks novelty or is an obvious variant of the claimed invention

Then the patent’s scope for the purposes of determining any infringement is held to its normal construction (ie. DoE does not apply)

Yes (since 2021)

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