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Withdrawn but still published is not validly published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
What happens to existing licenses after entitlement proceedings?
If at least one original applicant remains - license is treated as being granted by the remaining applicant(s)
If no original applicant remains - license lapses
Who is entitled to a license after entitlement proceedings?
An original applicant or licensee that was working, or making serious and effective preparations to work, the invention in good faith in the UK prior to entitlement proceedings.
License must be requested within two months of the order to transfer
Requirements regarding declaring inventorship
Deadline + information
16 months from priority
* Identity of the inventor(s)
* Derivation of rights to the applicant(s)
Do divisionals and applications resulting from entitlement disputes require inventorship to be declared?
Yes, because not all inventors necessarily contributed to the new subject matter
Can an inventor stay anonymous?
They can waive their right by requesting before publication preparations are complete
They must give reasoning for not being named, but can anonymise their address without reasons
Typically 16 months + 3 weeks from priority
2 month extension as of right
Deadline for paying the application fee
12 months from priority or 2 months after filing
How can a withdrawal be reversed
The Comptroller can correct an error or mistake in the withdrawal under s117(1)
Requirement for an error to be corrected
Immediately clear that there is an obvious error and immeditely evident that nothing else could have been intended
Requirement for multiple inventions to have unity
They have matching or complementary special technical features that define a contribution over the prior when considered together as a whole
Deadline for translation of the specification
2 months from the request for translation
Requirements for a filing date
- Indication that a patent is sought
- Identify or enable contact with the applicant
- Something that appears to be a description or reference to an earlier application
When can missing parts be filed?
Between filing and preliminary examination, or within 2 months of notification
When does preliminary examination start?
When:
* The application has a date of filing
* The application has not been withdrawn AND
* The application fee has been paid
When do missing parts not change the date of filing?
- The application claimed priority on filing
- The priority document contains the missing parts
- The applicant requests (within the deadline for filing missing parts) that the application is not re-dated
Deadline for filing claims
12 months from priority or 2 months from filing
2 month extension as of right
Deadline for filing abstract
12 months from priority or 2 months from filing
2 month extension as of right
Relevant deadlines when filing an application by reference
Filing a description - 12 months from priority or 2 months from filing
Filing a certified copy of the referenced application - 4 months from filing
Translation must also be filed if required
Only the description deadline has a 2 month extension as of right
Deadline for requesting and paying for search
12 months from priority or 2 months from filing
2 month extension as of right
Deadline for filing the priority document when filing missing parts with a request to retain the original filing date
16 months from priority or 4 months from request
Deadline for filing a divisional
Before the last 3 months of the compliance period
Before the date of grant of the parent
Typically 4 years and 3 months from priority
How do s15(10) deadlines apply to divisionals/ applications resulting from a dispute
They are given the later of those deadlines and 2 months from filing
Unless they are within the last 6 months of the compliance period - then it is on filing
Deadline for search fee for PCT(GB)
Usual deadline or 2 months from start of the national phase
Deadline for filing formal drawings
15 months from priority
Publication date
18 months from priority
Deadline for avoiding publication
5 weeks before publication is due
Requirements for a search
- Preliminary examination completed
- Application not refused/withdrawn
- Search request and search fee on time
- Application has a description and one or more claims
- Correct language
Deadline and threshold for excess claims fees
(+ cost)
Due with the search fee
Over 25 claims
£20pc
Deadline for requesting further search
3 months before the end of the compliance period
When can the search fee be refunded?
Application withdrawn before the search starts
Subject matter already searched in the parent
When is voluntary amendment possible?
After the search report and before grant
One amendment per examination report
Deadline for voluntary amendment after positive first examination report
2 months
Deadline for requesting examination (normal)
+ Secrecy
6 months from publication
Or 2 years (18 months + 6 months) if under secrecy
2 month extension as of right
Deadline for requesting examination (divisional)
Parent’s deadline or 2 months from filing
OR
On filing if within 6 months of the compliance period
Deadline for requesting examination (PCT(GB))
33 months from priority or 2 months from entry
Deadline and threshold for excess page fees
(+ cost)
Due with the examination fee
Description has >35 pages
£10pp
Compliance period (normal)
4 years + 6 months from priority
OR
12 months from first examination report
Compliance period (dispute)
4 years + 6 months from priority
OR
18 months from the new filing date
Compliance period (divisionals)
Same as parent
Deadline and cause for paying grant fee
2 months from the intent to grant
Excess claims or pages that occurred after search/examination requested (repsectively)
When is the earliest a patent can grant?
3 months from publication
(therefore request early publication)
Time between allowance and grant
1 month, or 2 months if the allowance is the first Communication
Can the compliance period be extended?
- 2 months as of right
- Potentially further using R108(3)
- During a pending appeal
- To the appeal deadline
- Due to third-party observations
Deadline for reinstatement
12 months after the termination of the application
Requirements for reinstation
- Evidence that the failure was unintentional
- Failure remedied within a specified period (> 2 months)
What happens to those who infringed between loss and reinstatement
If infringement was in good faith - may continue
If in bad faith - infringing acts treated as such
Only applies if the application was already published
Who can file third-party observations and what for?
Any person
Questioning the application’s patentability
What can happen if third-party observations are filed close to the end of the compliance period?
If filed within the last 3 months, and result in an examination report the Applicant is given 3 months to put the application in order
What are the requirements for filing military applications overseas?
The application must have been filed in the UK 6+ weeks ago and no prevention order has been issued
What can delay publication of an application?
(no withdrawal)
Publication of applications that are prejudicial to national security or public safety are delayed by up to 3 months
Secretary of State can extend this delay
Remedy for UKIPO not forwarding the application to EP/IB
+deadlines
If not forwarded/received within 14 months, application can be converted to a GB application
If requested within 3 months from loss
Patent term
20 years from filing
When is the first renewal date?
(normal)
4th anniversary of filing
When is the first renewal date when the application is granted late?
GB + EP(GB)
(GB) If the patent grants less than 3 months before the 4th anniversary, or later, then 3 months after grant
(EP(GB)) If the patent grants less than 3 months before the 4th anniversary, then 3 months after grant
If the patent grants after the 4th anniversary, then the next anniversary
What is the renewal period?
From 3 months before the unmodified renewal date to the end of the calendar month that includes the renewal date
What happens if the renewal payment is missed?
There is a 6 month grace period - if the renewal is paid within this period then it is treated as if it never lapsed
(end of calendar month)
If renewals are not paid, on when is the patent deemed to cease to have effect
The end of the renewal date
Is there a reminder for renewal fees?
Within 6 weeks after the renewal period
Within 6 weeks after the grace period (for restoration purposes)
What happens if the patent grants after the second renewal period
All outstanding renewal fees must be paid within the first renewal period
How can renewal fees be reduced?
If the Proprietor registers to provide licenses as of right - 50% reduction
All discounts must be repaid if right is cancelled later
Apply at least 10 days before the fee is due
What sections are relevant for post-grant amendment?
s27 - outside of infringement/revocation proceedings
s75 - during infringement/revocation proceedings
N.B. EPO has its own centralised post-grant amendment
What is the effect of a post-grant amendment?
The scope of the patent is limited retroactively to the date of grant
Different extents of infringement before and after grant
Why would the Proprietor want to use post-grant amendment?
Strengthen their position prior to bringing an infringement action (and thus receiving a revocation counteraction).
Whilst the amendment can still be opposed, this would require the infringer to be checking the register.
Why would EPO post-grant amendment be advisable over GB
Potentially lower costs than amending individually in each infringement state
No ‘good faith’ requirement - i.e. if due to prior art cited overseas during GB prosecution
Deadline for requesting restoration
13 months after the grace period
Requirement for restoration
Evidence that the failure to pay the renewal fees was unintentional
How can an infringement between lapse and restoration still be an infringement?
If it was performed during the grace period, or it is a continuation of an earlier infringement
Requirements for non-infringement of a restored patent
After the grace period and before restoration, the act or serious preparation is begun in good faith
Can only continue to do the act (no expansion/divergence)
Can non-infringement of a restored/reinstated patent be transferred?
Not a transferrable licence
Partners within their business can also work the invention
Right can only be assigned as part of the business itself
Why would a patentee want to surrender their patent?
Avoids any retroactive losses of license fees or infringement payments, which could otherwise result from an invalidity action
Requirement for surrendering a patent
No ongoing revocation/infringement action
Can’t escape a pending validity action
Why would a third party oppose the surrender of a patent
Licensee who believes there is infringement
Licensee who wants to reclaim their license fees via validity/revocation
Requirement for valid assignment/mortgage
In writing and signed by the assignor/mortgagor (only)
Additional step after any transaction
Registering the transaction as soon as practicable (within 6 months)
Or, if unpublished, notifying the Comptroller of the registerable transaction
When does a later transaction have entitlement over an earlier transaction?
The earlier transaction was not registered/the Comptroller was not notified
AND
The later transacting party did not know about the earlier transaction
What rights does co-ownership provide?
Equal undivided share
Each owner entitled to work the invention independently
(unless altered by agreement)
What actions require the agreement of co-owners
Amending or revoking the patent
Licensing/assigning/mortgaging the patent
(unless altered by agreement)
How are co-ownership rights treated upon death/dissolution?
Passed on to successor, not aggregated
Deadline for entitlement disputes
2 years after grant
Unless one of the grantees knew they were not entitled
When does an employee’s invention belong to the employer?
It was made in the course of normal duties of the employee, or specifically assigned duties
AND
1. An invention might reasonably be expected to arise from them
OR
2. Implicit in the employee’s duties is a special obligation to further the interests of the employer
How are the ‘normal duties’ of an employee determined?
Job role, e.g. what was mentioned in their contract
Which employees have a ‘special obligation’?
Senior management
Trustee/beneficiary
Deadline for applying for employee compensation
After grant and before 1 year after lapsing
Therefore use caveat to be informed of lapse
Requirement for employee compensation as inventor only
Granted patent belongs to the employer, and the invention/patent is of outstanding benefit to the employer such that it is just that the employee is compensated
Mainly employed in UK
Requirement for employee compensation as licensor
Granted patent exclusively license to employer and the benefit to the employee is inadequate in relation to the employers benefit of the invention/patent such that it is just that the employee is further compensated
Mainly employed in UK
What amounts to an outstanding benefit?
Monetary benefit that is out of the ordinary (factoring in the size/nature of the company)
Future benefit is not included
What amounts to inadequate compensation?
Benefit to the employer diverges significantly from what was expected when agreeing
Employer played dirty/utilised the balance of power
How is an employee’s compensation determined if their existing compensation is found inadequate?
A fair share of the benefit which the employer has derived or may expect to derive. This takes into account, e.g., the license terms and the relative contributions (effort/skill)
How does an employee’s contract affect their rights regarding inventions?
Any term that diminishes the employee’s rights is unenforceable
How do licenses of right affect infringement?
An infringer who takes a licence only has to pay 2x the retrospective licence in damages
Can a licence of right be cancelled?
Only if the licensees consent
OR
By a third party that had an agreement precluding licenses of right - 2 month deadline
ALSO
Cancellation can be opposed within 2 months by, e.g., a potential infringer
All discounted renewal fees need to be paid back
Infringing acts for a product
6
- Make
- Offer to dispose
- Dispose
- Use
- Import
- Keep
Infringing acts for a process
- Use/offer for use if known/obvious it would infringe
- Product infringements for a product obtained directly by the process
Process must alter the product
What is indirect infringement?
Supply or offer to supply an unauthorised party with means relating to an essential element of the invention, if known/obvious that they are suitable and intended for putting the invention into effect
Caveat to indirect infringement
Does not apply if the essential means is a staple commercial product, and is not used to induce infringement
Exemptions to infringement
- Private/non-commercial use
- Experimental purposes (scientific/technical goal, not a marketing/sales goal)
- Prescribed medicine
- Use in vehicles temporarily in UK territory (registered outside UK)
- Farm use
- Health trials
Exemptions to infringement that are not exempt from contributory infringement
- Private use
- Experimental purposes
- Prescribed medicine
Test for if a product is the direct result of a patent process
The process must alter the product (unique and testable property)
No subsequent process is applied that further alters the product such that the testable property has been affected
Test for indirect infringement
- Are the supply and unauthorised party in the UK?
OR
Is the offer to supply in the UK? - Do the means relate to an essential element of the invention
- Is it known or obvious that the means suit and are intended for putting the invention into effect in the UK?
Definition of a staple commercial product
An item having at least one other legitimate use
How to determine the infringing party for importation
Determine where the transfer of title of ownership occurred
Most likely the person paying the transport costs
How is right to repair assessed?
Applies as long as the repair does not involve the supply of the part of the product that confers its value/inventiveness (i.e. the core element of the invention)
Infringement advice for a price tag/online listing
Not necessarily an offer to dispose - could be deemed an invitation to treat. This is still enough for an injunction but does not constitute infringement.
Advise purchasing the item to provide evidence of infringement
Options if client is worried about whether or not they infringe
Freedom to operate search
Declaration of non-infringement
Potential outcomes of infringement proceedings
- Injunction
- Deliver up/destroy the product
- Damages or account of profits
- Declaration of validity and infringement
What is the statute of limitations for infringement?
Can only claimd amages for infringements up to 6 years ago
Amicable solutions to infringement
- Offer a licence
- Offer to sell the product/provide the service
- Cross licensing
How to expedite proceedings (UK)
- Request combined search and examination
- Request accelerated prosecution (by reason of infringement)
- Request early publication to obtain rights
- Narrow (but infringed) claim
How to expedite proceedings (EP)
- Use PACE
- Request early publication to obtain rights
- Prepare and send translations early
- Narrow (but infringed) claim
How to expedite proceedings (PCT)
Request early publication or early entry into the national phase
Requirements for an interim injunction
- Serious case is to be tried
- Potential harm cannot adequately be compensated for by damages (market position irreparably damaged)
- Balance of convenience in favour of making the order (e.g. avoid causing bankruptcy)
- No delays in applying
Outcome of an interim injunction
Status quo is maintained
If infringer hasn’t launched the product -> they cannot
If infringer has launched -> they can only continue
When is an infringer not liable for damages/account of profits?
If they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement
Discretionarily if infringement occurred during a renewal fee grace period
Infringements caused by a later amendment
Exclusive licensee infringement rights
Same as Proprietor for any act carried out after the license
Patentee is made party to proceedings
Effect of unregistered transaction on infringement
Costs and expenses not awarded
Damages and account of profits still valid
Requirements for infringement from publication
- Act would infringe both the published claims and the granted claims
- Publication must be in English
- Resonable expectation that infringement would eventually occur
What is considered a threat?
A communication from which the recipient would reasonably understand that:
* a patent exists and
* someone intends to bring proceedings in respect of an act
What are the exclusions from actionable threats?
- Relates to making/importing a product or using a process
- Permitted communication and no express threat
What is a permitted communication?
One whose information is for a permitted purpose and the information is necessary for that purpose
What are the permitted purposes?
(Threats)
- Giving notice that a patent exists
- Discovering if/who is making/importing a product or using a process
- Giving notice that someone has a right if relevant
Notifications of fact / requesting information
What are not permitted purposes?
(Threats)
- Requesting someone ceases commercial activities
- Requesting someone delivers up / destroys a product
- Requesting someone gives an undertaking for a process
Remedies for an actionable threat
- Declaration that the threat was unjustified
- Injunction against continued threats
- Damages for any loss sustained as a consequence of the threat
Requirements for a declaration of non-infringement
Seeker has already requested acknowledgement from the Proprietor and provided them with full particulars of their activities
Proprietor has refused/ignored
What is excluded from grounds of revocation?
- Clarity
- Non-unity
- Entitlement (unless you’re the relevant party)
Pros/cons of amending prior to infringement action
Infringer less likely to oppose
Good faith
More damages
BUT
Disqualifies from interim injunction
What effect do post-grant amendments have on the patent?
Retroactive
How can intervening rights be created by the EP(GB) grant process?
GB translation is narrower than the language of EP proceedings - > corrected translation does not provide retroactive protection
When does the national phase start?
31 months after priority or when requested early
+
Translation and fee filed
When is the burden of proof for infringement reversed?
If a patented process creates a new product and another party has produced the same product
Alleged infringer must prove they used a different process
What is resuscitation?
When a withdrawal is reversed via a correction under s117
What are the different extensions available?
R108(2) - as of right for official deadlines (form+fee)
R108(3) - unintentional (evidence + fee)
s117B - as of right for Comptroller time limits (no form no fee)
All 2 months
What does dormant mean?
Missed examination reply deadline but still within compliance period
Can only continue discretionarily
Actavis questions
i. substantially the same result in substantially the same way
ii. obvious, knowing that it achieves substantially the same result, that it does so in substantially the same way
iii. patentee intended strict compliance with the literal meaning of the claims as being an essential element of the invention
yes, yes, no = infringement
Duration of an SPC
Time between lodging and product authorisation minus 5 years
5 years max
Deadline for requesting SPC
6 months after product authorisation
OR
6 months after grant (if later)
What are the two requirements for a registered design?
Novelty - differs from prior art designs by more than immaterial details
Individual character - overall impression on an informed user differs from that of any prior art design (taking into account degree of freedom)
How is novelty/inventive character treated for a product forming part of a complex product?
(designs)
Only assess what is visible during normal use by the end user (not maintenance/repair)
What is excluded from registered design protection?
- Features which are solely dictated by function
- Features which are ‘must fit’
- Features contrary to morality/public policy
Non-prejudicial disclosures for registered designs
- Confidential
- Could not reasonably become known in the normal course of business in the design’s specialist sector in the UK/EEA
- 12 month grace period if disclosed by designer (directly or indirectly)
Disadvantage of relying on the grace period for registered designs
- Third party may independently disclose
- Different countries have different grace periods
What constitutes infringement in registered designs?
Use of a design that does not produce a different overall impression on the informed user
Defences for registered design infringement
- Private, non commercial
- Experimental purpose
- Citation/teaching
- Ships temporarily in the UK
- Prior user (in good faith)
Duration of registered designs
UK/EP
Up to 25 years (5 years per renewal)
Grace period/restoration same as patent
Priority period for registered designs
6 months
Duration of UK unregistered designs
15 years from end of year in which the design was recorded
OR
10 years from sale (if shorter)
Hierarchy for owner of unregistered design
Employer - if designed during employment
Designer - if not designed during employment
Marketer - if designed in a non-qualifying country
Non-qualifying employer does not pass to a qualifying employee
What are the qualifying countries for UK unregistered designs?
UK, NZ, HK
EU if before 2021
What does a UK unregistered design protect?
Shape or configuration of whole or part of an article that is not commonplace in the design field at the time of its creation
What is excluded from UK unregistered design?
- Method or principle of construction
- Surface decoration
- “must fit” (connections)
- “must match” (maintaining aesthetic)
What constitutes primary infringement in UK unregistered designs?
Substantially copying the design to make articles or design documents
What constitutes secondary infringement in UK unregistered designs?
Import/keep/sell if they know/have reason to believe it is infringing
When is a license of right available for a UK unregistered design?
Last 5 years
EU unregistered designs -differences from registered
Only lasts 3 years from first disclosure
Infringement requires copying
Designer retains the rights
What is a supplementary unregistered design?
Same as EU unregistered design, but in the UK (parallel to UK unregistered design)
How to evaluate potential infringement of competitor’s unpublished patent?
If infringement is threatened, can request a copy of the unpublished document from the Comptroller
Requirement for EP grace period
Evident abuse - intention to cause harm or knowledge of possibility of causing harm
6 months
Requirement for US grace period
Disclosure must have been derived from the inventor
12 months
How to put competitor on notice with non-English application
(e.g. German EP application)
Need to provide a translated copy of the claims with the notice. Can also publish english claims before UK entry by filing them at UKIPO
Requirement to get both UK and EU unregistered design rights
Simultaneous disclosure
Requirement for post grant amendment
Must be narrowing amendment, and must be justified, as the amendment is discretionary
How is missed priority deadline handled for a PCT
If filed within 2 months along with a request to restore priority:
Receiving office applies their test (unintentional or all due care) and the international phase is carried out accordingly
National phases apply their own tests subsequently
