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P2 Flashcards

1
Q

What happens if not all conditions needed to obtain a filing date are fulfilled? What happens if all necessary conditions are fulfilled?

A

SECTION 15(3) - not all conditions fulfilled

The applicant is informed of the deficiencies.

SECTION 15(4) - all conditions fulfilled

(a) the applicant is given a filing date;
(b) the applicant is informed of what, and by when, anything missing needs to be filed in order that the application is not deemed withdrawn.

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2
Q

When is the application fee due?

A

SECTION 15(10)(C)

No priority claimed: 12 months from the filing date (Rule 22(7)(a));

Priority claimed: the later of 12 months from the priority date and 2 months from the filing date (Rule 22(7)(b)).

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3
Q

How is a divisional application correctly filed?

A

SECTION 15(9)

(a) the divisional must be made by at least one of the original applicants (or their successor in title) not later than 3 months before the compliance date, the parent must be “alive” (i.e., not refused, withdrawn, taken to be withdrawn or granted, the date of grant being taken to the date on which the grant letter (‘B’ Letter) is issued); and claim a different invention;
(b) the divisional can’t contain added matter (Section 76).

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4
Q

When are the claims and abstract due?

A

SECTION 15(10)(A)

No priority claimed: 12 months from the filing date (Rule 22(7)(a));

Priority claimed: the later of 12 months from the priority date and 2 months from the filing date (Rule 22(7)(b)).

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5
Q

According to Section 1(2), what are not inventions?

A

SECTION 1(2)

(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information.

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6
Q

What is the procedure if an invention has been disclosed at an International Exhibition?

A

RULE 5

Within 4 months of filing the application a certificate stating that the invention was exhibited and a statement identifying the invention must be sent to the Patent Office. This must have been issued at the exhibition by the authority responsible for the exhibition. The certificate must state the opening date of the exhibition or, if later, the date on which the invention was first displayed.

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7
Q

What are the two requirements that need to be satisfied for matter to anticipate an invention?

A

SECTION 2(1)

a) Prior Disclosure: The matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in infringement of the patent.
b) Enablement: The ordinary skilled person must be able to perform the invention which satisfies the requirement for disclosure - SmithKline Beecham Plc’s (Paroxeline Mathanesulfonate) Patent [2006] RPC 10.

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8
Q

How do you satisfy the comptroller that the failure to pay a renewal fee was unintentional?

A

SECTION 28(3)

Although there is no universal rule as to what level of evidence has to be provided, some evidence above and beyond a bald assertion of the law is required - Matsushita Electric Industrial Co. V Comptroller General of Patents [2008] EWHC 2071 (Pat), [2008] RPC 35.

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9
Q

What is a method of treatment of the human or animal body by therapy?

A

SECTION 4A(1)

Any medical treatment of a disease, ailment, injury or disability, i.e. anything that is wrong with a patient and for which he would consult a doctor, as well as prophylactic treatments such as vaccination and inoculation. Application of substances to the body for purely cosmetic purposes is not therapy.

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10
Q

What biotechnological inventions are excluded from patentability?

A

SECTION 76A

  • the human body and gene sequences discovered in it (although an isolated gene may be patented in conjunction with an industrial application of it);
  • cloning humans;
  • modifying the human germ line;
  • industrial or commercial exploitation of human embryos including stem cells where harvested from embryos;
  • genetic modification of animals that is likely to cause suffering without giving rise to significant medical benefits, and patenting the resulting animals themselves, and
  • inventions relating to individual plant or animal varieties (covered by UPOV).
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11
Q

What is the repercussive effect?

A

In patent claims, a dependent claim might have a repercussive effect on the claim on which it depends, such that the matter introduced in the dependent
claim clarifies a point of interpretation on the independent claim.

Warheit v Olympia Tools [2003] FSR 6

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12
Q

What form should second medical-use Claims have? What is the current ruling on Swiss-type Claims?

A

“Substance X for use in the treatment of disease Y”.
Following the Enlarged Board of Appeal decision in G 02/08, “Swiss-type” Claims are no longer allowable. In a difference from EPO practice, this rule applies to all pending applications.

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13
Q

What is the Pozzoli approach to assessing obviousness?

A

(1) (a) Identify the notional “person skilled in the art”;
(1) (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim, or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

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14
Q

What is the current process for determining whether a Claim is related to an excluded category?

A

i. Properly construe the Claim;
ii. Identify the actual contribution;
iii. Ask if this falls within an exclusion;
iv. (Check if the actual contribution is technical)

Aerotel/Macrossan [2006] EWCA Civ 1371
Aerotel [2007] R.P.C.7

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15
Q

Does a GB application published on or after the inventor’s priority date form part of the state of the art for the purposes of Section 2(3)?

A

Yes, except for its abstract, which is not part of the state of the art for the purposes of Section 2(3), see Section 14(7).

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16
Q

How is it decided whether an invention of integers is a collocation?

A

SECTION 3

If two integers interact upon each other, or if there is synergy between them, they constitute a single invention having a combined effect. But if each integer performs its own proper function independently of any of the others, and the claim is a mere aggregation or juxtaposition of features, then each is a separate invention. The combination of a series of known or obvious features will be a matter of design or mere collocation, not of invention.

SABAF SpA v MFI Furniture Centres Ltd [2005] RPC 10

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17
Q

What is the aim of the Protocol to Article 69 EPC?

A
  • to avoid over-emphasising the literal wording of the claims considered in isolation from the patent specification;
  • to avoid broadening the general inventive concept over the prior art which inevitably disregards the claims as a fair definition of the disclosed invention.
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18
Q

What are the formal requirements for filing a patent application?

A

RULE 12(1)

Rule 12(1): The application should be made by using Patents Form 1;
Rule 14(1): The application should be in English or Welsh;
Rule 14(2) and (3): The documents and drawings should be in the correct form.
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19
Q

What must be done by 12 months after the filing date (no priority claimed), or the later of 12 months from the priority date or 2 months from the filing date (priority claimed)?

A 
SECTION 15(10)
RULE 22(7)

The claims, abstract and request for search must be filed, and the application and search fees paid.

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20
Q

Can the periods to file the claims, abstract, application fee, request for search and the search fee be extended?

A

RULE 108

Yes, the periods can be extended once by 2 months as of right under Rule 108(2), and further discretions (in tranches of 2 months) may be granted at the discretion of the comptroller under Rules 108(3) to (7).

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21
Q

When does preliminary examination take place?

A

SECTION 15A(1)

After the application fee has been paid, provided only that the application has been given a date of filing and has not been withdrawn.

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22
Q

What was the decision of Kirin-Amgen (House of Lords, hence binding) with regard to equivalents?

A

The words of the claims should not be understood as what the author used them to mean, but rather what a skilled person at the date of filing of the application would have understood the author to be using the words to mean.

Additionally, if a claim is intended to cover products or processes which involve the use of technology unknown at the time the claim was drafted, then the patent specification and claims based there on should be drafted so that a person skilled in the art would understand the description in a way which was sufficiently general to include the new technology.

Kirin-Angen v Hoechst Marion Roussel [2005] RPC 9

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23
Q

When is an invention taken to be capable of industrial application?

A

SECTION 4

If it can be made or used in any kind of industry, including agriculture. “Industry” should be considered in its broad sense as including any useful and practical, as distinct from intellectual or aesthetic, activity. Processes or articles alleged to operate in a manner which is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application.

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24
Q

What is “therapy”?

A

The term “therapy” includes the prevention as well as the treatment or cure of disease.

Unilever Limited (Davis’) Application, [1983] RPC 219

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25
Q

What is “surgery”?

A

“Surgery” is defined as the treatment of disease or injury by operation or manipulation. It is not limited to cutting the body but includes manipulation such as the setting of broken bones or relocating dislocated joints and also dental surgery. In general, any operation on the body which requires the skill and knowledge of a surgeon would be regarded as surgery.

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26
Q

What is diagnosis?

A

SECTION 4A

(i) the examination and collection of data;
(ii) comparison of the data with normal values;
(iii) recording any deviation from the norm; and
(iv) attributing the deviation to a particular clinical picture.

G 01/04 Diagnostic Methods [2005] 5 OJEPO 334 [2006] EPOR 15

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27
Q

Under which circumstances can priority be claimed from an earlier application if the date of filing is more than 12 months later than that of the earlier application?

A

SECTION 5(2C)

(a) if the period expires on an excluded day;
(b) if the period expires on a day which is certified as one on which there was an interruption (Rule 110(1);)
(c) if there is a failure or undue delay in a communication service (Rule 111);
(d) if there is an omission or error by the comptroller, an examiner or the Patent Office (Rule 107(3)).

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28
Q

Under what conditions can a priority declaration be made after the time of filing, if the earliest priority date to be claimed is not more than 12 months before the date of filing of the application in suit?

A

RULE 6

(a) the declaration can be made up to 16 months (non-extendable) after the earliest priority date claimed;
(b) the declaration must be made on a Form 3 and accompanied by the prescribed fee;
(c) a request to publish the application under section 16(1) has either not been made or any such request was withdrawn before the preparations for publication had been completed;
(d) the application was filed on or after 01.01.05.

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29
Q

To whom may a patent be granted?

A

SECTION 7(2)

(a) primarily the inventor or his successor in title;
(b) the right may be overridden by any rule of law or any legally enforceable agreement existing at the time the invention was made, such as for inventions made in the course of employment (Section 39)

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30
Q

How are questions about entitlement to a patent dealt with before grant?

A

SECTION 8

The question may be referred to the comptroller, even before a patent has been granted.

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31
Q

What should every application for a patent contain?

A

SECTION 14(2)

(a) a request for the grant of a patent;
(b) a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim; and
(c) an abstract.

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32
Q

What should the claims do?

A

SECTION 14(5)

(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

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33
Q

What is the purpose of the abstract?

A

SECTION 14(7)

  • gives technical information
  • does not form part of the state of the art by virtue of Section 2(3)
  • may be re-framed by the patent examiner
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34
Q

How must an application for a patent be made?

A

RULE 12

  • using Patents Form 1;
  • including title, description and claims in that order and any drawing referred to in the description or any claim;
  • the title being short and indicating the matter to which the invention relates; and
  • the description including a list of any drawings briefly describing each of them,
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35
Q

According to the Patents Act 1977, how should the claims be interpreted?

A

SECTION 125

The claims should be interpreted by the description and drawings, and the Protocol on the Interpretation of Article 69 of the EPC applies.

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36
Q

What are the ‘Protocol Questions’?

A

1) Does the variant have a material effect upon the way the invention works? If ‘yes’, the variant is outside the claim. If ‘no’ -
2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If ‘no’ the variant is outside the claim. If ‘yes’ -
3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If ‘yes’, the variant is outside the claim.

Improver Corp. v Remington [1990] FSR 181

37
Q

According to Lord Justice Jacob in Ancon, how should the claims be construed?

A

The claims should be construed purposively, with the inventor’s purpose being ascertained from the description and drawings. This can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a ‘doctrine of equivalents’, it is because it is the fair way to read the claim in context.

Ancon Limited and ACS Stainless Steel Fixings Limited [2009] EWCA Civ 498

38
Q

Does the skilled person read a claim to distinguish it from prior art known to the applicant and acknowledged in the patent?

A

No, even though the skilled reader knows that the patentee is trying to claim something that is new, and will be averse to ascribe the claim a meaning which covers that which the patentee acknowledges as old, there is no rule that because prior art is referred to in the specification it cannot be found to have anticipated the invention claimed.

Tate & Lyle Technology Ltd and Roquette Frères [2010] EWCA Civ 1049

39
Q

What does Virgin Atlantic Airways indicate as to how the skilled person would construe a European claim with a two-part form and reference numerals?

A

The skilled person knows that while the ‘characterised’ may expect to divide an acknowledgement of the prior art from the new or inventive part of the claim this is not necessarily so, and while numerals may help identify the components of the preferred embodiment specified by the phrases of the claim, the numerals must not be used to limit the claim in any way.

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd. [2009] EWCA Civ 1062

40
Q

What are Swiss-type claims?

A

Swiss-type claims are process claims:

“use of product X in the manufacture of a medicament for the treatment of indication Y”

41
Q

According to BOS GmbH what is the ‘common general knowledge’ of the skilled person?

A

The ‘common general knowledge’ of the skilled person is considered to be all of the knowledge that is generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art. While the skilled person is considered to know of the existence of some earlier products similar to the invention, that knowledge does not extend to the inner workings of those products.

BOS GmbH & Co KG and Cobra UK Automotive Products Division Ltd [2012] EWPCC 38

42
Q

Is the scope of a Swiss-type claim broad enough to cover the use of the claimed compound during the manufacture of a medicament, even if the claimed compound is no longer present in the medicament itself?

A

No. The skilled person appreciates that a Swiss-type claim should be construed as being directed to the use as an active ingredient for the manufacture of a medicament that includes that ingredient, as to construe the claim otherwise would render the claim vulnerable to an attack of insufficiency.

Ranbaxy (UK) Limited and AstraZeneca AB [2011] EWHC 1831

43
Q

What is infringement?

A

Infringement of a UK patent occurs if a validly patented product or process is exploited within the UK without the patentee’s consent in the absence of a valid defence.

44
Q

What is the traditional test to determine if there has been a breach of confidence?

A

1) The information must have the necessary quality of confidence about it;
2) The information must have been imparted in circumstances imposing an obligation of confidence;
3) There must be a unauthorised use of that information to the detriment of the party communicating it.

Coco v A N Clark (Engineers) Ltd [1969] ROC 41, ChD

45
Q

What determines whether information has the necessary quality of confidence?

A

In order to be held to be confidential, information must not be trivial or commonplace, in the public or too vague. If a person whose conscience is fixed by a confidence puts the information in the public domain themselves and this information is used to the detriment of the owner the usual remedy is damages.

46
Q

What is a trade secret?

A

A trade secret is information that would cause real harm if it were disclosed to a competitor and the owner had limited its dissemination. To keep trade secrets protected, it must be established that the information is confidential, and it should be ensured that anyone informed of the trade secret signs a Non-Disclosure Agreement (NDA).

47
Q

What is the springboard doctrine?

A

The action for breach of confidence can protect public domain information where one party uses information that they obtain in confidence to springboard themselves above competitors, and benefiting from the breach.

Terrapin v Builders Supply [1967] RPC 375

48
Q

What are the two main defences to a claim of breach of confidentiality?

A

1) Where the recipient can show that the information is no longer confidential because it is now public knowledge through no act of the recipient (the recipient cannot be allowed to benefit from his or her own wrongdoing);
2) The court will not respect an obligation if confidence if it is in the public interest that confidential information is known to the public.

49
Q

What is needed to get a filing date?

A

SECTION 15(1)

(a) an indication that a patent is sought, which must be in English or Welsh, and need not necessarily be on Patents Form 1;
(b) sufficient information to identify the applicant(s), which may be a phone number, but if so address(es) must be furnished within 2 months;
(c) a description, which may be in any language, but if not in English or Welsh a translation must be filed within 2 months (Rule 14(1));
OR a reference to an earlier application, with application number, date of filing, and country of filing. A certified copy, as well as a translation, if needed, must be provided in 4 months if a copy of the earlier application is not “available”.

50
Q

What was the approach adopted in Smith & Nephew Plc v Convatec Technologies Inc & Anor [2013] EWHC 3955 with regard to ranges?

A

Justice Birss adopted the “significant figures” approach, where a range boundary should include everything equal to the boundary to one significant figure, calling it “the natural approach of the skilled person”.

51
Q

What is direct infringement?

A

SECTION 60(1)(A)

A person infringes a patent for a product if he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise.

52
Q

What is contributory infringement?

A

SECTION 60(2)

Supplying or offering to supply a part which is an essential element of the invention. Contributory infringement requires knowledge (objectively defined) on the part of the defendant. This is not knowledge of the patent, rather it is knowledge that what has been supplied will make the invention work. However, the part sold must have no other substantial use except for being used in the patented invention.

53
Q

What are the exceptions to infringement?

A

SECTION 60(5)

  • acts performed privately for non-commercial purposes;- acts performed for experimental purposes;- extemporaneous preparation of a medicine in a pharmacy;- use in a ship or aircraft which has accidentally, or temporarily, entered UK territorial waters or airspace;- use of an aircraft exempted from seizure in respect of patent claims (by the Civil Aviation Act 1982).
54
Q

How long is the compliance period?

A 
SECTION 20(1)
RULE 30

The compliance period is:

(i) four years and six months calculated from the declared priority date or, where there is none, from the filing date of the application; or
(ii) twelve months calculated from the date that the first substantive examination report is sent to the applicant, whichever expires the later.

55
Q

What is the ‘whole contents’ approach to novelty under Section 2(3)?

A

SECTION 2(3)

The state of the art for novelty purposes includes the “whole contents” of earlier applications, not just the claims.

56
Q

Can the compliance period be extended?

A

RULE 108

Yes, an extension as of right can be obtained for a further 2 months.

57
Q

Can the latest reply date set in an examination report be extended?

A

SECTION 117B
RULE 109

Yes, this is a period specified by the Comptroller and can therefore be extended “as of right” (Section 117B(2)), The request must be made (in writing) within two months of the expiry of the reply period. The Comptroller has discretion to ‘further’ extend the reply period (Section 117B(4)(b)).

58
Q

What happens if an application has been treated as refused at the end of the compliance period due to failure to respond to a substantive examination report, and is subsequently reinstated?

A

SECTION 20A

Both a new period for responding to the examination report and a new period for overall compliance will be specified. This will allow the applicant to respond to the examination report with amendments which bring the application into compliance, if necessary.

59
Q

What is the period for claiming priority after filing for an application that has been filed within 12 months of the earliest priority date? Can this period be extended?

A 
SECTION 5(2A)
RULE 6(2)(B)
RULE 108 SCHEDULE 4

If the applicant has not made a request under section 16(1) to publish the application, priority can be claimed up to sixteen months from the earliest priority date. This period cannot be extended.

60
Q

What is the test for misuse of private information as a result of a breach of confidence?

A

1) The claimant must have a ‘reasonable expectation of privacy’ with regard to the information (Article 8);
2) The claimant’s right to privacy must outweigh the defendant’s right to free expression (Article 10).

THE HUMAN RIGHTS ACT 1988
Article 8: a person has a right to a private life
Article 10: there is a right to free expression.

Campbell v Mirror Group Newspapers Ltd [2004] HL 22

61
Q

When is a prior use invention novelty destroying?

A

SECTION 2

There is no need for a skilled person to have actually examined the invention as long as they were free in law and equity to do so and if, in seeing the invention, the skilled person would have been able to understand what the inventive concept was.

Lux Traffic Controls v Pike Signals Ltd. [1993] RPC 107

62
Q

Who is the skilled person?

A

‘It is settled that this man, if real, would be very boring – a nerd… The no-mosaic rule also makes him very forgetful. He reads all the prior art but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next…’


Rockwater Ltd v. Technip France SA & Anor [2004] EWCA Civ 381

63
Q

What is the skilled person’s common general knowledge?

A

‘The common general knowledge is the technical background of the notional [skilled person]… This is not limited to material he has memorised and has at the front of his mind. It includes all that material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work or to help him understand the prior art.’

Bourns Inc v Raychem Corp [1999] 1 All ER 908

64
Q

Can the Person Skilled in the Art used to assess obviousness and the Person Skilled in the Art used to assess sufficiency be different?

A

Yes. If there is an invention in Technical Field A that applies common general knowledge from Technical Field B, then to be non-obvious and for the patent to be sufficient, the following three questions are the only ones to be asked:

1) Is the invention obvious to Person Skilled in the Art A?
2) Is the invention obvious to Person Skilled in the Art B?
3) Can the invention be implemented from the patent by a joint team of A + B?

If the respective answers are no, no and yes, then the patent is non-obvious and sufficient. Specifically, it is not legitimate to ask whether the invention is obvious to a joint team of A + B.

Schlumberger Holdings Limited v Electromagnetic Geoservices AS [2010] EWCA Civ 819

65
Q

What are the different questions to be asked of the skilled person when considering disclosure and enablement?

A

Disclosure: Could the skilled person understand the written description in prior art based on his general knowledge?

Enablement: Could the skilled person perform the invention based on the disclosed information?

Important: Disclosed information in patent applications does not have to be absolutely accurate for the patent to be enforceable.

Synthon BV v. SmithKline Beecham Plc (No.2) [2006] R.P.C. 10

66
Q

Can corrections to the specification be made post-grant?

A

SECTION 117

Yes, provided that

(a) It is clear that there is an error; and

(b) It is clear that what is now offered is what was originally intended.

67
Q

What are the five grounds for revocation of a patent?

A

SECTION 72

Non-patentability: the invention is not patentable (i.e. it is not novel or inventive, or it relates to excluded subject-matter such as business methods or methods of medical treatment);

Non-entitlement: the patent was granted to a person not entitled to it;

Insufficiency: the patent specification does not describe the invention sufficiently to enable it to be reproduced by the skilled person;

Added matter: the subject-matter of the patent extends beyond the content of the originally filed application;

Unallowable post-grant extension: the protection conferred by the patent has been extended by an amendment after grant but which should not have been allowed.

68
Q

What are the possible forums for revoking a patent?

A

Patents Court: A specialised section of the UK High Court with specially qualified patents judges.

Patents County Court (PCC): An alternative court aimed at resolving shorter and less complex patent disputes. A specialist patents judge also sits in the PCC. Unlike in the Patents Court, a patent attorney may represent a party before the PCC.

UKIPO: Proceedings before the UKIPO are almost completely in writing. There will be a hearing if experts are to be cross-examined.

69
Q

Can an priority be claimed for an application that has NOT been filed within 12 months of the earliest priority date?

A

SECTION 5(2A)
SECTION 5(2B)
RULE 7
RULE 108 SCHEDULE 4

An applicant may request permission to make a late declaration of priority up to 14 months after the priority date of the previous application, but only if the comptroller is satisfied that failure to file the application within time was unintentional and the applicant has not made a request under section 16(1) to publish the application.
This period cannot be extended.

70
Q

What is the obviousness test as clarified by Conor Medsystems?

A

It is not sufficient to succeed in an obvious attack to demonstrate a concept may be “obvious to try” but there must be “a reasonable expectation of success”.

Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] RPC 28

71
Q

What are the two grounds for revocation relating one way or another to amendments?

A

SECTION 72

Section 72(1)(d) relates to the situation where the matter disclosed in the specification extends beyond that in the application as filed. Material can, however, be copied from the claims into the description without problem;

Section 72(1)(e) relates to the situation where the protection conferred by the patent has been extended by an amendment that should not have been allowed. Such an amendment is usually considered to be a post-grant amendment.

72
Q

What is the difference between the effects of surrender and revocation of a patent?

A

SECTION 72

Surrender of a patent (Section 29) results in the patent ceasing to have effect as of the date of publication of the surrender (ex nunc). By contrast, if a patent is revoked under Section 72, the effect is retroactive and the patent is deemed never to have been granted (ex tunc).

73
Q

What is the legal basis for post-grant amendment?

A

SECTION 27
SECTION 75

Section 27: If the applicant is NOT involved in proceedings in the court or at the Intellectual Property Office.

Section 75: If the applicant IS involved in proceedings in the court or at the Intellectual Property Office.

74
Q

How is a claim to a material or composition for a particular purpose regarded?

A

As a claim to the material or composition per se.

(Adhesive Dry Mounting Co Ltd v Trapp and Co, 27 RPC 341

75
Q

When does repair to an article constitute patent infringement?

A

It depends whether the infringing act constitutes “making” the claimed product, and is a matter of fact and degree.

United Wire Ltd v Screen Services (Scotland) [2001] RPC 24
Schütz (UK) Ltd v Werit UK Ltd [2013] UKSC 16

76
Q

How should the requirements of the Protocol on the Interpretation of Article 69 of the EPC be understood in order to give fair protection for the patentee and a reasonable degree of certainty for third parties?

A

The extent of the protection conferred should cover all the embodiments, whether explicitly mentioned in the claims or not, which the notional skilled reader would conclude, with reasonable confidence, the inventor wanted to cover. All other embodiments should be excluded.

Merck & Co Inc v Generics (UK) Ltd [2004] RPC 31.

77
Q

What is the four step test for determining whether an invention is unpatentable?

A

1) Properly construe the claim;
2) Identify the actual contribution;
3) Ask whether it falls solely within the excluded subject matter; and
4) Check whether the actual or alleged contribution is actually technical in nature.

Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan’s application [2006] EWCA Civ 1371

78
Q

Is software necessarily excluded from obtaining patent protection?

A

It may be patentable if it produces a new and substantive technical contribution.

79
Q

When are interim injunctions granted?

A

Interim injunctions are a discretionary remedy granted prior to full trial to restrain an alleged infringer from committing the alleged infringing act.

Three principles are followed by the English courts when deciding whether to grant an interim injunction:

  • Is there a serious case to be tried?
  • Adequacy of damages to either party: would the claimant be adequately compensated by an award of damages at trial?
  • Is there a doubt as to the adequacy of damages? If so, the extent of any uncompensatable disadvantage will determine the ‘balance of convenience’.

American Cyanamid [1975] AC 396

80
Q

What are ‘groundless threats’ and when are such threats not actionable?

A

SECTION 70

‘Groundless threats’ are where a person threatens another person with proceedings for any infringement of a patent, a person aggrieved by threats may bring proceedings against the person making threats, claiming relief.

Section 70(4): Once it has been established that that there was an infringement, a threat for any other acts of infringement against the person in respect of that product is not actionable.

Section 70(5): Mere notification of the existence of a patent does not constitute a threat of proceedings.

81
Q

How can an applicant ask for reinstatement of an application if it has been terminated because of non-compliance with the Patents Act and Rules? Are there time limits?

A

SECTION 20A
RULE 32(1)
RULE 108 SCHEDULE 4

The applicant should send Form 14 and reasons as to why the requirements were not met and with evidence that this failure was unintentional.

Reinstatement cannot be requested later than 12 months after the application has been terminated and must be requested within 2 months of being able to meet the outstanding requirements, which may be filed at the same time as Form 14. The period cannot be extended.

82
Q

What constitutes industrial application in relation to biotech inventions?

A

Where, in the light of the common general knowledge, a new substance has a plausible claimed use, this can satisfy the requirement of industrial application. This must be contrasted with the case where the patent application merely indicates that a programme of research should be undertaken to determine whether the substance has a particular effect.

Human Genome Sciences Inc. v Eli Lilly & Co. [2011] UKSC 51, SC

83
Q

With regard to the features of the claims, what is the difference between direct and contributory infringement?

A

Direct infringement requires all features of the claim to be present whereas contributory infringement does not.

84
Q

What are the defences to contributory infringement?

A

SECTION 60(3)

1) The defendant had no knowledge that the part supplied would make the invention work. If the defendant was acting under instructions to supply he is not culpable.
2) The part supplied is a staple commercial product, something which is readily available from a number of different sources of supply. ‘Staple commercial product’ should be contrasted with something that is made by the defendant to the primary infringer’s order.

85
Q

Is a sub-range singled out of a larger range new by virtue of a newly discovered effect occurring within it?

A

SECTION 2(1)

No. A prior disclosure of a range (normally) discloses each and every part of the range. However, a later-claimed sub-range, if there is something special about it, may form a selection invention.

Union Carbide Corp v BP Chemicals [1998] RPC 1 (at page 15)

86
Q

When is the renewal date? When is payment due?

A

RULE 37 & RULE 38

The renewal date is on the 4th anniversary of the filing date and every year after that on the same date for up to 20 years from the filing date.

The patent can be renewed up to 3 months before the payment due date. This is the last day of the month in which the anniversary of filing falls.

87
Q

What knowledge is required of an infringer with regard to infringement of a product and of a process?

A

SECTION 60(1)

Product: There is no requirement of knowledge for infringement, liability is strict unless there is a defence available.

Process: It must be obvious to a reasonable person that the patent is being infringed.

88
Q

What are the requirements for an abstract?

A

RULE 15

  • Starts with a title;
  • Is a concise summary (150 words about);
  • Summary includes (a) technical field, (b) technical explanation, (c) principal use;
  • Contains a useful figure.

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