FD1 Flashcards
Why send a copy of an application/patent to an infringer
To prevent them from claiming ignorance
Does a variant (product/range) infringe if outside of the claimed scope
(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
Primary infringement of an unregistered design right
Acting to, or authorising another, to exactly or substantially copy the design to make an article or design document without a license
Authentic text of EP patents
… is the language of proceedings at the EPO,
But for GB purposes, it is The English translation
… Except for revocation proceedings
SPC’s
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 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
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
Employee rights with respect to their own invention
Can apply for a patent
Can work the invention
…without infringing employer copyright or design rights
Who must sign an assignment, mortgage or agreement in order for it to be valid
Assignor and a witness of personal or the company seal if corporate
What proceedings can be suspended:
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)
What inventions are excluded
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
When is the deadline to declare priority
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
Liability of falsely claiming a product is patented or there is a pending application
Fine up to £1000
… but only applies to disposal for value (I.e. not gifts)
Opinions
- 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
Secondary infringement of an unregistered design right
Importing, keeping, sell, hires or offers for sale/hire
And they know or have reason to believe it is an infringing article
When are priority documents and declaration of inventorship due for divisionals and applications following a dispute
16m from priority or 2m from filing
… unless within last 6m of r30 compliance, then they must be supplied at filing
Allowable drawings for patent filings
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
What extensions are available for UK renewals
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
When are forms drawings typically due?
15 months from filing or 1 month of notification
What is the compliance period for an application following a dispute
The later of the original compliance date or 18m from filing
What is the last opportunity for correcting errors in a priority claim
16months from priority
What is PF7
Declaration of inventor and right to grant of patent
What is an enabling disclosure
Enough information for the skilled person to work the invention across the whole scope of the claim
What is the response time for a UK OA
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
Who may be grant a patent
The inventor/s
Or, in preference, anyone entitled by agreement, law or treaty
Or a successor in title to the above
Rights of an exclusive licensee to pursue infringer
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 can you amend a UK application
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
Amicable solutions to infringement
Offer license
Offer to sell the product or service to them
Cross-license
Duration of a US registered design
15 years from issue
There is no renewal
How to calculate employees compensation
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
What happens if reinstatement occurs after r30 compliance period
Compliance and S18(3) deadline extended. But only one opportunity to get the application in order for grant
What are the different lengths of protection for design rights
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
Liability for intentionally copying a registered (UK or community) design without consent
Criminal offence
Grounds for revocation
- 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 does security provision effect prosecution
- 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
Effects of reinstatement
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
What is the time frame for documents to appear on the UK patent register
Typically 14 days
Grace period for design disclosure
12 months:
US, EU, JP, UK
6 months:
AU, IN, KR
0 months:
CN
When do prior use rights arise
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
What is a threat of infringement
A communication wherein a recipient would reasonable understand that:
A patent or application exists
Someone intends to bring infringement proceeding
What is the deadline to appeal an application
And why is this is significant?
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
What communication are not permitted (In relation to infringement)
- Request to cease commercial activities
- request to deliver up or destroy goods
- request to give an undertaking
Interim injunction requirement
- 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 long is the UK grace period for patent?
6-months if the disclosure was unauthorised or in breach of confidence
(Or an officially recognised exhibition)
When are EP(GB) renewals due
4 years from filing
How long is the EP grace period for disclosure of an invention
6-months if unauthorised, In breach of confidence or at an officially recognised exhibition
What is PF49
A request to be informed of future events relating to a patent application or patent (including entry into the register)
How can you change an applicant
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)
Steps to get a pending EP in order ahead of infringement proceeding
- Request PACE
- Request early publication
- Pay exam and designation fee early
- prepare translations early and send to EPO and desired states
Deadline for third party observations
Between publication and grant, providing an 18(4) has not been issued
When does exhaustion of rights apply for a patented product
When an imported product has already been sold with the proprietors consent within the EEA
What right to co-owner of patents have
- 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)
Deferences between UK registered design and community registered design
Multiple community designs in a single application must be in the same top level Locarno class
Primary infringement (product)
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
Review of an opinion
- 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.
What is an ‘invitation to treat’
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
Farmers rights to infringe
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’
What is support
A pre-grant check of whether there is enough technical information in the application to support (I.e. provide basis) for the claims
What are the criteria for a late file declaration to priority
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
UK renewal due date
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.
Primary infringement (process)
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
When must you file a certified copy of a priority document
16-months from priority, unless a copy is already available
What is due when filing a divisional or priority claiming application
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
Grace period for UK designs disclosed by the designer or anyone given, entitled to or ensuing information from the designer
12 months
What UK extension are available for interruptions and delays in (external) communication services
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.
When can you add missing drawings or text into a UK patent
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
How far back can you claim damages for
6 years - generally
5 in Scotland
Deadline and criteria for reinstatement
1 year from termination of the application, providing the termination was unintentional.
Who can enforce an as of right license
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)
What is required when making a declaration of priority for a divisional or application following a dispute
A request in writing, on the day of filing.
Cancelling an an as of right licensee
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
Secondary Infringement
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
Novelty requirements for UK designs
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)
How do you determine if an invention is excluded
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
What patents and inventions fall within the Secrecy provision
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
Effects on licensees when transfer occurs under S8 or S10
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
What is a permitted communication
- 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)
How can you correct a PCT
Rule 91 - can correct an obvious mistake if correction is also obvious.
Deadline is 26months from priority
Effects of non-registered transactions
No costs or expenses, unless:
Registered within 6months, or
Can be proved to have been registered as soon as practically possible
What is sufficiency
Whether the full scope of the claim is clearly and complete disclosed by the description
When and why obtain a certificate of contested validity
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)
Can you withdraw a priority claim
Yes:
for a PCT- before the national phase begins
For a GB - before preparations for publication are complete (5 weeks before publication)
Infringement burden of proof
The patentee
…. other than a new product from a patented process, in which case existence of the product causes presumption of infringement
When is employee compensation possible
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
Requirements of an abstract in the UK
- 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
What limitations exist for S12
Entitlement of foreign and convention patent:
- applicant resides or employed in the UK
Requirements to register a design
Novel - differs by more that immaterial detail
Individual character - different overall impression in the informed user
… taking into account the degree of freedom available
What is the time limit to file a new UK application following a dispute
Within 3 months of the comptrollers order (or within 3months of the end of any appeal of that order)
If allowing the comptroller to determine infringement, what can he award
Damages
Declaration of validity and infringement
What forms (and fees) are needed for amendments, corrections and filing missing drawings/text
None, request in writing….
Give reason/basis for amendment
When can you file missing drawings or text?
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
How can you amend a PCT
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
Why offer a settlement
Amicable..
… and Because if the claimant recovers less than was offered, they pay full costs
What extension are available due to an error by the UKIPO
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
What is the Time limit for entitlement proceeding
2 years form grant unless the ‘owner’ was knowingly fraudulent
But can only be raised by a potentially entitled person after grant
Design Rights priority period
6 months
How to register foreign assignments
- Use EPO for EP patents
- IB can be notified for PCT during International phase but no register so cannot be recorded
What are the requirements for the applicant of a PCT
All priority applicants must be named, or an effective assignment should have taken place before filing
What is the test for inventiveness
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
What is unity
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’
Things to consider when using S10
Using S8 entitlement in parallel,
A conflict of interest is likely so advise one party to seek new representation
Employer owned invention
…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
Who is entitled to a license as or right
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
Remedies for unjustified threats
Declaration that the threat was unjustified
Injunction against continued threats
Damages (for a aggrieved party)
Amending inventor details
File new PF7 in first 16m
What are the requirements for accelerated prosecution
‘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
Differences between community unregistered designs (CUDR) and UK registered designs
- no registration required
- last 3 years from first disclosure in the EU
- copying is required for infringement
What happens if two assignment occur for the same patent
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
What is the time limit to restore a lapsed design renewals are missed
12 months of the missed period (I.e. 6 months after grace)
… providing it was unintentional
What happens if the owner of a patent that I am licensing changes
(Or if I’m an old proprietor)
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
How can you correct a UK patent
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.
UK UDR inclusions/exclusions
Inclusion
- shape of configuration
- Purely functional design
Exclusion
- must fit
- must match
- Surface decoration
- a part of a part
What Grace periods are available for designs
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.
Defences against unjustified threats
The threatener:
Show that the action dies in fact infringe
Statutory Exclusions - doesn’t rights
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
Criteria for an unregistered design right in the UK
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)
Restrictions on damages
- 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)
When must assignments and licenses be recorded
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
What can I do if a assign or (exclusively) license a patent that is infringed
You can Bring infringement proceeding for the earlier acts
Damages for partially valid patents
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
What is an actionable threat
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
Is a PCT valid s2(3) prior art in the UK
Only if it enters the UK National phase or EP regional phase
What is the EP problem solution approach
- 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
How can you join opposition proceedings after 9m
You can intervene to make observations if infringement proceeding are instituted against you
Factors to consider when asked to ‘best protect a design’
- Registered AND unregistered, why;
- line drawings, shading, grey scale photo?
- term … any need to renew?
- UK, EU, PCT or national rights
