FD1 1 Flashcards
What is excluded from patentability?
s1(2) and s1(3)
- Discovery, scientific theory, mathematical method
- LDMA
- Scheme, mental act, playing a game, doing business, computer program
- Presentation of information
- Immoral, contradicting public policy
What disclosures qualify for the 6 month grace period?
UK
Those resulting from the invention being obtained unlawfully or in breach of confidence
or officially recognised international exhibition
Requirements for a breach of confidence
An air of confidence at the time that the information is imparted/acquired that causes the recipient to understand that the information is confidential.
e.g. marked as confidential or password protected
Windsurfer/Pozzoli steps
- Identify the person skilled in the art and their common general knowledge
- Identify the inventive concept
- Identify differences between state of the art and the inventive concept
- Decide whether these difference constitute obvious steps
Can US provisional applications be prior art?
No, they never publish
What is citable as s2(3) prior art?
Patent/application (that can become a GB patent) having an earlier priority date but validly published after the priority date.
The abstract is not citable, however.
Withdrawn but still published is not validly published
Always EP, sometimes PCT
What constitutes an enabling disclosure?
Enough information is revealed to enable the skilled person to replicate the invention
Action(s) when there has been a disclosure in breach of confidence
Including non-enabling disclosure by 3rd party
File an application asap before a verifiable publication
Request return of your document and that no further publications are made
What is excluded from patentability?
s4A
- Method of treatment of the human/animal body by surgery or therapy
- Method of diagnosis on the human/animal
A treatment requiring/affecting the action/supervision of a physician
Is there any remedy for missing the priority deadline?
Priority deadline can be extended by 2 months if unintentional
How can a second filing be a basis for priority?
If there are no rights outstanding on the first filing
* Withdrawal/refusal before publication
* Not used to claim priority
* Same country as the first filing
Deadline for declaring priority (GB)
Including when filling late
Within 16 months of the priority date
or
When filing the application late
Unless early publication has been requested
Deadline for declaring priority late (PCT(GB))
1 month after the beginning of the national phase
Deadline for filing priority document
Within 16 months of the earliest priority date
No translation required
Requirements for valid priority document
Patent application or utility model of a WTO/WIPO/PCT member
+
First filing of the subject matter
+
All applicants of priority document must be applicants of the new document or their successor in title
Action for using CIP as priority document
Claim priority to both the parent and the CIP if possible
Otherwise, the parent is at least s2(3) prior art
Who is excluded from applying for a patent?
Unincorporated firms, bodies, or partnerships
Applicant must be a natural or legal person
Who can be granted a patent?
- The inventor
- An entitled person (by agreement/law)
- A successor in title
Which sections are relevant for entitlement disputes
- UK applications - s8
- UK patents - s37
- Foreign applications - s12
What actions can the Comptroller carry out in accordance with s8?
- Replace some/all applicant names with new party(s)
- Refuse the patent or excise contested elements
- Order a licence or transfer of a right in the application to the new party(s)
Requirements for filing a new application after entitlement proceedings
- The original application is refused or withdrawn or the new party’s elements are excised
- New application filed within 3 months of the decision
Deadline for declaring inventorship and filing priority documents for new applications resulting from a dispute
s8(3), s12(6), s37(4) applications
2 months from filing or 16 months from priority
or
At filing if within six months of the R30 compliance period
Alternatives to official s8 entitlement proceedings
- Amicable agreement (assignment)
- Early settlement (other party bears court costs if they reject the offer)
Recommendation when prosecuting a patent post-entitlement dispute
Accelerated prosecution as the other party are likely infringing