Patent Principles Flashcards
Describe the types of novelty that have traditionally existed.
The are 3 types:
- Absolute Novelty, which is used in the UK and EPC. “Any publication anywhere in the world”
- Relative Novelty, was used old US and china “Only use in the jurisdiction and publications anywhere”
- Local Novelty, currently used in Jamaica. “Only publication or uses in the jurisdiction”
What are the requirements for novelty?
Need to provide an enabling disclosure. Prior art anticipates if it contains disclosure and is enabling, wherein ‘enablement’ means that the ordinary skilled person would have been able to perform it at the time of disclosure.
How many people define ‘the public’ in patent law?
One person, an individual. If disclosed to the public, they are free in law and equity to use it.
Do we need to prove disclosure by proving the public actually saw the disclosure?
No, which we know from the Lux Traffic vs Pike Signals case, wherein the claimant’s trialed their traffic lights in public but attempted to say no-one knew the inner workings. The UK’s library principle tells us we only need to demonstrate that the disclosure is available in ‘a library’. Could>Would.
If you are able to request to view it without signing an NDA, it can be considered a disclosure. However, it was later shown that ‘seeing’ is not necessarily equivalent to ‘observing’, in more complex cases, for instance. Showing someone a pill does is not an enabling disclosure for the pill.
Should a document be construed at the date it was applied for or at the date it was published? How does this compare to inventive step?
The date of publication is when a non-patent document should be construed.
A patent document is construed at the date of filing.
Inventive step is construed at the date of filing.
If something is enabling, does it also meet the sufficiency requirement?
Not necessarily. Enablement depends on the complexity of the invention. Some inventions enable the ordinary skilled person at the point of disclosure.
What if there is a mistake in the disclosure which makes it not entirely enabling?
The EPO has an undue burden requirement. If the skilled person can correct the mistake without undue burden, then it counts as a disclosure.
When and what time is novelty judged?
Unless there’s a priority date, at the date of filing at 12.01am (immediately after midnight on the filing date), wherein the time is judged by the timezone of the relevant patent office. It used to be stamped at the time it arrived, but that wasn’t fair.
What is mosaicking, and can it be used to destroy novelty?
Mosaicking is where document 1 discloses element A and document 2 discloses element B of the A+B invention. It’s called Individual comparison in the UK.
Mosaicking does not typically destroy novelty because an enabling disclosure is considered for each individual document. Mosaicking is permissible only if one document includes the other by referencing.
Discuss the EPO’s approach to different types of disclosure.
The EPO may require different standards of proof for different types of disclosure (document, meetings, internet, drawing, etc..). The lowest standard relating to a document, and the highest relating to an oral disclosure.
What is the EPO’s Identity test?
It’s a test for the complete correspondence of between all of the technical features of the application in suit an the prior art. Correspondence of only the essential features would not pass this test.
What counts as an excluded disclosure?
Excluded disclosures are disclosure not able to destroy novelty. There are two types: unpublished patent applications; and non-prejudicial disclosures.
The first type refers to prior art that has an earlier filing date, but isn’t published. Publishing qualifies the filing date.
The second type refers to things like breach of confidence and extends only 6 months prior to the EP filing date. This would could in cases of abuse in relation to the applicant or their legal predecessor, or if the applicant or legal predecessor presents the work at a recognised international exhibition. A certificate is required.
What are the Pozzoli questions? And do they represent the UK or EU approach.
- Identify the PSA and their CGK
- Identify the inventive concept of the claim in question
- Identify any differences between the claim in question as the state of the art
- Viewed without any knowledge of the claimed invention, would the differences constitute steps that would have been obvious to the PSA.
What are the characteristics of the PSintheA?
- Capable of mosaicking
- Capable of progressing the invention in a non-inventive manner (Actavis v ICOS)
- May be a team and a multi-disciplinary one at that (France Technip SA)
- Team made be led by a leader
- Never misses the obvious (Technograph)
- Can speak all languages and dialects
- Has read every publication (Pfizer)
- Influenced by prejudices and conservatisms in the field (France Technip SA)
Where must an unpublished patent application be filed in order to constitute a potential novelty destroying threat to a UK patent application??
UK IPO, EUIPO, WIPO. All of these can become patents designated in the UK.
No national offices count, unless they claim priority to a UK application/patent.
Is the common general knowledge the same across the world?
No, it’s localised.
The UK’s windsurfing/pozzoli questions compare to what patent law approach at the EPO?
Problem-Solution Approach
How does one do the Problem-Solution Approach?
- Determine the closest prior art
- Establish an objective technical problem to be solved
- Without knowledge of the application in suit, starting from the closet prior art and the objective technical problem, what would have been obvious to the PSA.
How do we determine the closest prior art?
The closest prior art is one that corresponds to a similar use and requires the least modification to compare to the claimed invention.
What does “obvious to try” mean?
It means the PSA would believe that trying this would likely be successful.
Does commercial success or the fact that someone copied the invention indicate patentability?
Not necessarily. With regards to commercial success, there may be any of a number of ways to achieve this, marketing for instance, can have a huge impact.
However there are some cases in which commercial success can indicate the inherent inventiveness of an invention, such as in cases where the success arises from the fact that the solution is relatively simplistic and easier/cheaper to manufacture in comparison to the prior art. Such case is Haberman’s ‘AnyWayUpCup’. Someone may well copy an idea based on its commercial success.
Are patents that contradict domestic law allowed?
Yes, the Paris Convention says that a patent application shouldn’t be rejected or invalidated on the grounds that it contradicts domestic law. You can’t be refused a patent because it’s illegal: law may change.
Can anything illegal be patented based on Ordre Public of the Paris Convention?
The TRIPS agreement states that patents may be invalidated or refused application in order to protect Ordre Public or morality, in order to protect human, animal, plant life, health, or to avoid serious prejudice to the environment, as long as such exclusion is not made merely because the exploitation is prohibited under domestic law. ‘Unlawful’ is not necessarily equivalent to ‘immoral’.
When do you judge morality in relation to a patent application?
At the point of filing. Note that our perception of morality may change over time.
What does the Landmines Act 1998 say?
It applies to the UK, and prevents people from producing or developing landmines/anti-personnel mines/cluster munitions. Patents are considered as development or encouraging development and so these things (delayed mines that last for years) are completely banned.
There is no Landmines Act in the US though…
What does the Biotech Directive say in relation to the TRIPS Ordre Public statute?
The Biotech Directive follows on from the TRIPS statute on protecting ordre public and morality by stating a number of things that must be considered unpatentable entirely. These being:
- processes for cloning human beans.
- processes for modifying the germline genetic ID of human beans.
- uses for human embryos for industrial or commercial purposes
- processes for modifying the genetic ID of animals that are likely to cause them suffering without any substantial medical benefit to man or animal, plus any animals resulting from these processes.
Which international agreements and/or directives inform us on the types of biological subject matter excluded from the patents system?
The TRIPS agreement tells us that plants, animals, micro-organisms and another other essentially biological process are excluded from patentability.
The Biotech Directive implements the TRIPS agreement by stating that plant and animal varieties are not patentable, nor essentially biological processes for the *production* of plants or animals. The directive also says that an invention may be patentable if its not confined to plant/animal variety.
What is the main difference between patent applications for an entire genus and patent applications for a variety of that genus.
If the technical feasibility of an invention is confined to a particular variety, as opposed to an entire genus, it is excluded from patentability.
Identify some secondary indicators for patentablity.
- Commercial success (AnyWayUpCup)
- Experts in the field would not take the sought after approach
- Relative simplistic approach to solving a problem in a way so many others had solved in a more complex manner (AnyWayUpCup)
- The approach produces a surprising effect.
What does the TRIPS agreement say in relation to the exclusion of medical treatment from patentability?
The TRIPS agreement says that the following *methods for the treatment of humans or animals* are excluded from patentability:
- Diagnostic
- Therapeutic
- Surgical
The TRIPS agreement informs the EPC implementation of excluded medical methods, which is stated in Art 53(c).
The US do not exclude such medical methods, but they do ensure that medical doctors infringing a patent for *humans* are not liable.
‘Before EPC 2000’ means?
Before 2007
How was the TRIPS agreement interpreted in relation to the exclusion of medical methods considered before EPC 2000?
Before EPC 2000, medical methods were excluded from patentablity by means of the industrial application criteria; medical methods were described as not industrially applicable. Nowadays, medical methods are expressly excluded in Art 53(c).
What is the main function of the TRIPS agreement?
To ensure that all member states allow for the patenting of technical inventions, both products and processes, provided the inventions are novel, industrially applicable, and inventive. It ensures anti-discrimination in patent protection by providing the same rights in all member states such that import/trading is not affected by the place of origin of the invention.
What are the key critical points to bring up when asked for a detailed discussion on the exclusion of *surgical* methods from patentability?
SURGERY: Surgery used to be considered as ‘anything that broke the skin’ in the past. As surgical methods progressed with technological advancement, surgical methods that didn’t break the skin were considered ‘cosmetic’. The conceptual line between ‘cosmetic’ and ‘non-cosmetic’ quickly became problematic as there are a number of metrics one can use to assess this. More broadly, rapid general technological advancement proved it was difficult to provide a one-size-fits-all, ever current, description of surgery. It was concluded that the best way to define surgery was by weighing up: 1. the degree of complexity/training required 2. whether it required medical expertise 3. whether it entails significant health risks The most relevant caselaw are all around 2010: - Magnetic Resonance/WARF - Anaesthetic Gas/MEDI-PHYSICS - Blood Flow Instrument/TRANSONIC
What are the key critical points to bring up when asked for a detailed discussion on the exclusion of *therapeutic* methods from patentability?
THERAPY: Therapy is not limited to *curative* medical treatement, it can be *preventative and/or curative*. Relevant caselaw: - Blood Separation/FENWAL 2011 - Cornea/THOMSPON 1995 - Cooling Animals/LELY ENTERPRISES 2010 - Perception of fatigue/MIT 1995
What are the key critical points to bring up when asked for a detailed discussion on the exclusion of *diagnostic* methods from patentability?
DIAGNOSTIC: In general, the aim is to exclude from patentablity diagnosis perfomed by instruments whilst not excluding from patentability diagnosis performed by doctors. In Diagnostic Methods/CYGNUS, the courts determined that there are 4 stages of diagnosis: 1. Examination (collection of data) 2. Comparison (to standard) 3. Identifying deviations (symptoms) 4. Diagnosis (based on 1 to 3) [1-3 being performed on the human/animal body] The exclusion will only apply if no. 4 is included in addition to 1-3 in the claimed invention. [NEED FOR A DOCTOR] In Pigs II/DUPHAR, the courts determined that ‘therapy’ did not require ‘a need for a doctor’, as surgical methods might. Consider people applying treatment to their own domestic pets, this would still be therapy.
What is ‘Dual Effect’, and how does it relate to excluded subject matter?
Dual Effect refers to where an invention that has both a medical effect and a cosmetic effect. Inventions that have at least one use that falls within the scope of Art 53(c), such as toothpaste, which removes plaque AND makes your teeth looks good, are excluded even if they have another use that doesn’t fall within the scope of Art 53(c). However there are limitations to the Dual Effect exclusion; if it is possible to significantly distinguish the medical effect from the cosmetic effect you can get a patent for the cosmetic effect alone. This was the case for Appetite Suppressant/DU POINT 1986. The toothpaste caselaw is called Cleaning Plaque/ICI 1992.
What are the 3 main types of excluded subject matter mentioned in Art. 53 EPC?
Art53(a) relates to inventions the commercialisation of which would be contratry to ‘ordere public’ or morality, wherein the exclusion is not solely based on the invention being illegal in one or more contracting states. Art 53(b) relates to inventions relating to plant or animal varieties or essentially biological processes for the production of plants and animals. This provision, however, does not apply to microbiological processes though. Art 53 (c) relates to methods for treatment of human or animal bodies by surgery, therapy, or diagnosis practised on human or animal bodies. This provision does not apply to products, in particular substances or compositions, for use in any of these methods.
How has our treatment of ‘medical use’ patent applications and patents changed over time?
In the olden days (before EPC 2000), first medical use describe a first medicinal characteristic of the drug. When more of these characteristics were discovered and were caused by the same active agent in the drug, the courts had to consider whether the subsequent uses could be patented, or whether their novelty was destroyed. An example is aspirin; it’s first use was for headache treatment but it’s second use was for thinning blood. Initially the EPC allowed first medical use, but then in the Second Medical Indication/EISAI 1995 case, the EBoA decided to allow patents for second use. As long as these were written in Swiss claims form. Nowadays, we no longer require Swiss claims as they lack clarity, purpose claims are fine!
Discuss the use of Swiss form and purpose form for claims.
The two forms have a slightly different scope of protection. SWISS: “use of substance X for the preparation of a medicament or for treating indication Y.” PURPOSIVE: “product X for treating indication Y.” Swiss claims were used because it was expensive to patent new drugs, mainly because of the rigorous testing required. Swiss claims cover 3 types of additional medical use scenarios: - Wherein different physiological characteristics of the patients warrant different response to drugs. - Wherein there is a different mode of administration available. - Wherein there can be a different dosage regime.
Compare UK and EPO approach to patentabiltity.
The EPO starts from the consideration of what is and isn’t technical, excluding from patentability that which cannot be considered technical in part. In fact, in the Estimating Sales Activity/DUNS LICENSING 2008 case, the EPO concluded that for a mix of technical and non-technical features, the technical features alone could be judged for N and IS. In comparison, the UK has a much more philosophical approach as to what should and shouldn’t be patented. The UK doesn’t exclude things from patentabilty on the basis of whether or not it comprises one technical feature. In the Aerotel 2007 and HTC v Apple 2013 cases, the UK clarified that the actual contribution of the invention must be identified, before being considered with respect to excluded subject matter, before checking whether the actual contribution is technical in nature.
Is killing equivalent to undue suffering?
No.
Is euthanasia a method of medical treatment?
No.
What is the priority date and what function does it serve?
The priority date is either the date of filing or the date of filing of an earlier ‘priority’ application. The priority date is the date upon which ‘novelty’ is judged. Thus. if the priority date is 1st Jan and the date of filing is 1st June, documents published between these dates do not destroy novelty. NOTE: Patent comes into force from the date of filing, not the priority date.
When can one file/apply for a priority date for UK or EPC patents?
The PC allows 12 months from the date of filing of the patent application to file apply for a priority date. If the 12 month deadline has been missed unintentionally [UK approach], or where ‘due care’ was exercised [EPO approach], they can apply for a further 2 months extension, a ‘Paris Period’.
When is a patent application published?
18 months from the priority date. NOTE: Not the filing date
How is priority established? What is required for this?
Priority can only be established for the applications disclosing the same invention. Priority must be established within 16 months of the filing of the earlier application to which priority is being claimed, the ‘priority application’. A certified copy of the original priority application is required. The priority application must be a patent application and must have been filed in a PC OR WTO country. The priority application must be the first in its country.
What is priority date regeneration?
It’s when an earlier patent application is withdrawn, abandoned, or refused before it was ever published and refiled in the *same country* at a later date such that a new priority date can be set. The PD being the DOF of the re-filing. [Haberman] You can maintain your claimed priority to a withdrawn application, but should that application be refiled (to regen) you would need to choose which of the two benefits from the PD of the priority application. This is called ‘No Claims Outstanding’.
Who can claim priority?
The same applicant(s) as the priority application or the successor of the priority application.
Describe the UK’s approach to discerning whether or not the priority application discloses the same invention as the application claiming it.
Determine whether the subject matter of the claim would be *derived directly and unambiguously* from the priority application by the PSintheA . We learnt this from the Samsung V Apple 2013 EWCA case.
Does ‘No Claims Outstanding’ preclude an application from having multiple priority applications?
No. ‘No Claims Outstanding’ tells us that a given application can only serve as a priority application for a single patent application. This doesn’t isn’t a symmetrical limitation. One application can claim priority from multiple priority applications. For instance, if the invention/claim is A+B, and A is disclosed in X, B is disclosed in Y, and A+B is disclosed in Z, priority can only be claimed for Z. If the invention/claim is A or B, priority could be claimed for X and Y.
When applying for a Paris Period extension, how might the requirements differ for the UK and the EPO?
For the UK, you would need to demonstrate that your failure to apply for priority was unintentional. For the EPO, you would need to demonstrate that you exercised due care, but missed the deadline.
With regards to late filing during the Paris period, how is ‘unintentionally’ missing the priority application deadline judged in the UK?
- You must have a continuing underlying into to apply for the priority (Heatex [1995]) - You can’t ignore the warnings given by your patent attorney and the patent office and simply fail to comply with steps, as instructed (Anning’s [2007])
What are the sufficiency requirements?
There are 2 sufficiency requirements outlined in the UK PA 14(3). (1) The spec must disclose the invention in a matter that is clear and complete enough for the PSA to perfom the invention. (2) The claims must be supported by the description/
Name the types of sufficiency.
There are 3 types of sufficiency: (1) Classic - undue burden required to perform the invention. (2) Biogen/Excessive Claim Breadth - when the PSA can perfom some but not all of the invention. (3) Ambiguity - the PSA wouldn’t know if they were or weren’t working the invention.
When is sufficiency required?
It differs for the UK and the EPO! UK: It used to be @ publication, but now its the DOF. [Biogen v Medeva] EPO: Any time from the DOF to the end of the patent term [DC Motor 1983 EPO]
How might the requirement for the degree of sufficiency vary from application to application?
That would depend on the size of the technological step forward. If it’s relatively small, the degree of suffiency required may be lower for something that is a huge step forward.
How does plausibility relate to sufficiency?
Plausibility relates to the question: “What evidence does an applicant need to show at the DOF to prove that it works?” The courts found that you need some *reason, not an indication,* that the invention would work. You may need to support this with added evidence later on.
How does the EPO approach to sufficiency differ from the UK’s?
UK: Set out requirements for sufficiency in Art 14(3), stating that the spec must be complete enough an clear enough for the PSA to perform. EPO: Require roughly the same thing in Art 83 EPC, but perform a 2-stage test. Stage 1 - does the spec enable the PSA to put the invention *into effect*? Stage 2 - If so, would be PSA be enabled to put the *full range* of the invention *into effect*?
What is the purpose of the ‘clarity’ requirement in the UK PA 14(5)(b)?
To ensure that the public know what is and what isn’t being claimed, so that they know what is and isn’t permitted.
What is the purpose of the ‘conciseness’ requirement in the UK PA 14(5)(b)?
To ensure that the *scope* of the protection sought can be *establised* without *undue burden*.
What is the purpose of the ‘must be supported’ requirement in the UK PA 14(5)(c)?
To ensure that the *extent* of protection sought corresponds to the technical contribution made. It is not enough to only recite the claims in the description, however.
What is the purpose of the unity requirement in the UK PA 14(5)(d)?
To ensure that a single inventive concept is protected per patent application. The EPO approach for unity testing applies to both dependent and independent claims.
What is ‘added matter’?
Added matter can comprise an addition or a subtraction to the invention which increases the extent of the protection sought beyond that which would have corresponded to the subject matter disclosed in the application as filed. UKPA 76(1) defines added matter. UKPA 72(1)(d) tells us that a patent may be revoked on the grounds of added matter.
How does the UKIPO test for added matter?
The UKIPO employ the 3-step Bonzel test for added matter. 1. Ascertain what is disclosed through the eyes of the PSA. 2. Do the same in respect of the patent as granted. 3. Compare the two disclosure and decide whether any subject matter relevant to the invention has been added by addition or deletion. The comparison is strict: matter is added unless its CLEARLY and UNAMBIGUOUSLY disclosed in the application either EX- or IM-plicitly.
How does the EPO test for added matter?
Very similar to the UKIPO approach. Two additional criteria [form European Central Bank case] being: 4. *Even obvious additions* would be considered added matter. 5. Must *avoid hindsight*. The PSA sees the application without seeing the amendment and thus should not know what they are looking for.
When can patents be revoked and when can they be opposed?
Revocation is brought before the courts or comptroller and can occur at any time from grant to the end of the patent term. All related EP patents require *separate* proceedings for each country. Opposition can occur within a 9 month period from grant. In contrast to revocation, opposition has effect on all related EP patents.
If a UK patent application is submitted to the IPO, and 6 months later an identical EP patent application is submitted to the EPO by an unrelated party, what, if any, consequences may there be for either application?
Art 53 EPC is similar to S2 of the UKPA in that, the prior application would only be novelty destroying if it was published. At the 6 month mark, both applications would be fine. However, once the EP patent is granted, it can be revoked in the UK because the earlier UK application would destroy novelty.
What determines the scope of protection conferred by an EP patent?
Art 69 EPC states that the scope of protection is determined by the claims, but that the description and the drawings may be used to interpret the claims. Before grant, the scope is determined by the claims in the application. However after grant, the scope may be amended in opposition, limitation, or revocation proceedings, which will retroactively determine the scope of protection conferred.
What is the effect of ‘The Protocol on the Interpretation of Art 69 EPC’ on scope of protection for EPC patents?
‘The Protocol’ offers clarity on how claims should be interpreted so as to determine the extent of protection conferred by the claims. Importantly it notes that the claims should not be interpreted in a *strict, literal* manner, nor should they be interpreted as mere *guidelines*. ‘The Protocol’ also states that due account should be taken of any element which is equivalent to that of an element specified in the claims. ‘The Protocol’ is incorporated into the UKPA in section 125.
With regards to claim interpretation, does it matter what the author meant to say?
No, it only matters what was written, and what the skilled person would understand the claims to mean. [Kirin Amgen v HMR (2004) UKHL - Prior to Eli Lilly]
How has our UK approach to claim construction changed?
Before Eli Lilly [2017] UKSC, we followed the considerations and decisions made in:
- Catnic v Hill & Smith [1982]
- Improver Corp v Remington [1990]
- Kirin Amgen v HMR [2004]
and the wording of UKPA 125, EPC Art 69 and The protocol on the interpretation of EPC Art 69 construction.
Catnic v Hill & Smith [1982]
The courts had to determine whether a claim for a ‘vertical’ component covered a ‘substantially vertical’ component. The courts adopted a purposive approach to claim construction, considering what the PSA would have understood the claims to mean given the context provided by the description and drawings. Thus ‘vertical’ = ‘vertical enough to work’.
Improver Corp v Remington [1990]
Purposive construction was also applied in this case; the courts had to determine whether a ‘helical’ spring covered a rubber rod with slits that performed the same function. The courts formulated the Improver Questions:
- Does the variant have a material effect upon the way the invention works?
- Would this have been obvious at the date of publication to the PSA?
- Would the PSA have nevertheless have understood that a strict compliance with the language of the claim was an essential requirement for the invention to work?
If no, no, yes, then there’s no infringement. No infringement found here.
Kirin Amgen v HMR [2004]
Kirin Amgen v HMR [2004] UKHL case followed Catnic v Hill in the *purposive construction* of claims over the literal. They also followed the wording of The Protocol which says the claims are neither strict and literal nor mere gudelines.
The Kirin Amgen case also noted that whilst we must consider the fact that the inventor may have *several embodiments* of their invention and *1 generalised inventive concept*, we can’t always interpret the *widest possible meaning*of their words. Kirin Amgen noted hat *obvious limitations*should not be disregarded, as there must be some meaning there, and that words with *acontextual* meaning may not have a that meaning within the context of the application. Finally,Kirin Amgen determined that there was no “doctrine of equivalents”, which has now been (more or less) superceded by Eli Lilly v Actavis [2017] UKSC.
Eli Lilly v Actavis [2017] UKSC
In this case the patent court applied the Improver questions to assess whether ‘premextred disodium’ was infringed by the defendant’s variant ‘premextred dipotassium’. They found no infringement based on a negative response to question 2.
However, the UKSC later criticised Kirin-Amgen’s an Improver’s approach for conflating the 2 questions:
- does the variant infringe any of the claims as a matter of normal interpretation?;
- if not, does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?
To provide clarity the UKSC reformulated the Improver questions:
- Does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
- Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
- Would such a reader of the patent have concluded that the Patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
If the response is yes, yes, no, then infringement is found. Infringement was found, and a Doctrine of Equivalents was established in the UK
Is a patent construed in light of the prior art?
Only if it’s referenced/cited in the application. Otherwise, no!
Are examples in applications limiting?
No, we can assume it means that the author means to say “including but not limited to”
What are the Improver questions and what purpose do they serve?
There are 3 Improver questions and they are used to assess patent infringement. 1. Notwithstanding the normal interpretation of claims, does the variant achieve substantially the same result in substantially the same way? 2. Would it have been obvious to the PSA at the priorty date, knowing that the variant achieved substantially the same result, that this was achieved in substantially the same way? 3. Would the PSA have concluded that nonetheless, the patentee intended strict compliance with the wording of the claims was an essential requirement of the invention?
In the UK, when can we look at prosecution file to understand the scope of protected conferred by claims?
The Eli Lilly case concluded that there were 2 scenarios when this would happen: 1 - ambiguity in the specification 2 - where it would be contrary to the public interest for the prosecution file to be ignored.
How do we interpret the term ‘for’ in patent law? How do we interpret the terms ‘large’ or ‘thin’ in patent law?
We interpret ‘for’ as ‘suitable for’ not ‘for the purpose of’. We interpret them within the context of industry standards.
How do we interpret the terms ‘pre-set’, ‘pre-determined’, ‘approximately’ or ‘about’ in patent law?
We assess clarity based on the context, i.e. if there’s no more information for the PSA to understand what this refers to within the spec, it may be consider unclear.
For which type of infringement is it important to consider whether or not the infringer knew, or it would have been obvious for them to know.
Under UKPA 60(1), it is only infringement of a patent relating to a process when the infringing act is *U or Ou* and that act is performed *in the UK* by someone who knew it would infringe to do so, or if it would have been obvious that that act would have infringed.
Why might a patent attorney not advise their client to inform someone that they are infringing before suing?
It might give rise to grounds for a threat action from the addressee.
With regards to direct infringement, what issue arises in the interpretation of the word ‘make’ in the UK?
One can only determine whether something is made, and not repaired, or vice versa by considering the context and in particular the degree/extent of the repair/make.
With regards to direct infringement, what issue arises in the interpretation of the phrase ‘dispose of’ in the UK?
‘Dispose of’ doesn’t mean throwing away or delivering, it means selling or hiring the product out.
