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UK Patent Law > Misc. > Flashcards

Misc. Flashcards

1
Q

What is the compliance period?

A

4 months and 6 months from filing or earliest priority date, if there is one, or 12 months from issuance of the first examination report, if this expires later.

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2
Q

If a new priority claim is added to a UK application which is earlier than the previous earliest claimed date, what deadlines are recalculated?

A

Compliance period.
Inventorship and filing priority documents (16 months).

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3
Q

What is the deadline for inventorship declaration?

A

16 months from filing or earliest priority date.

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4
Q

What is the deadline for the submission of priority documents?

A

16 months from filing or the earliest priority date.

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5
Q

What are the remedies for patent infringement?

A

They include injunctions, delivery up or destruction, and damges or an account of profits.

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6
Q

Can a late claim to priority be made upon entry into the UK national phase?

A

Yes, form and a fee. Within 1 month of entry into national phase. Reason for missing the priority period must be stated at time of filing request. Evidence can be provided later.

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7
Q

What is the deadline for making a late claim to priority (12 month period missed)?

A

Depends - the important thing is that the later application was filed within 14 months of the first filing (2 months late) .

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8
Q

What is the deadline for making a late declaration of priority?

A

16 months from first application.

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9
Q

How can a patent application (UK) be transferred into a new owners name?

A

Form 21 - no need to record deal transaction. Fee.

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10
Q

Do translations of deal documents need to be filed at IB?

A

No.

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11
Q

When do changes of ownership stop being recordable at the EPO?

A

After 9 month opp period, if none filed.
If opp or appeal pending, until end of appeal periods.

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12
Q

What is it important to remember with a withdraw and re-file strategy?

A

The first application needs to be withdrawn (leaving no rights outstanding) prior to filing of the second application.

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13
Q

What must someone provide to a patent proprietor when requesting a declaration of non-infringement?

A

Full particulars of the supposed non-infringing act/product.

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14
Q

What needs to be shown when applying for an interim injunction?

A

That there is a serious issue to be tried and that the balance of inconvenience is in favour of the client.

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15
Q

What is the situation w.r.t renewal fees for a UK patent that grants late (after 4 years)?

A

The renewal date rolls to the end of the month 3 months from grant. The 6 month renewal grace period runs from then.

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16
Q

What part of the month are renewals due to be paid?

A

Always the end of the month.

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17
Q

Does a sole licencee have a statutory right to enforce a patent?

A

No

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18
Q

What is required and by what deadline if a GB is filed by reference to an earlier application not in English or Welsh?

A

Certified copy of the priority document by 16m
Translation of priority document by 3 months from filing date.
An English description - separate act to translation of priority document, by 2m from filing date.

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19
Q

What is the deadline for restoration of a UK patent?

A

19 months from the date on which it lapsed (original missed renewal).

If renewal was due April 2015 then deadline to request restoration is November 2016 (the end of the month).

13 months from missed deadline - last month to pay original renewal fee.

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20
Q

What is the difference between restoration and reinstatement?

A

Restoration is for lapsed patents, reinstatement is for a patent application that has been deemed withdrawn following failure to meet with a procedural deadline.

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21
Q

What is the deadline, and requirement, for reinstatement?

A

unintentional and within 12m of missed deadline, always comment on 3rd party rights if published application.

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22
Q

Up until when can a divisional application be filed in the UK?

A

They can be filed up until 3 months before the end of the compliance period.
The compliance period can be extended by two months as of right and by a further two months if a reason is given at the discretion of the IPO.

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23
Q

Is insufficiency a ground that can form the basis of a UKIPO opinion?

A

No. It can at EPO opposition.

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24
Q

How long does a decision w.r.t secrecy directions take at the UKIPO?

A

6 weeks during which time no foreign filing or demonstration is allowed.

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25
Q

What is the GP for designs?

A

1 year

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26
Q

Does the GP for designs apply for disclosures in the US?

A

Yes

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27
Q

What occurs w.r.t to renewals fees if a GB patent grants within 3 months of the anniversary of filing?

A

A 3 month period from the grant date is allowed for the payment of the renewal fee.

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28
Q

What are the remedies for infringement? (5)

A

damages, or account of profits, final injunction, delivery up or destruction, declaration of validity and infringement (and costs).

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29
Q

What are the remedies for infringement? (5)

A

damages, or account of profits, final injunction, delivery up or destruction, declaration of validity and infringement (and costs).

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30
Q

When filing a divisional application within the last 6 months of the compliance period, what must be done on filing? (5)

A

File:
Claims
Abstract
Search and Exam request (and pay fees)
Form 7 (inventorship)
Pay application fee

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31
Q

If the notification of intention to grant is not the first communication from the UKIPO what is the time limit set for the filing of any divisional applications?

A

1 month

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32
Q

If a UK patent grants after 5 years have passed from filing, and the original 3 month from grant period to pay the renewal fees in respect of the 5th and 6th year has expired, how many late fees are there to pay?

A

Still only the one (if paying both overdue renewals at same time).

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33
Q

What can we do if our client, who sells an allegedly infringing product only (does not manufacture or import), is threatened via a rude letter with infringement proceedings w.r.t its sale, manufacture and import of the alleged infringing product?

(We are confident we do not infringe)

A

The letter is not a permitted communication because it goes far beyond the permitted purpose of simply giving notice that a patent exists.

Your client is clearly aggrieved by the tone of the letter, and so it’s possible that the threat is actionable

The threats relating to making and manufacturing the product are not actionable.

but the threat in relation to sale is, because your client is not a manufacturer or importer of product but does sell it.

The client could bring proceedings against the threatener seeking a declaration that the threat was unjustified, an injunction against further threats, and damages in respect of any loss sustained by the aggrieved person as a consequence of said threats.

34
Q

How can the PCT filing costs be delayed?

A

Application fee, search fee and any transmittal fee are due within 1m of filing.
If not paid within 1m, they can be paid at normal rate if they are paid before an invitation to pay with surcharge (50%) is issued.
The invitation will set a one month deadline from the date of the invitation to pay the fees with the 50% surcharge.

35
Q

How can the PCT filing costs be delayed?

A

Application fee, search fee and any transmittal fee are due within 1m of filing.
If not paid within 1m, they can be paid at normal rate if they are paid before an invitation to pay with surcharge (50%) is issued.
The invitation will set a one month deadline from the date of the invitation to pay the fees with the 50% surcharge.

36
Q

W.r.t the PCT, what is the deadline for requesting the correction of obvous errors?

A

26 months from the priority date.

37
Q

W.r.t amendment of PCT claims, what is the deadline for this? (3)

A

The later of:
1) 16m from the priority date (to allow publication to timely occur); or
2) 2m from receipt of the ISRWO/SR.

OR request Chapter II by later of 22m from priority or 3m from ISRWO transmittal.

38
Q

What is the deadline for Chapter II?

A

22m from priority or 3m from ISRWO

39
Q

When must the UK application and search fees be paid by?

A

Within 12 months from filing.
If missed, this can be extended 2m by requesting as of right extension within the 2m period and paying the fees.

40
Q

When can amended claims be submitted for a UK patent application prior to requesting examination?

A

Amended claims can be filed at any time after receipt of search report and prior to first Exam Report.

41
Q

What is the deadline to file a certified copy of the prior application and a translation if a UK patent application is filed by reference to a foreign application in a language other than English or Welsh?

A

4 months from filing.

42
Q

What is the deadline to furnish missing parts?

A

2 months from invitation.

43
Q

Can line drawings and solid colour drawings be used in the same design application?

A

No - they can be used in separate designs of a multiple design application.

44
Q

Who is the first owner of a design, the company or the designer?

A

Designer

45
Q

When would a disclaimer feature in a design application?

A

For example, in a shape application, if the drawings used show a pattern, a disclaimer which states that protection is sought only for the shape and contours not the pattern should be used.

46
Q

Can the compliance period be extended?

A

yes. 2m as of right extension (form and fee) within the 2m period from expired period.
Additional extension possible at discretion of Comptroller (form and fee and evidence).

47
Q

What happens if an application is not ready for grant by the end of the compliance period?

A

likely to be refused

48
Q

What happens if a 2nd Examination Report is issued with less than 2 months left of the compliance period?

A

The response will be due by the compliance period end, not 2m from date of report.

49
Q

Is it possible to indirectly infringe a UK patent by offering to sell/selling a commercial staple product, to UK customers, by advertising the staple as being for use with a patented article?

A

Yes, it is the advertisement/inducement that causes it to be infringement. If it was not advertised as being suitable, it would not be an infringement.
Must be in UK.

50
Q

Is it possible to indirectly infringe a UK patent by offering to sell/selling a commercial staple product, to US/JP customers, by advertising the staple as being for use with a patented article?

A

No - as the means are not for putting the invention into effect in the UK, so no infringement.

51
Q

If adding a late declaration to priority what must be withdrawn if it has been requested?

A

within 16m of earliest date, or 4m of filing a PCT.
Must not have requested early publication, or withdrawn such a request.

52
Q

Does an earlier application have to have been explicitly withdrawn leaving no rights outstanding to allow a later application to the same subject matter generate a priority right? or is it enough to allow the application to lapse without publication?

A

Must be explicitly withdrawn leaving no rights outstanding.

53
Q

What is the usual timeframe to file a divisional after s18(4) intention to grant is received (as the first official communication from UKIPO)?

A

Usually two months.
1 month if not the first communication.

54
Q

If a draft patent application, or other document, is lost in a public place but marked as confidential, does it count as a public disclosure of the subject matter?

A

According to 2018, Question 8 no.
The marking ‘CONFIDENTIAL’ results in a duty of confidence.

55
Q

If a draft patent application, or other document, is lost in a public place but marked as confidential, does it count as a public disclosure of the subject matter?

A

According to 2018, Question 8 no.
The marking ‘CONFIDENTIAL’ results in a duty of confidence.

56
Q

Can the abstract be used as basis for an amendment in a UK patent application?

A

No, not since at least 2010, regardless of if it is filed at date of filing or added later.

57
Q

What opportunities are there to amend the claims of a pending UK patent application?

A

Voluntary amendments after the search report has been recieved can only be filed once or in response to the first communication (Exam report).

Voluntary amendments at any other time are at the discretion of Comptroller.

Amendments whilst pending can broaden claimed subject matter.
Amenments post-grant cannot broaden claimed subject matter.

58
Q

What is due by 12m from filing a UK application? (3)

A

1) Abstract
2) Search request and search fee paid
3) Claims

59
Q

If the deadline for requesting examination (and fee) is missed by more than 2 months, and a succesful reinstatement request is made, what happens?

A

Comptroller will set a (2 month) deadline for requesting examination (and fee).

60
Q

When are renewal fees due in the UK? (4)

A

1) on the 4th Anniversary of filing;
2) on granted patents, not applications;
3) if an application grants after 4 years, the renewal is due within 3 months of the end of the month of grant;
4) this period can be extended by 6 months, with surrcharge.

61
Q

If a patent application publishes with only compound claims, what scope of provisional protection exists?

A

Compound claims cover all uses thereof for the purposes of provisional protection - if a patent application publication publishes with compound claims and the only claims to subsequently grant relate to uses of the compounds, it is still possible to get back dated damages - albeit they may be reduced if it was unreasonable to expect a patent to proceed to grant conferring protection for such use.

62
Q

What can be said about damages for an infringement occuring during the patent grace period (6m from renewal deadline)?

A

They are discretionary.

63
Q

Can a party A be sued for supplying to B a product which would otherwise be an indirect infringement of a patent, if the supply only occured following lapse of the patent?

A

No

64
Q

Successful product-by-process infringement claims requires what to be shown? (2)

A
  1. no other process could obtain the product/it was made by the patented process;
  2. the product is not materially changed following its production (process for paint for use on cars)
65
Q

Can proceedings for inventorship and entitlement be launched in the same application?

A

Yes.

66
Q

Can one co-owner revoke the patent without the consent of the other?

A

No

67
Q

Are surface decorations protectable by UDR?

A

No

68
Q

What is the downside of not registering a licence within 6m at UKIPO?

A

Risk that costs/expenses will not be allowed duing infringement action.

69
Q

Are threats based on an application ever justified?

A

Sometimes…

70
Q

What are the remedies available to a claimant for unjustified threats? (3)

A
  1. Injunction
  2. Declaration of unjustified threat
  3. Damages
70
Q

What are the remedies available to a claimant for unjustified threats? (3)

A
  1. Injunction
  2. Declaration of unjustified threat
  3. Damages
71
Q

What is the easiest way to register transfer at UKIPO?

A

PF21 - both parties or attorney sign this form.

72
Q

Is a Euro-PCT which paid the EP filing fee, but did not complete all acts needed to enter the EP Regional phase, novelty only art for other EP applications with a later priority date?

A

Yes.
Recent update.
Only if filed in, or translated into, EPO language.

73
Q

What test was set by Actavis v. Eli w.r.t the prosecution history of a patent? (3)

A

The prosecution history may be considered if:
1) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and
2) the contents of the file unambiquously resolve the point, OR
3) it would be contrary to the public interest for the contents of the file to be ignored.

74
Q

If a person became a proprietor or exclusive licensee before a particular infringement occurred, he cannot be awarded costs or expenses if the
relevant transaction, instrument or event was not registered before the date of the infringement, unless either of the two conditions in Section 68 is met. The conditions are what?

A

That registration occurs within a period of six months of the date of the
transaction, instrument or event (0.5 marks), or it is established that registration within that period was not practicable but occurred as soon as practicable thereafter (0.5 marks).

75
Q

Renewal fees can be reduced by making an application in the register that licences are available as of right.

What are the advantages and disadvantages of such a situation? (10)

A

Advantages:
Renewal fees reduced by half (1 mark)
Can be cancelled when finances improve (1 mark)

Disadvantages:
Third party can obtain a licence on request (1 mark)
Fee reductions must be paid back when the patent is no longer licence of right (1 mark)
Limit on damages in infringement proceedings (1 mark) to twice what would have been payable under the licence of right (1 mark)
Better terms for existing licensees (1 mark)
Cancellation of LoR can be opposed (1 mark)
Licensees can bring infringement proceedings (1 mark)

76
Q

What is the authentic text of a GB(EP) originally filed at the EPO in German? (2)

A
  1. The authentic text is the text in the language of the proceedings before the EPO;
  2. However, the authentic text is the English translation if the translation cofers protection which is narrower than that conferred by the original text.

Note: in revocation proceedings the original text is the authentic text.

77
Q

What happens if there has been an error in translation of the claims of an GB(EP) and an infringer only infringes the German language original claims but no the English translation?

A

There can be no infringement.

We can correct the error (possibly) and apply for the UKIPO to publish the correction.

Even if we provide the alleged infringer with the correct translation, we cannot bring action for acts before the corrected translation is published or sent to infringer.

Even then, the infringer may have a defence if (a) they began in good faith to do an act which would not constitute an infringement of the patent as originally translated but would do so under the amended translation; or (b) they made in good faith serious and effective preparations to do such an act.

78
Q

Can a UK patent application claim priority from a UK design application?

A

No, a UK design application is not an application for an invention.

79
Q

What defences are available to someone who falsely represented a product is patented? (3)

A
  1. There actually is a patent;
  2. The representation was made after the patent expired/revoked and before the end of the period which is reasonably sufficient to enable the accused to take steps to ensure the representation is not made/continues to be made;
  3. They used DD to prevent commission of the offence.

UK Patent Law (12 decks)

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