Brainscape's Knowledge GenomeTM

Browse over 1 million classes created by top students, professors, publishers, and experts.


See full index

FD1 > FD1 > Flashcards

FD1 Flashcards

1
Q

Why send a copy of an application/patent to an infringer

A

To prevent them from claiming ignorance

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
2
Q

Does a variant (product/range) infringe if outside of the claimed scope

A

(Actavis v Eli Lily) Yes, if…

A) It achieves substantially the same result in substantially the same the way

B) it would be obvious to the PSA reading the patent at the priority date, but knowing that the variant achieves substantially the same result, that is does so in substantially the same way

C) the reader of the patent would conclude that strict compliance with the literal meaning of the claim was not an essential requirement of the invention

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
3
Q

Primary infringement of an unregistered design right

A

Acting to, or authorising another, to exactly or substantially copy the design to make an article or design document without a license

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
4
Q

Authentic text of EP patents

A

… is the language of proceedings at the EPO,

But for GB purposes, it is The English translation

… Except for revocation proceedings

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
5
Q

SPC’s

A

File with 6 months of market authorisation, or 6months of grant if later

Pay filing fee and renewals in advance of it coming into effect

Last the lesser of 5 years and the time between lodgement and authorisation minus 5 years (+6m in some cases)

Protection only extends to the embodiment of the invention for which approval is obtained

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
6
Q

How can entitlement issues be resolved for:

1) UK Application,
2) UK patents
3) Co-owned UK applications
4) Foreign applications
5) Foreign patents
6) inventorship dispute

A

1) section 8
2) section 37
3) section 10 (also 8 if one is not entitled
4) section 12
5) no UK provision but S12 may continue post grant
6) section 13

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
7
Q

Employee rights with respect to their own invention

A

Can apply for a patent
Can work the invention
…without infringing employer copyright or design rights

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
8
Q

Who must sign an assignment, mortgage or agreement in order for it to be valid

A

Assignor and a witness of personal or the company seal if corporate

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
9
Q

What proceedings can be suspended:

A

EP, providing proof that UK entitlement has begun, and if successful, the decision can be used to transfer the right of an EP application

PCT, cannot be suspended, but a successful UK decision can be applied to the International application (although may not be recognised by all states)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
10
Q

What inventions are excluded

A

A) Discovery, scientific theory or mathematical method
B) literature, drama, music, art, or aesthetic creations
C) a scheme, rule, mental act, playing a game or doing business,
D) presentation of information

AS SUCH

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
11
Q

When is the deadline to declare priority

A

Upon filing
Or
Within 16months of the priority date (using the form and paying the fee),

providing there is no effective request for early publication

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
12
Q

Liability of falsely claiming a product is patented or there is a pending application

A

Fine up to £1000

… but only applies to disposal for value (I.e. not gifts)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
13
Q

Opinions

A
  • Anyone can request one
  • completely non-binding
  • using form and fee
  • anyone can file observations within 4 weeks of advertisement in the register
  • recipients have 2 weeks to file further observations
  • the UKIPO May revoke the patent in clear cut cases
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
14
Q

Secondary infringement of an unregistered design right

A

Importing, keeping, sell, hires or offers for sale/hire

And they know or have reason to believe it is an infringing article

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
15
Q

When are priority documents and declaration of inventorship due for divisionals and applications following a dispute

A

16m from priority or 2m from filing

… unless within last 6m of r30 compliance, then they must be supplied at filing

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
16
Q

Allowable drawings for patent filings

A

Black and white (I.e. grayscale) photographs are allowed, and so is shading where it assist in representing a shape and does not obscure other elements of the drawing

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
17
Q

What extensions are available for UK renewals

A

6month grace period, but surcharge each month so pay ASAP.

S28 - restoration 19 months after renewal due date (i.e. end of month) or 13 months from grace, but only if unintentionally missed. Third party rights may arise.

R39 - Comptroller must send reminder within 6weeks of missed payment, or else rule 107 can be used for ‘errors by the UKIPO’ to try and avoid restoration

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
18
Q

When are forms drawings typically due?

A

15 months from filing or 1 month of notification

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
19
Q

What is the compliance period for an application following a dispute

A

The later of the original compliance date or 18m from filing

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
20
Q

What is the last opportunity for correcting errors in a priority claim

A

16months from priority

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
21
Q

What is PF7

A

Declaration of inventor and right to grant of patent

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
22
Q

What is an enabling disclosure

A

Enough information for the skilled person to work the invention across the whole scope of the claim

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
23
Q

What is the response time for a UK OA

A

4 months, unless received more than 3.5 years from priority, in which case it is reduced to 2 months.

However, Rule 108(2) extension still applies

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
24
Q

Who may be grant a patent

A

The inventor/s
Or, in preference, anyone entitled by agreement, law or treaty

Or a successor in title to the above

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
25
Q

Rights of an exclusive licensee to pursue infringer

A

Same as that if the proprietor relating to any act that occurs after the date of the license.

Damages / relief take into account the exclusive licensee’s losses

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
26
Q

How can you amend a UK application

A

S19 - Request voluntary amendment in writing any time before grant. DO NOT ADD MATTER

Rule 31 Conditions: after search report, and before Exam report.

  • Amend once, 2 months after S18(4)
  • Amend once when responding to S18(3), (unless CSER, in which can can (keep on) voluntary amending until responding to report.)

—>Doesn’t apply to claims or if amendment is consented to (i.e. PF1-applicant details), but must provide reason for this to apply

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
27
Q

Amicable solutions to infringement

A

Offer license
Offer to sell the product or service to them
Cross-license

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
28
Q

Duration of a US registered design

A

15 years from issue

There is no renewal

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
29
Q

How to calculate employees compensation

A

Should be a for share of the benefit to the employer as a result of the invention, the patent/application and/or any assignments (including overseas) … but does not extend beyond the period that the patent is in force

…whilst taking into account:

  • Employees duties and pay
  • The effort and skill in inventing
  • Any co-inventors contribution
  • The employers contribution
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
30
Q

What happens if reinstatement occurs after r30 compliance period

A

Compliance and S18(3) deadline extended. But only one opportunity to get the application in order for grant

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
31
Q

What are the different lengths of protection for design rights

A

UKRD & CRD - 5 years renewable every 5 years up to 25 years

UK UDR - 15 years from the end of the year it was first recorded, OR 10 years from the end of the year is was made for sale or hire, but must grant a license in the last 5 years.

Community unregistered Design - 3 years from first disclosure in the EU

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
32
Q

Liability for intentionally copying a registered (UK or community) design without consent

A

Criminal offence

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
33
Q

Grounds for revocation

A
  • Lack of patentability
  • insufficiently enabling description
  • added matter
  • amendment extending protection after grant
  • lack of entitlement (not in EPC and only by an entitled party up to 2 years from grant, unless the proprietor knew they weren’t entitled)
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
34
Q

How does security provision effect prosecution

A
  • File at UKIPO
  • Wait 6 weeks before any foreign filings
  • publication may be delayed by 3 months, which is reviewed every 12 months and extended as necessary
  • prosecution continues up to readiness for grant
  • breaching rules is liable for unlimited fine and 2 years in prison

… government may make hardship payment and renewal is waived

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
35
Q

Effects of reinstatement

A

Third party rights arise (after 108(2) extension deadlines) if the application had already published and begin in good faith or make Serious and effective preparation to do so

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
36
Q

What is the time frame for documents to appear on the UK patent register

A

Typically 14 days

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
37
Q

Grace period for design disclosure

A

12 months:
US, EU, JP, UK

6 months:
AU, IN, KR

0 months:
CN

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
38
Q

When do prior use rights arise

A

When, in the UK, before the priority date, someone in good faith did or made serious and effective preparation to do a now infringing act

… check for prior disclosure

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
39
Q

What is a threat of infringement

A

A communication wherein a recipient would reasonable understand that:

A patent or application exists
Someone intends to bring infringement proceeding

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
40
Q

What is the deadline to appeal an application

And why is this is significant?

A

Typically 28 days, unless it is a point of procedure in which case it is 14.

The decision being appealed is typically last 18(3)

R30 extended time end of 28days or end of the appeal

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
41
Q

What communication are not permitted (In relation to infringement)

A
  • Request to cease commercial activities
  • request to deliver up or destroy goods
  • request to give an undertaking
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
42
Q

Interim injunction requirement

A
  • that a serious case is to be tried
  • eventual damages would not be adequate-
  • that there is a balance of convenience

… if all the above are balanced, then the status quo will be maintained,

… but financial cross-undertakings may be required to compensate the other side of wrongly awarded

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
43
Q

How long is the UK grace period for patent?

A

6-months if the disclosure was unauthorised or in breach of confidence

(Or an officially recognised exhibition)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
44
Q

When are EP(GB) renewals due

A

4 years from filing

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
45
Q

How long is the EP grace period for disclosure of an invention

A

6-months if unauthorised, In breach of confidence or at an officially recognised exhibition

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
46
Q

What is PF49

A

A request to be informed of future events relating to a patent application or patent (including entry into the register)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
47
Q

How can you change an applicant

A

Correct:
- If an error in the register, Correct PF1, in writing, with evidence of reason (rule 50)

  • If an error in the application, correct in writing, (rule 105: s117 correction of errors)

Amend:
- File a request, in writing, if PF7 has not been filed (rule 31: pre grant amendments)

Assign:
- Register a transaction (rule 47)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
48
Q

Steps to get a pending EP in order ahead of infringement proceeding

A
  • Request PACE
  • Request early publication
  • Pay exam and designation fee early
  • prepare translations early and send to EPO and desired states
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
49
Q

Deadline for third party observations

A

Between publication and grant, providing an 18(4) has not been issued

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
50
Q

When does exhaustion of rights apply for a patented product

A

When an imported product has already been sold with the proprietors consent within the EEA

51
Q

What right to co-owner of patents have

A
  • Each can work the invention independently;
  • Each can sue for infringement (other party brought in but not liable)
  • a new invention arising from a co-owner is treated as normal (I.e no rights to the other party unless co-invented)
  • But they must agree to amend, revoke, license or assign

…. subject to agreement.

(Anyone can supply a co-owner without secondarily infringing)

52
Q

Deferences between UK registered design and community registered design

A

Multiple community designs in a single application must be in the same top level Locarno class

53
Q

Primary infringement (product)

A

A person infringes a patent if, while it is in force, they:

Make, offer to dispose, dispose, use, import or keep the product,

In the UK

54
Q

Review of an opinion

A
  • patentees and exclusive licensees can request a review of an opinion
  • within 3 months of the opinion
  • using a form
  • Review advertised in OJ and observations can be filed within the later of 4 weeks of advertisement of review or 2 months from issue of opinion
  • a new opinion is not issued. The old one is either upheld or set aside.
55
Q

What is an ‘invitation to treat’

A

Listing or stocking a product but not necessarily offering for sale (disposal

… this is not offer to dispose.

But an injunction can still be obtained to prevent sale, which would be an infringement

56
Q

Farmers rights to infringe

A

Propagating the product of a harvest on own holding

But farmers may have to pay the rights holder an equitable remuneration for acts under s60(5)g. The rights holder can request usage information for the current and 3 preceding ‘seed years’

57
Q

What is support

A

A pre-grant check of whether there is enough technical information in the application to support (I.e. provide basis) for the claims

58
Q

What are the criteria for a late file declaration to priority

A

Must be within 2months of the end of the priority year (using the form and paying the fee) and must provide evidence that missing the deadline was unintentional,

Providing there is no effective request for early publication of application claiming priority

59
Q

UK renewal due date

A

At the end of month 4 years from filing. And every year thereafter. Can be paid in the three months before and including this month.

Unless granted in the last 3-months of the 4th year(3.75 years from filing) or later, the renewal is due 3-months after grant.

60
Q

Primary infringement (process)

A

A person infringes a patent if, while it is in force, they:

Use or offer it for use in the UK where it is known or would be obvious that it would infringe to do so,

Or offer to dispose, dispose, use import or keep a product obtained directly by the process.

in the UK

61
Q

When must you file a certified copy of a priority document

A

16-months from priority, unless a copy is already available

62
Q

What is due when filing a divisional or priority claiming application

A

Within 12months of priority or 2 months of filing:

  • Claims and abstract
  • Description(i.e. only a reference has been made) & translation, if necessary
  • pay the application fee
  • request and pay search fee
  • identify of applicant

Within 4 months of filing: certified copy & translation of referenced document, if needed

Within 16 months of priority: a certified copy of the priority document

Unless within the last 6months of the compliance period, where all is due on filing

63
Q

Grace period for UK designs disclosed by the designer or anyone given, entitled to or ensuing information from the designer

A

12 months

64
Q

What UK extension are available for interruptions and delays in (external) communication services

A

Rule 110 - interruptions
Comptroller can certify an Interruption day if interruption to normal proceedings at UKIPO or in the UK postal service

Rule 111 - delay
Comptroller shall extend any period if comptroller is satisfied that the deadline was missed due to delay or failure of a communication service (postal or courier). Evidence is needed.

65
Q

When can you add missing drawings or text into a UK patent

A

Between filing and the preliminary examination or within 2-months of the notification by the preliminary examiner providing that :

(A request to keep the filing date is made within that period),

The priority document contains the missing part, and

A certified copy of the priority document is filed within the earlier of (the normal) 16months or 4 months from the request to add missing parts

66
Q

How far back can you claim damages for

A

6 years - generally

5 in Scotland

67
Q

Deadline and criteria for reinstatement

A

1 year from termination of the application, providing the termination was unintentional.

68
Q

Who can enforce an as of right license

A

The licensee can ask the licensor to enforce the license

… if they do not within 2m, the licensee can enforce it license much like an exclusive licensee or co-owner (I.e. owner drawn in but not liable unless they partake)

69
Q

What is required when making a declaration of priority for a divisional or application following a dispute

A

A request in writing, on the day of filing.

70
Q

Cancelling an an as of right licensee

A

The proprietor:

  • any time
  • pay balance for all discounted renewals
  • licensees must consent

Third party:
- within two months of entry that licenses are available, if they have an existing license/agreement

Each of the above may be opposed within 2 months

71
Q

Secondary Infringement

A

A person infringes if they supply or offer to supply in the UK an unauthorised party with means relating to an essential element of the invention and if the person knows or it is obvious that those means are suitable for and intended for putting the invention into effect in the UK

Unless the means is a staple commercial product and is not used to induce primary infringement of a product

72
Q

Novelty requirements for UK designs

A

Excludes material that could not have reasonably become known to EEA businesses in the relevant specialists sector

But, a design must be novel and have in social character over existing UK and Community designs (which may not have been published)

73
Q

How do you determine if an invention is excluded

A

Using Aerotel:

I) properly construe the claim

2) identify the actual contribution
3) ask if this is solely excluded
4) check if the contribution is actually technical

Step 2) is where ‘as such’ gets decided

74
Q

What patents and inventions fall within the Secrecy provision

A

GB, EP or PCT (filed at the UKIPO)

That related to military technology or are prejudicial to national security or public safety

… but do not apply if a non-UK resident previously filed the application overseas

75
Q

Effects on licensees when transfer occurs under S8 or S10

A

License continues is one applicant remains

Lapses, upon registration, if no applicants remains

…. but if serious and effective preparations are made to work the invention in good faith, they are entitled to a (reasonable) non-exclusive license. This should be requested within 2 months of the S8 transfer

76
Q

What is a permitted communication

A
  • Notice of a patent or application
  • Discovered whether and by whom a patent or published application is being infringed

(- giving notice that a person has rights in that patent and that the 3rd party’s awareness is relevant to future proceeding)

77
Q

How can you correct a PCT

A

Rule 91 - can correct an obvious mistake if correction is also obvious.

Deadline is 26months from priority

78
Q

Effects of non-registered transactions

A

No costs or expenses, unless:

Registered within 6months, or
Can be proved to have been registered as soon as practically possible

79
Q

What is sufficiency

A

Whether the full scope of the claim is clearly and complete disclosed by the description

80
Q

When and why obtain a certificate of contested validity

A

If during proceedings a patent is found valid or partially valid, the comptroller may award a certificate to that effect.

Any subsequent validity challenges are liable for costs on an indemnity basis. (I.e. also paying reasonable legal costs for the proprietor)

81
Q

Can you withdraw a priority claim

A

Yes:

for a PCT- before the national phase begins

For a GB - before preparations for publication are complete (5 weeks before publication)

82
Q

Infringement burden of proof

A

The patentee

…. other than a new product from a patented process, in which case existence of the product causes presumption of infringement

83
Q

When is employee compensation possible

A

If whilst a patent is granted or within 1 year of its lapse

An invention made by the employee but owned by the employer is of outstanding benefit
OR
An invention made by the employee but assigned or exclusively licensed to the employer and the benefit to the employee is inadequate

…and it is just just that the employer (further) compensates the employee. The comptroller MAY award compensation

84
Q

Requirements of an abstract in the UK

A
  • Starts with the title
  • Is concise, containing the field and an explanation of the main use of the invention
  • identifies the main figure
  • reference numerals as applicable

DOES NOT FOR PART OF THE STATE OF THE ART for s2(3) - novelty only

85
Q

What limitations exist for S12

A

Entitlement of foreign and convention patent:

  • applicant resides or employed in the UK
86
Q

Requirements to register a design

A

Novel - differs by more that immaterial detail

Individual character - different overall impression in the informed user

… taking into account the degree of freedom available

87
Q

What is the time limit to file a new UK application following a dispute

A

Within 3 months of the comptrollers order (or within 3months of the end of any appeal of that order)

88
Q

If allowing the comptroller to determine infringement, what can he award

A

Damages

Declaration of validity and infringement

89
Q

What forms (and fees) are needed for amendments, corrections and filing missing drawings/text

A

None, request in writing….

Give reason/basis for amendment

90
Q

When can you file missing drawings or text?

A

Between filing and preliminary examination, or within 2 months of notification by the preliminary examiner (i.e. if notified by the exam)

But… the filing date will be redated, unless;

the missing parts were identified if the priority document and a request, in writing, not to redate the application was made within the time period above.

Will fail if priority doc isnt certified by the earlier of 16m, or 4m from request to keep date

91
Q

How can you amend a PCT

A

Art 19 - can amend claims once, if filed at the IB, after receipt of search report and up until 2months after receipt of report or 16m from priority, which ever is sooner

Art 34 - further amendments to claim, and amend drawings and description, if request international preliminary examination.

CANNOT ADD MATTER

92
Q

Why offer a settlement

A

Amicable..

… and Because if the claimant recovers less than was offered, they pay full costs

93
Q

What extension are available due to an error by the UKIPO

A

Rule 107-comptroller may correct any error by the UKIPO.

Extensions may be granted by the comptroller if the UKIPO was solely or partly responsible

94
Q

What is the Time limit for entitlement proceeding

A

2 years form grant unless the ‘owner’ was knowingly fraudulent

But can only be raised by a potentially entitled person after grant

95
Q

Design Rights priority period

A

6 months

96
Q

How to register foreign assignments

A
  • Use EPO for EP patents

- IB can be notified for PCT during International phase but no register so cannot be recorded

97
Q

What are the requirements for the applicant of a PCT

A

All priority applicants must be named, or an effective assignment should have taken place before filing

98
Q

What is the test for inventiveness

A

Windsurfer/pozzoli

Identity PSA and their CGK
Identify (or construe) the inventive concept
Identify the difference
Are the difference obvious to the PSA or inventive

99
Q

What is unity

A

Two or more inventions are considered to have unity when they share between them a technical relationship based on matching or complimentary special technical features that, when considered as a whole, define a contribution over the prior art (e.g. plug and socket)

I.e. the concepts that unifies the claims must itself have ‘inventive character’

100
Q

Things to consider when using S10

A

Using S8 entitlement in parallel,

A conflict of interest is likely so advise one party to seek new representation

101
Q

Employer owned invention

A

…if it was in the course of normal duties Or specifically assigned duties, and an invention might reasonably be expected to arise from them

Or

Course of duties which imply a special obligation to further the interest of the employer

….. for employees normally resident in the UK and mainly employed here

102
Q

Who is entitled to a license as or right

A

Anyone if the proprietor has listed that one is available

Including infringers during proceeding, without admitting liability, which limits damages to x2 the retrospective license fee.

…. except for the case of importation from outside the EEA

103
Q

Remedies for unjustified threats

A

Declaration that the threat was unjustified

Injunction against continued threats

Damages (for a aggrieved party)

104
Q

Amending inventor details

A

File new PF7 in first 16m

105
Q

What are the requirements for accelerated prosecution

A

‘One must demonstrate hardship’, such as likely infringement or potential investment.

Also ‘green’ inventions

Accelerated/early search can also be applied for, with a reason (i.e. before foreign filings), which is a distinct concept

106
Q

Differences between community unregistered designs (CUDR) and UK registered designs

A
  • no registration required
  • last 3 years from first disclosure in the EU
  • copying is required for infringement
107
Q

What happens if two assignment occur for the same patent

A

The later transaction has entitlement over the earlier transaction if the earlier was not recorded and the the later party didn’t know about the earlier transaction

108
Q

What is the time limit to restore a lapsed design renewals are missed

A

12 months of the missed period (I.e. 6 months after grace)

… providing it was unintentional

109
Q

What happens if the owner of a patent that I am licensing changes

(Or if I’m an old proprietor)

A

I am entitled to a new license to continue working the invention (or start if serious and effective preparation have been made), in good faith in the UK.

Must request a license within 2months of the order of the transfer

110
Q

How can you correct a UK patent

A

S117 - corrections of errors in patents and application.

Rule 105 - request in writing, if obviously an error and correction is obviously intended. Can do so at any time.

111
Q

UK UDR inclusions/exclusions

A

Inclusion

  • shape of configuration
  • Purely functional design

Exclusion

  • must fit
  • must match
  • Surface decoration
  • a part of a part
112
Q

What Grace periods are available for designs

A

UK / EU / US- 12 months of disclosure from designer (directly or indirectly)

But, most countries require direct filing (or using The Hague system) if using the grace period. A priority filing may not be sufficient following disclosure.

113
Q

Defences against unjustified threats

A

The threatener:

Show that the action dies in fact infringe

114
Q

Statutory Exclusions - doesn’t rights

A

Features of a product who’s appearance are solely dictated by technical function

Features required to connect to something (‘must fit’ exclusion)

Parts of a complex product not visible during normal use

115
Q

Criteria for an unregistered design right in the UK

A

The design must be original (I.e. not commonplace in the relevant field within a qualifying country when created, so novelty is not universal)

Must be created by a qualifying person

Can be an (internal or external) shape or configuration, but not a surface decoration

Only exists once the design is recorded

Must fit exclusion (as in RDR)
Must match exclusion (unique to UDR)

116
Q

Restrictions on damages

A
  • Damages/account of profit not awarded against a defendant who can prove they were inward and had no reasonable grounds to suppose the patent existed
  • damages are discretionary during grace period
  • limited time x2 as of right license fee
  • cannot aim cost or expense if transaction not register within 6months it ASAP
  • (claims were amended and I don’t know, published application was in bad faith)
117
Q

When must assignments and licenses be recorded

A

Within 6 months or as soon as practical… (using a form, paying a fee and including evidence)

…otherwise costs and expenses for infringement proceedings will not be awarded to assigned or exclusive licensee

118
Q

What can I do if a assign or (exclusively) license a patent that is infringed

A

You can Bring infringement proceeding for the earlier acts

119
Q

Damages for partially valid patents

A

Damages possible if:

  • The infringer knew or would reasonably suspect they they were infringing
  • the patent was framed in good faith with reasonable skill and knowledge
  • infringement proceeding were brought in good faith

…but Expenses and date for damages is at the comptrollers discretion

120
Q

What is an actionable threat

A

A threat of infringement proceeding is actionable by an aggrieved party (not necessary the recipient), unless….

What: The threat is in respect of making or importing a product, or using a process (or intending to)

Who: Or the threat was to a person who has done or intends to do the above (but the threat itself is not limited to those acts)

Or the threat was in a permitted communication

121
Q

Is a PCT valid s2(3) prior art in the UK

A

Only if it enters the UK National phase or EP regional phase

122
Q

What is the EP problem solution approach

A
  • determine the closes prior art
  • determine what features differ from that art
  • determine the technical effect of those features
  • derive an objective technical problem solved by that effect
  • determine if, given the closes prior art and the problem, whether the PSA would have arrived at the invention, taking account of CGK and other art
123
Q

How can you join opposition proceedings after 9m

A

You can intervene to make observations if infringement proceeding are instituted against you

124
Q

Factors to consider when asked to ‘best protect a design’

A
  • Registered AND unregistered, why;
  • line drawings, shading, grey scale photo?
  • term … any need to renew?
  • UK, EU, PCT or national rights

FD1 (1 decks)

Brainscape helps you reach your goals faster, through stronger study habits.
© 2024 Bold Learning Solutions. Terms and Conditions