Patent Legal Tests Flashcards

Question

When can a new dispute application be filed?

Answer 1

If an application is refused or withdrawn in s8 proceedings If the new party’s elements are excised from an application in s8 proceedings

Answer 2

Three months from decision (e.g. decision to excise elements) or the end of appeal

Answer 3

Same as the effective date of the older application which led to the dispute

Answer 4

Later of 2 months from filing, or 16 months from earliest priority to a) declare inventorship and b) file priority documents UNLESS in final 6 months of compliance period, then supply on filing Information regarding identification of biological material must be supplied by later of date of filing, or 16m from priority

Answer 5

Before preliminary examination If a missing part is spotted by preliminary examiner, within two months of notification

Answer 6

The filed missing part is treated as included Date of filing is re-dated to when the missing part was filed

Answer 7

Write to Comptroller to withdraw before preliminary examination OR before the end of the period specified by the preliminary examiner. Date of filing will revert to original filing date. Note - can still withdrawn missing parts after the above deadline, but the date of filing will not revert

Answer 8

Must be claiming priority to a document that contains the missing parts, and declared priority on filing Submit request in writing for the application not to be re-dated, indicating the “missing” source material in the priority document Must submit the request before preliminary examination, or within the period set by the preliminary examiner Must file certified copy of the priority document with earlier of 16m from priority (the normal period) or 4m from the request to keep filing date - unless UKIPO already has a copy

Answer 9

Discovery, scientific theory, mathematical method Works of art (e.g. aesthetic creations like literature and music) Scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program Presentation of information NOTE - All of the above are excluded “as such” - i.e. when the actual contribution falls solely within the contribution When commercial exploitation is immoral / contrary to public policy

Answer 10

Methods of treatment of human or animal body by surgery or therapy Methods of diagnosis practised on the human or animal body Note - substances and compositions for use in such methods are patentable

Answer 11

Surgical = non-insignificant intentional physical intervention - Surgery does not necessitate an invasive procedure - EPO says substantial physical intervention, which entails significant health risk even when carried out by medical professional Therapeutic treatment = non-surgical treatment that alleviates a cause or symptom of a medical condition - Can be corrective and/or preventative Treatments for purely cosmetic purposes (e.g. removal of body hair) are not excluded

Answer 12

Includes gathering of data and performing a medical decision Must relate to some medical condition / pathology - I.e. pregnancy tests are not diagnoses so are patentable Must be performed on a living body to be excluded G1/04 test (steps 1-3 on body): - Examination and collection of data - Comparison of data with normal values - Recording any deviation from the norm - Attributing the deviation to a particular clinical picture

Answer 13

Earlier effective date than the subject application, but published after Includes GB, EP, PCT(EP), PCT(GB) - PCT(EP) does not need to enter regional phase, just pay EPO the filing fee and (if necessary) translate into official language of EPO - Removal of GB designation before publication of an EP application does NOT prevent the application becoming s2(3) prior art. Includes secret applications where publication was prevented due to s22 Once published, remains novelty only prior art even if withdrawn / terminated - Unless was withdrawn prior to publication, but too late to prevent publication

Answer 14

Description, claims and drawings. NOT the abstract Only applies to matter in both application as filed and as published (e.g. does not include claims added after filing, though these will still be s2(2) art)

Answer 15

US - no general provision, applications filed before but published after will be full prior art unless: - Same inventor, or - On effective filing date of subject application, the invention was commonly owned or under an obligation to assign, or - The application was filed after the inventors original disclosure of the invention (e.g. if using the 12m grace period) JP - same as GB, but the novelty only prior art will be discounted if from the same inventor/applicant

Answer 16

6 months before the filing date in the UK of the application to the invention Note, this means PCT(GB)/(EP) national/regional phase entry must be within 6 months of the disclosure

Answer 17

Disclosure due to or resulted from invention obtained by anyone unlawfully, or through a breach of confidence - The obtaining could be from anyone to whom the invention was disclosed in confidence International exhibition exemption

Answer 18

Must have been an air of confidence at the time the information was required such that the recipient would understand the information is confidential - Marked important =/= confidential Must have been an unauthorised disclosure of the information

Answer 19

Disclosure was due to or resulted from the inventor or proprietor displaying the invention at an officially recognised international exhibition This must be stated on filing Evidence must be submitted within 4 months of filing (or 2 months of national phase entry for a PCT(GB))

Answer 20

Requires evident abuse to the applicant or their legal predecessor International exhibition exemption

Answer 21

12 months from disclosure of the invention Includes proprietors own disclosures

Answer 22

12 months before filing JP application Must provide proof within 30 days, or (for UK applicant) 2 months from when it is possible to provide proof. Hard deadline of 6 months.

Answer 23

Relating to military technology or prejudicial to national security Information in the application may prejudice public safety

Answer 24

They apply to any UK resident unless - Application was filed in UK 6 weeks or more ago, and there is no s22 order on prevention of spread of information Does NOT apply when a non-UK resident has already filed an application to the invention outside the UK

Answer 25

Applies to any GB, EP, or PCT application first filed at UKIPO If considered to contain information prejudicial to national security / public safety, then Comptroller can prevent or restrict spread of the information for up to 3 months after publication was due (21 months after priority) If s22 order in place, will be reviewed within 9 months of filing, and then every 12 months after

Answer 26

GB applications can be prosecuted up to (but not including) grant EP and PCT applications will not be sent on so cannot be prosecuted, but can convert to GB application after 14 months, and then prosecute as a GB If lifted, applicant will be notified and extensions will be provided to complete prosecution No renewal fees are due in respect of years preceding or including the year the s22 restriction is lifted

Answer 27

Applicant has right to bring infringement proceedings for any infringing act occurring between publication in English and grant Proceedings must be brought after grant The act must infringe both the claims as published and the claims as granted Any awarded damages will be evaluated based on how reasonable it would have been to expect, based on the published application, that a patent conferring protection against the infringing act would be granted

Answer 28

In writing and signed by, or on behalf of, the assignor / their personal representative If there are errors in the transaction (e.g. owner name) these must be corrected assigned again

Answer 29

Yes, assignment of a patent / share of patent / exclusive licence to a patent can confer the right to bring infringement proceedings for earlier acts

Answer 30

Form and fee

Answer 31

ASAP, because… …a later transaction that is registered first will have entitlement over the earlier transaction, unless the later transacting party knew about the earlier transaction (bad faith) …if a transaction is not registered within 6 months of occurring (or as soon as practical) then cannot claim costs/expenses during infringement proceedings in relation to an act done before registration

Answer 32

If registered while application is pending or before the end of the opposition period, will have effect in the UK without further action being needed

Answer 33

Entitles any person to a licence on agreed terms, or if no agreement then on terms set by the Comptroller Terms: Royalties determined by comparison with existing royalties, by accounting, or profit sharing. Can ban sub-licensing, can ban imports/exports from EEA Benefits to applicant? - Halved renewal fees once registered (register at least 10 days before the renewal date). Have to pay this back if licence cancelled How to apply? - File form and declare no registered agreements exist that preclude LoR Existing licence holders can convert to LoR if better terms Licensee of right can bring infringement proceedings themselves. Must have requested proprietor brings proceedings and proprietor not acted for 2 months. Proprietor will be co-claimant but not liable for costs unless they actively participate

Answer 34

Any of the parties can ask the Comptroller to arbitrate, direct how to proceed, and alter the number of applicants Alternatively, s8 or s12 entitlement proceedings

Answer 35

Request reinstatement Request restoration (with Comptroller permission)

Answer 36

Equal and undivided share to each co-owner All co-owners can independently work the invention and source essential means to it - I.e. no direct infringement by co-owners and no contributory infringement by third party supplies to co-owners Note, this can all be altered by agreement

Answer 37

Amending the patent / application Applying to revoke the patent / application Licensing, assigning, mortgaging, or otherwise securing against the patent / application (i.e. a deal in the patent / application)

Answer 38

Any co-owner may bring infringement proceedings unilaterally All co-owners will automatically be made party to the proceedings, though will only be liable for costs if they take an active part in the proceedings

Answer 39

Their rights in the IP pass to their successor(s). Not the other co-owners.

Answer 40

While a patent is in force Within 1 year of lapse Within 6 months of refusal of restoration

Answer 41

Patent has been granted for an invention made by the employee and owned by the employer Invention and/or patent is of outstanding benefit to the employer (factoring in the size/nature of the employer) - Outstanding = out of the ordinary, not just substantial - Benefit includes overseas rights arising from the invention It is just that the employer compensates the employee - Did the employer play dirty?

Answer 42

Patent has been granted for an invention made by the employee and owned by the employee themselves The patent was assigned or exclusively licensed to the employer The benefit to the employee has been inadequate in relation to the benefit to the employer from the invention and/or patent - Consider whether the benefit to the employer has diverged significantly from that understood at the time the agreement was made It is just that the employer compensates the employee

Answer 43

Patent must be in force Act done in UK Act done without proprietor’s consent

Answer 44

MUDOIK - making, using, disposal of, offer for disposal of, importing, keeping

Answer 45

Use or offer for use in the UK when known or obvious that it would infringe to do so Use, disposal, offer for disposal, importing, keeping any product obtained directly from the process (i.e. UDOIK of directly resulting product necessitates use of the process)

Answer 46

Infringement when a person supplies or offers to supply, in the UK… An unauthorised party… With any means, relating to an essential element of the invention, for putting the invention into effect… If the supplier knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended (by the end user) to put, the invention into effect in the UK. UNLESS means is a staple commercial product not used to induce infringement

Answer 47

Private, non-commercial use - Not exempt from s60(2) Experimental purposes - Not exempt from s60(2) - Experiments with a marketing / commercial goal are not exempt Medicine prepared in a pharmacy for an individual's prescription - Not exempt from s60(2) Use for a ship temporarily in UK waters - Ship must be registered outside UK for exemption Use in an aircraft/vehicle temporarily in UK territory/airspace/waters - aircraft/vehicle must be registered outside UK for exemption Certain exempt aircraft lawfully in the UK, and their parts/accessories Farm use, breeding livestock or propagating the product of a harvest on own holding Human or veterinary health trials for market authorisation NOTE - the s60(2) non-exemptions do not apply (so the infringement exemption does apply) if the essential means are supplied to the crown or prior rights owners

Answer 48

Damages / account of profits not awarded against defendant who can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of infringement. - “Patented” does not confer awareness, but a patent number / web link will Damages due to infringement in additional renewal period are discretionary When patent has been amended, take into account whether the patent as published was prepared in good faith (i.e. didn’t ignore known prior art), and whether the proceedings were brought in good faith

Answer 49

Person in the UK who, before the priority date, in good faith did an act which would infringe the patent if it had been in force, or made serious and effective preparations to do so, may continue to do so Person can authorise partners in their business to continue Cannot licence this right, may only be transferred as part of the business itself Resulting products of the act can be dealt in freely

Answer 50

DADDI Damages OR Account of profits Declaration of infringement (+ validity of patent) Delivery up / destruction of infringing products Injunction against further infringement NOTE - if Comptroller is deciding the proceedings then only damages / declaration are available remedies. Comptroller can refer to court.

Answer 51

Must be a serious case to be tried Damages must not be sufficient compensation for the potential harm - E.g. irreparable damage to market position Balance of convenience - Consider any other factors, e.g. financial standings of parties (to avoid hardship such as bankruptcy if the injunction is granted or not, financial cross-undertaking) If all is balanced, will likely maintain status quo

Answer 52

Any aggrieved person, not limited to the recipient of the threat

Answer 53

When the recipient (to who the letter is directed) would reasonably understand that: - A patent (or published application) exists, and - Someone intends to bring proceedings (anywhere) in respect of an act done, or which would be done, in the UK

Answer 54

Primary act - threat is in respect of making or importing a product for disposal, or using a process. Or intending to do this. Primary actor - threat is made to a manufacturer or importer, or user of a process. Or someone intending to become one. The threat was not an express threat, and was contained in a permitted communication

Answer 55

All information is related to and necessary for a permitted purpose Person making the threat reasonably believes it is true

Answer 56

Giving notice a patent exists Discovering whether or by whom a patent has been infringed by a primary act Giving notice that another party has a right to a patent, where a third party’s awareness is relevant to proceedings that may be brought in respect of the patent

Answer 57

Requesting a person ceases commercial activities in relation to a product / process Requesting a person delivers up / destroys a product Requesting a person gives an undertaking in relation to a product / process

Answer 58

Declaration of unjustified threat Injunction against continued threats Damages in respect of any loss sustained by the aggrieved person as a consequence of the threat

Answer 59

Show that the action for which proceedings were threatened does (or if done, would) constitute an infringement of the granted patent Show that, despite taking earlier reasonable steps, the threatener has failed to identify who has committed the relevant cat, and notified the recipient of the earlier steps taken before/when making the threat

Answer 60

Anyone Apply to court or comptroller

Answer 61

Lack of patentability - Excluded subject-matter - Novelty - Inventive step Lack of entitlement to grant of patent - Can only be brought by entitled party, within 2 years of grant (unless current proprietor knew they were not entitled at grant) Insufficiency Added matter Amendment extending protection after grant NOTE - partial revocation (limitation) is possible

Answer 62

Revocation is retroactive Therefore licensees may sue for refund of licence fees Therefore Comptroller unlikely to accept surrender of a patent during proceedings where validity may be an issue

Answer 63

After issuing an opinion that a patent is not novel / inventive - Only after the 3 month period for requesting a review of the opinion has expired, or after a review has occurred After determining that an s2(3) prior art document denies novelty? - Proprietor can object and amend (no added matter)

Answer 64

Cannot add matter extending beyond limits of what skilled person would have derived directly and unambiguously from the whole of the document as filed, using cgk and seen objectively and relative to the date of filing. Abstract cannot be used for basis After grant, cannot extend the scope of protection

Answer 65

Error must be obvious and correction must be obvious Unless error is due to corruption during electronic transmission

Answer 66

Request in writing, clearly specifying the correction(s) Comptroller may request a copy of the relevant document showing the correction (e.g. if correcting a form, supply the corrected form. Same with amended pages)

Answer 67

Person seeking the declaration must have already written to proprietor requesting such a declaration, providing full particulars of their activities If the proprietor refuses or ignores the request, the seeker may approach request the Court or Comptroller grant the declaration

Answer 68

Found invalid by Comptroller, does not bind court in future infringement proceedings Found invalid by Court, does not automatically lead to revocation as those proceedings must be brought separately

Answer 69

Any deadline set by Comptroller can be extended. Retroactive 2 month extension as of right. Request in writing within two months of missed time period. Further discretionary extensions are available from Comptroller

Answer 70

Generally any procedural step of prosecution R108(2) - retroactive 2 month extension as or right. File form and fee before expiry of the 2 months R108(3) - discretionary further 2 month extension from Comptroller. File form, fee, evidence as to why should be granted (fee only due if granted). Evidence required is unclear, unintentional / due care may be sufficient

Answer 71

Filing of information and priority doc Statement of inventorship Missing parts Extensions for new applications (divisionals / disputes) Periods for date of filing / search requirements Request for substantive examination Compliance period Fee for grant of a patent under s18(4) Filing translation of EP (UK) spec Conversion of EP(GB) application to GB - And the following request for substantive examination National phase entry Period for filing address for service Filing of information relating to deposit of biological matter

Answer 72

Application for reinstatement Application for restoration Declaration of priority Renewals Any period set by Comptroller (use s177B instead)

Answer 73

Form and fee Provide evidence the failure to meet the deadline was unintentional - if no evidence is provided the Comptroller will set a deadline for this Request within 12 months of missed act

Answer 74

Comptroller will set a deadline to complete the missed act. Will be a least two months. Anything done to or with the application between loss and reinstatement is treated as valid

Answer 75

Actions in bad faith - if application is published then the infringing acts are treated as such if done during a potential extension period (e.g. R108(2)), or if continuing / repeating earlier infringement Actions in good faith - if application is published then between termination and notice of request for reinstatement being published, anyone who begins in good faith to effectively infringe, or makes serious and effective preparations to do so, may continue

Answer 76

Made in the course of normal duties of the employee, or in the course of specifically assigned duties, and it was reasonable to expect an invention may arise from those duties Made in the course of employee’s duties and there is an (implicit) special obligation to further the interests of the employer (e.g. employee is senior manager) ANY other invention belongs to the employee

Answer 77

Anyone including co-applicants

Answer 78

Order transfer of a right in the application between parties If ignored by ordered party for 14 days then Comptroller can permit the other party to implement

Answer 79

Replace some / all of the applicant name(s) with new party(s) Refuse the application (new dispute application possible) Amend the application to excise contested elements (new dispute application possible) Order a licence or transfer of a right in the application to the new party(s) If ignored by ordered party for 14 days then Comptroller can permit the other party to implement

Answer 80

Potentially affected parties will be informed (e.g. co-applicants, licensees)

Answer 81

Not for GB, but proceedings for corresponding EP application may be suspended under R14(1) EPC.

Answer 82

Within 2 years of grant Unless current proprietor knew they were not entitled when the patent was granted (must have evidence of this as is serious)

Answer 83

If continuity (at least one proprietor remains the same after the transfer) then all licences are considered issued by the updated proprietor If no continuity (entirely new proprietor(s)), existing licences lapse upon registration of the transfer. - But old proprietors and licensees are entitled to continue working the invention (or start working if serious and effective preparations were made) if they were acting in good faith in the UK. - Must request licence within 2 months of s37 order to transfer (comm. issued by Comptroller) - Terms and period of this licence must be reasonable

Answer 84

Later of 4.5 years from earliest priority, or 1 year from first s18(3) exam report OR (if later) 18m from filing new dispute application

Answer 85

R108(2) - 2m retroactive as of right - file form and fee R108(3) - further 2m retroactive is discretionary - form, fee and evidence

Answer 86

If filing divisionals or new dispute applications in final 6 months, then complete all necessary formalities on filing. Cannot file in final 3 months. Cannot request further search in final 3 months

Answer 87

If compensation is awarded then will be a fair share of the benefit derived / expected to be derived by the employer, e.g. taking into account licencing, contributions from different parties

Answer 88

Quick answer - does variant infringe because it varies in a way which is immaterial to claimed invention? Detailed : - variant achieve substantially same result in substantially same way? - Would this be obvious to PSA? - Would PSA think strict compliance with literal meaning of claims was essential requirement of invention?

Answer 89

- Discretionary but typically 4m for responding to the first report, and 2m for subsequent reports - Unless in the final year of the compliance period, then will be 2m - Unless end of compliance period is less than 2m, then will be up to the end of the period