FD1 - Legal tests Flashcards
What is the test for indirect infringement?
Supply or offer to supply in the UK
To an unauthorised person
Means relating to an essential element of the invention
Where they know, or it would be obvious to a reasonable person
That the means are suitable for an intended for putting the invention into effect in the UK
(Double territorial AND knowledge requirement)
What are the defences to indirect infringement?
Provision of a staple commercial product UNLESS it is an offer to induce infringement
(If the defendant did not reasonably have knowledge of the patent, they cannot be inducing infringement)
What is the test for manufacture vs repair?
Is the part a free-standing part?
Is the part a subsidiary part?
Does the part embody the core inventive concept?
Would it be reasonable to expect the part to be replaced several times over the course of the life of the product?
Does the part have an independent commercial existence?
Is there an implied licence to repair?
Essentially, repair is not infringement. Making the product anew is manufacture and is therefore infringement.
What is the test to establish a threat?
Would a reasonable person in the position of the recipient understand that (a) a patent exists and (b) a person intends to bring infringement action?
Is the person aggrieved?
Has the threat been made in respect of manufacture/import of a product or use of a process (non actionable)?
When is a communication (re. threats) made for a permitted purpose?
The communication must:
Give notice that a patent exists
Be intended to discover whether an by whom a patent or published application has been infringed
Gives notice that a person has a right in or under a patent/application where a third party’s awareness of that right may be relevant to future proceedings
What is considered necessary information (re. threats)?
Statement that a patent is in force/an application has been filed
Accurate details of the above which do not mislead
Identification of the product or process (which is allegedly infringing)
What is the test for an interim injunction?
Must show that there is a serious case to be tried (e.g. prima facie infringement, loss of sales)
The balance of convenience must lie with the person requesting the injunction (i.e. the client)
Court will try to maintain the status quo (i.e. if the competitor has launched and has a market share, court unlikely to grant)
Potential harm cannot be compensated for by damages
There should be no delay in applying
Can an exclusive licensee apply for an interim injunction?
Yes - proprietor will be made party
How should you assess a request for a declaration of non-infringement from a competitor?
- Has the request been made in writing?
- Does the request provide full details of their (allegedly non-infringing) activities?
If NO:
Client does not have the required information and should not grant the declaration. If the competitor goes to the Comptroller, they will not grant because the competitor did not provide full details to the proprietor. Consider requesting more details.
If YES:
Advise that refusing to grant the declaration might mean the competitor goes to the comptroller - might lead to expensive, time consuming litigation. Comptroller likely to grant if competitor is not infringing and could lead to invalidity/revocation proceedings.
How should you assess the possibility of pre-grant amendments?
Always advise acting quickly if the patent may grant in an invalid way.
If before publication, amend to optimise provisional protection (e.g. by making the claim more realistically allowable)
Does the amendment have basis?
Request amendment in writing and indicate why (e.g. to distinguish over prior art)
How should you assess the possibility of post-grant amendments?
Must be narrowing
Can be opposed - tell client
Always act quickly to avoid restriction of damages for infringement pre-amendment. This also helps with good faith - proceeding with a knowingly invalid patent may also restrict damages if proceedings not brought in good faith.
Must be in writing and provide reason why
When is does a disclosure not form part of the SOTA?
Within 6 months of the UK filing date:
An invention was obtained unlawfully
An invention was obtained in breach of confidence (test = air of confidence, not necessarily a written NDA)
Officially recognised international exhibition
NB grace period in the US
