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FD1 Exam Cards Flashcards

1
Q

Can EP and PCT applications be 2(3) prior art?

A

EP - always yes
PCT - only if it enters GB national or EP regional phase

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2
Q

What is the period where abusive disclosures do not form state of the art?

A

6m preceding filing date in the UK

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3
Q

By when must you file evidence that abusive disclosure was made at a recognised international exhibition?

A

Within 4m of filing or within 2m of national phase entry

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4
Q

What is required for there to be a breach of confidence?

A

An ‘air of confidence’ at the time that causes the recipient to understand the information is confidential

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5
Q

Can US provisional applications be prior art?

A

No, they never publish

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6
Q

What should you do if there has been a disclosure in breach of confidence?

A

File application asap before a verifiable publication of information occurs

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7
Q

What should you do if a non-enabling publication is made by a third party in breach of confidence?

A

Request documents are returned and no further publications are made. File application asap.

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8
Q

What are the Windsurfer/Pozzoli steps?

A

1) identify the person skilled in the art and the common general knowledge
2) construe the inventive concept
3) identify differences between state of the art and the construed invention
4) decide whether these difference would be obvious to the skilled person

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9
Q

What is the deadline for filing a priority claiming application? Can it be extended in UK?

A

Within 12m of priority date. Can retrospectively request restoration of right to claim priority within 2m of DL if failure unintentional. Form and fee. Must declare priority when filing request.

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10
Q

What is the deadline for declaring priority if priority claiming application is filed on time?

A

16m from priority date

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11
Q

When must certified copy of priority doc be filed?

A

Within 16m of priority date

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12
Q

When must you declare priority if filing priority claiming application late?

A

When filing priority claiming application

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13
Q

What is the deadline for correcting errors in the priority claim in UK?

A

16m from from priority date or 2m from notification

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14
Q

What is required for according a filing date?

A

a) indication that a patent is sought
b) applicant identifying and contact details
c) description or reference to earlier app

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15
Q

When filing by reference to earlier app, when must certified copy of earlier app be filed?

A

Within 4m of filing

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16
Q

When filing by ref to an earlier app, by when must you file the description?

A

Later of 12m from priority or 2m from filing

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17
Q

When filing by ref to an earlier app, by when must you file a translation of the earlier app?

A

Within 4m of filing

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18
Q

For a direct GB app, what is the deadline for filing claims and abstract and paying the application fee? Can this deadline be extended?

A

Later of 12m from priority or 2m from filing. R108(2) and R108(3) extensions available. Can reinstate if R108(2) unintentionally missed.

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19
Q

When can missing parts be filed?

A

Between according filing date and start of prelim examination OR withing 2m of notification

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20
Q

When does preliminary examination start?

A

After payment of the application fee

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21
Q

When filing missing parts with request to retain original filing date, when must a certified copy of the priority doc be filed?

A

Earlier of 16m from declared priority or 4m from date of written request

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22
Q

For a GB app, by when must you file a translation of the description?

A

Within 2m of request from comptroller

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23
Q

When is the latest that a divisional application can be filed?

A

3m before compliance period end, or before parent grants.

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24
Q

When are the search req, Search fee and excess claims fees due for a GB app?

A

Later of 12m from priority or 2m from filing

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25
What number of claims attract excess claims fees?
>25
26
For GB nat phase, when must search req be filed and search fees and excess claims fees be paid?
2m from national phase entry
27
What is the deadline for requesting exam, paying exam fees and paying excess page fees? Is this extendible?
6m from publication. R108(2) and R108(3) extension available. Can reinstate if unintentionally miss R108(2)
28
What number of pages attract excess page fees?
>35
29
When does the application publish?
18m from priority
30
For a divisional filed within the last 6m of the compliance period, what must you do on filing?
File claims, abstract, description (if filing by ref), certified copy of priority doc, request for search and exam. Pay filing fee, search fee, claims fee, exam fee and page fees.
31
If your first comm is an 18(4), until when can you file a divisional?
2m from issue of 18(4)
32
For a div filed well before compliance period end, what is the deadline for requesting search and exam and paying the relevant fees?
Later of parent DL or 2m from filing divisional.
33
For a div filed well before compliance period end, what is the deadline for filing claims, abstract, description (if filed by ref) and certified copy of ref app and for paying the filing fees?
Later of 12m from priority or 2m from filing divisional for all except certified copy which is due later of 4m from filing parent or 2m from filing divisional
34
When is the earliest an application can grant?
3m from publication
35
What should you do to get earlier provisional protection?
Request early publication. No reasons needed
36
How can you request accelerated search and examination?
In writing and providing REASONS for accelerated processing (e.g. likely infringement, to secure investment, or 'green' invention)
37
What is the deadline for responding to 18(3) exam report? Is it extendible?
Deadline set by examiner. s117B Can retrospectively extend by 2m then comptroller has discretion to extend further.
38
What is the grant fee and when must you pay it?
Excess claims and page fees not yet paid. Due within 2m of 18(4).
39
When does the compliance period end?
Later of 4.5yrs from effective priority date or 12m from first 18(3) report
40
When does the compliance period of a divisional application end?
Later of 4.5yrs from effective priority or 12m from first 18(3) report OF PARENT
41
What's the deadline for declaring priority for a PCT if filed within 14m of priority date?
1m from national phase entry date
42
When is the compliance deadline? Can it be extended?
Later of 4.5y from effective priority or 12m from first 18(3) report. R108(2) and R108(3) extensions available. Can only get one 2m R108(3) extension. Can reinstate if R108(2) unintentionally missed.
43
What is the compliance deadline for new applications following a dispute?
Latest of compliance period of originating application or 18m from filing new app.
44
How long do you have to appeal refusal?
28 days
45
What's the difference between reinstatement and restoration?
You can reinstate lapsed applications and restore lapsed patents
46
When can you not reinstate?
1) app is actively withdrawn 2) extension still available 3) Missed DL relates to: a) proceedings before comptroller b) late declaration of priority with late filing c) reinstatement itself
47
How do you request reinstatement?
Within 12m of missed DL with form and fee and with evidence that failure was unintentional (evidence can be filed later)
48
What is the EPO equivalent of reinstatement?
Re-establishment. Requires all due care.
49
How long do you have to complete failed acts if application is reinstated?
At least 2m (period specified by comptroller)
50
What is the effect of reinstatement on infringing acts done between loss and reinstatement?
1) acts done in BAD faith are treated as such 2) acts done in GOOD faith may continue to the same extent (including serious and effective preparations to infringe)
51
When are acts done in BAD faith?
E.g. if done during as of right extension period; or if continuing / repeating an earlier infringement.
52
In respect of which year are first GB renewal fees due?
In respect of 5th year. I.e. filing date + 4yrs
53
When are renewal fees due and when can you pay them? (Normal case)
Renewal date = end of anniversary month Can pay up to 3m early Can pay up to 6m late with surcharge
54
What is the validation deadline for EPs
3 months from publication of grant. Must also file necessary translations
55
By when must you register transfer of GB application? Or what?
Within 6m of transaction or as soon as practicably possible. Form and fee. No evidence required. Costs and expenses will not be awarded in proceedings for infringment occuring before transfer is registered.
56
When can you register transfer of PCT centrally?
In international phase (i.e. by 30m) by recording at IB. No language requirement for evidence.
57
When can you record transfer of EP centrally?
Before end of opposition period.
58
When are renewal fees due and when can you pay them? (Late grant)
If grant is in 3m preceding 4th anniversary, renewals due 3m from grant date.
59
What can you do if you miss the renewal fee due date?
Pay within 6m grace period with surcharge.
60
What can you do if you miss the end of the renewal fee grace period?
Apply for restoration within 13m of missed grace period end with evidence that non-payment was unintentional.
61
What acts infringe on a product invention?
Making Using Disposing of Offering to dispose of Importing Keeping
62
What acts infringe on a process invention?
1) using or offering to use the process 2) Using Disposing of Offering to dispose of Importing Keeping... ... any product obtained directly by the process
63
What is the test for contributory infringement?
1a) are the supply and recipient in UK? 1b) is the offer to supply in the UK? 2) do the means relate to an essential element of the invention? 3) is it known or obvious that the means are intended for an infringing act?
64
What is a defence to contributory infringement?
That the means are a staple commercial product and are not used to induce a primary infringement
65
Who has the onus of proving an infringement?
The patentee, except where existence of a product cause a presumption of infringement of a process
66
What are the remedies for infringement?
1) injunction 2) delivery up or destruction of infringing product 3) damages or account of profits 4) declaration of validity and infringement
67
What is a quicker and cheaper option to infringement proceedings?
Seek non-binding opinion from comptroller and settle out of court. Can only get damages or declaration this way
68
What is the test for getting an interim injunction?
1) a serious case is to be tried 2) the potential harm cannot be adequately compensated for by eventual damages 3) there is a balance of convenience
69
For an interim injunction, when are damages likely to be adequate compensation and when are they not?
They are if licenses are in place. They are not if exclusive market position irreparably damage by competitor entry.
70
What can an exclusive licensee do?
Benefit from the invention to the exclusion of everyone else. Can bring infringment proceedings for acts occuring after the date of the license.
71
What is the general test for threats?
1) Has there been a threat? 2) If yes, is the threat actionable? 3) If yes, is there a valid defence?
72
What is the test for whether there has been a threat?
1) would a reasonable person understand that a patent or application exists? 2) if yes, would they understand that there is an intention to bring proceedings for an act in the UK? 3) if yes, there has been a threat
73
What is the test for whether a threat is actionable?
1) is the claimant aggrieved by the threat? If no, not actionable. 2) is the threat made in respect of a primary act? If yes, not actionable. 3) is the threat made to a primary actor (in respect of any act)? If yes, not actionable 4) is the threat contained in a permitted communication? If yes, not actionable
74
What is a primary actor? (Threats)
A person who has performed or intends to perform a primary act.
75
What is a primary act?
Making or importing a product for disposal, or using a process.
76
What are the defences to an actionable threat?
1) the threat was made in respect of an infringing act 2) reasonable attempts to identify primary infringer have failed and threat made to notified secondary infringer
77
When can employees apply for compensation when a patent has been granted that belongs to their employer?
When the granted patent is of OUTSTANDING benefit to the employer having regard to the size and nature of the employers undertaking (s. 40(1))
78
When can employees apply for compensation when a patent has been granted that was assigned from the employee to their employer?
When the benefit of the assignment is INADEQUATE in relation to the benefit of the invention to the employer (s. 40(2))
79
What is the deadline for claiming employee compensation under s.40(1) or s.40(2)?
1 yr after the patent ceases to have effect
80
What is the test for whether employee inventions belong to their employer?
If it was made in the course of: a) employees normal duties, or b) specifically assigned duties, and an invention might reasonably be expected to arise from them; or c) normal duties of an employee who has a special obligation to further the interests of the employer.
81
What happens if an application publishes despite a request for withdrawal prior to publication
Publication counts as s.2(2) prior art as normal, but not as s.2(3) prior art.
82
By when must additional search fees be paid?
No later than 3m before the end of the compliance period.
83
What are the relevant fees when filing a PCT application and when are they due? Can payment deadline be extended?
International filing fee, Search fee, Transmittal fee. Due within 1m of filing. If late, can pay within 1m of invitation to pay with surcharge.
84
How long do you have to wait before you can file foreign applications relating to military technology?
At least 6wks from filing GB app
85
When's the earliest a patent can be granted?
3m from publication
86
How long is 18(3) response period?
Set by the examiner but usually 4m extendable to 6m. However, if first 18(3) is received more than 3.5yrs from priority then response time is 2m extendable to 4m.
87
What must a new assignee or exclusive licensee do? Why?
Register transaction at ukipo within 6m of transaction. Otherwise later licences could supersede exclusive license and because costs/ expenses will not be awarded for infringement proceedings.
88
What's the deadline for making art.19 amendments?
Later of: 2m from mailing of search report 16m from priority date
89
What are defences to action brought in respect of threat made in relation to a patent application?
There are none - threats based on applications cannot be justified
90
What are the sections covering amendment?
s. 19 is pre-grant amendment s. 27 is post grant amendment s. 75 is amendment during revocation/ infringement proceedings
91
At what time does the applicant of a priority claiming application have to be the same as the applicant of a priority application in order for priority claim to be valid?
Prior to filing the later application
92
What are co-owners not allowed to do without permission from the other owners?
Amend, revoke or transact the patent. They can enforce the patent but other owners will be party to proceedings (although not liable for costs unless they take an active part).
93
What is the deadline for bringing entitlement action?
2yrs from grant
94
What are the sections relevant to entitlement?
s. 8 is pre-grant entitlement s. 37 is post grant entitlement s. 12 is entitlement to EPs and PCTs
95
You have been threatened with infringement proceedings in respect of an unpublished application. What is the first thing you should do?
Inspect the file of the application under s118(4) and obtain a copy of the specification. Assess whether client's activities fall within scope of pending claims.
96
What do you need to do if invention relates to military tech?
Seek permission from UKIPO to file abroad and publish the invention. Otherwise could be criminally liable. Can file UK app but need to wait 6 weeks before disclosing to see if s.22 directions are issued. Could file PCT at UKIPO but if s.22 directions are issued then app will not be forwarded to the IB or ISA
97
DL for requesting examination for PCT(GB)
33m from priority

FD1 (3 decks)

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