Patent Terms Flashcards
Restoration
Statutes: UKPA 28
Renewal Fees
Restoration (UKPA 28) may be required when a patent proprietor fails to pay their renewal fees and their patent lapses. Renewal fees are due every year after the 4th year provided the patent has been granted. Lapsing occurs 6 months after the end of the month in which their renewal date fell. During the 6-month period, the proprietor would need to pay the renewal fee plus an additional late fee.
Lapsing
As mentioned above, if the renewal fee and additional late fee isn’t paid, the patent lapses. There are a further 13 months during which the patent can be restored upon application to the comptroller, who must be satisfied that the failure to pay was unintentional.
Unintentional Failure
Unintentional failure to pay includes scenarios in which it would be unreasonable for the proprietor to pay due to, for instance, obstacles arising which were outside the proprietor’s realm of influence. Unintentional failure to pay excludes scenarios in which the proprietor has ignored warnings/advice from IP professionals.
Harmonisation
The 6-month period is harmonised by Art 5bis of PC. Although Art 5bis says subscribing countries have the right to provide restoration, the restoration period is not defined.
Patents later designated to the UK have their renewals governed by national patent offices.
Person Skilled in the Art
General Overview
The Person Skilled in the Art (PSA) is a notional entity used in UK and European patetnt law that provides objectivity in the assessment of novelty, inventive step, claim construnction and sufficiency.
Characteristics
The PSA represents the skilled person in the field relevant to the invention in question. They have accessed all publications in the field and have archival memory. The PSA can speak all languages and dialects (Pfizer’s).
The PSA is capabale of solving technical problems and progressing in a non-inventive manner (Technograph, Actavis v ICOS), and will do so under the influence of the conservatisms and prejudices in the field (France Technip SA). The PSA is capable of mosaicking, wherein they combine multiple documents (Technograph).
The PSA can be a person or a multidisciplinary team of people, led by a leader (France Technip SA).
Roles
Novelty
Novelty is destroyed as a result of an enabling disclosure. A disclosure is defined based upon the library principle, wherein if it is available to at least one person, who does not need to sign an NDA, it is disclosed to the public. Enablement refers to whether or not the PSA would be able to perform the invention based on the disclosure. Whether or not a disclosure is enabling depends on the complexity of the invention (Synton v Smithkline). Seeing a simple mechanical invention may be an enabling disclosure. In contrast, seeing a tablet containing a pharmaceutical invention may not be an enabling disclosure, for these more complex inventions, seeing is not equivalent to observing, the latter of which emcompasses some level of understanding by the viewer.
Inventive Step
The PSA is used to assess inventiveness in different ways at the UKIPO and EPO. Both of these consider what would have been obvious to the PSA.
The UK use the Pozzoli test:
- Identify the PSA and their common general knowledge
- Identify the inventive concept in the claim
- Identify the differences between the inventive concept and the state of the art
- Without any knowledge of the invention in question, would the differences have consituted steps that would have been obvious to the PSA?
Whereas the EPO use a slightly different test:
- Identify the closest prior art
- Establish the objective technical problem
- Would the invention as claimed have been obvious to the PSA had they been faced with the closest prior art and the objective technical problem?
Claim Construction/Infringement
The PSA is used in infringement proceedings to assess the knowledge/intent of the alleged infringer. the following 2 questions, which are used to assess equivalents:
- Does the patent infringe under normal interpretation?
- If not, does the patent infringe in a way that is immaterial?
For question 2, whether or not an infringement is immaterial depends on whether it would have been obvious to the PSA, knowing that the variant acheived substantially the same result as the protected invention, that it acheived it in substantially the same way.
We also use the PSA to construe claims. Importantly, claims are construed to reflect what the PSA would have understood the patentee to have meant, rather than what the patentee would have meant when writing (Catnic v Hill & Smith). With regards to infringement, we consider whether the PSA would have read the language of the claim in strict compliance.
Sufficiency
UKPA 14(3) states that an application must disclose the invention in a manner that is clear enough and complete enough for the PSA to perfom the invention.
There are different types of sufficiency that are each qualified by the extent to which the the PSA is able to perform the invention: classical = undue burden required; exceed claim breadth = only part of the invention can be peformed; ambiguous = the PSA wouldn’t know whether they are working the invention or not.
Added Matter
Added matter is evaluated using the PSA and the test provided by Bonzel v Intervention:
- Ascertain, through the eyes of the skilled person, what is disclosed, explicitly or implicitly, in the application as filed.
- Do the same for the patent as granted
- Compare the 2 to see whether any subject matter relevant to the invention has been added, whether by addition or deletion.
The EPO have a similar test, where they ask what the PSA would directly and unambiguously derive from the application as filed.
Problems with sufficiency can’t be resolved by adding matter, because added matter is prohibited under UKPA 76.
Added Matter
Statutes: UKPA 76
General Overview
In UKPA 76, added matter is that which extends beyond the matter disclosed in the application as filed. An application will not be allowed to proceed until it has been amended to remove that matter. Furthermore, amendments will not be allowed if they result in including added matter, thus expanding the scope of protection conferred. It should be noted, added matter can occur for both the removal and the addition of words from/to the application.
Rationale
The rationale for this is that applicants should not be allowed to improve their relative position by adding subject matter. This would damage the legal security of 3rd parties relying upon the content of the original application.
Consequences
Added matter is one for the grounds for revocation, under UKPA 72.
Earlier applications
Added matter restrictions apply to applications that refer to matter disclosed on earlier applications. In such cases, added matter is that which extends beyond the matter included in the earlier application. This applies to divisionals for instance.
Test
Bonzel v Intervention provided a UK test for added matter:
- Ascertain, through the eyes of the PSA, what is disclosed, both explicitly and implicity in the application.
- Do the same for the patent as granted.
- Compare the 2 disclosures and decide whether any subject matter relevant to the invention has been added, whether by addition or deletion.
Another test would be to consider whether the PSA would have learnt anything new from the patent as granted that they did not learn from the application as filed (Richardson-Vicks).
That being said, an applicant is not allowed to add matter that would have been obvious to the PSA (European Central Bank v Document Security).
The EPO have a similar test, where they ask what the PSA would directly and unambiguously derive from the application as filed.
Sufficiency
BEWARE: If an application is filed but deemed to be insufficient, the applicannt cannot resolve it by adding matter! (Biogen v Medeva)
Resuscitation
UKPA 117A
General Overview
Resuscitation refers to cases where a comptroller has mistakenly withdrawn a patent application, and thus needs resuscitation. Where the application and notice of withdrawal has been published by the comptroller, they will also publish a notice of resuscitation.
Consequences
Anything done during the period of withdrawal shall be treated as valid once the patent is resuscitated.
If infringing acts began before but continue into the withdrawal period, despite there being a publication of the notice to resuscitate, those will be count toward infringing acts.
If infringing acts or serious and effective preparation for infringing began in good faith after the withdrawal but before the publication of the notice to resuscitate, the infringing party would be allowed to continue to do so (this isn’t licensing though). The same ‘course of business’/disposal/crown use rights apply as secret prior use (partner, successor in title for that part of the business). #3rdpartyrights
Reinstatement
UKPA 20A,B
General Overview
Reinstatement may be applied for when an application has been terminated i.e. refused or deemed withdrawn due to: failure to meet a time limit set out in the act/rules, or time limits set by the comptroller.
To get their application reinstated, the applicant needs to: request it; comply with the rules; and satisfy the comptroller that their failure to meet the time limit was unintentional. The EPO require you to demonstrate that you took all due care to meet the time limits.
Unintentional Failure
Unintentional failure includes scenarios in which it would be unreasonable for the proprietor to pay due to, for instance, obstacles arising which were outside the proprietor’s realm of influence. Unintentional failure to pay excludes scenarios in which the proprietor has ignored warnings/advice from IP professionals.
The Request
There’s a 12 month time limit from the date of failure. In the past it could also have been 2 months from the date at which the cause for failure was removed, but that’s re-establishment under EPC only now.
The request can come from some but not all co-owners.
The request will be published if the application has been published.
Consequences
Much like resuscitation, if before the termination was published a person made in good faith acts that would otherwise constitute infringement or made serious preparation to do so they would be allowed to continue to do so under 3rd party rights. This does not extend so far as to an automatic licence. #3rdpartyrights
Protected by a basic patent in force
General Overview
A ‘basic patent’ means a patent which protects a product, a process to obtain a product, or an application of a product, and which is designated its holder for the purpose of the procedure for grant of a certificate.
Purpose
The purpose of an SPC is to re-establish a sufficient period of effective protection of the basic patent by permitting the holder to enjoy an additional period of exclusivity on the expiry of that patent. This is intended to compensate for the delay to the commercial exploitation of their invention by reason of the time elapsed between the application date and the date the first marketing authorisation in the EU was granted. The additional period of exclusivity is to encourage research by ensuring that the investments put into such research are covered.
Obtaining an SPC
Art. 3 of the SPC regulation says a certificate shall be granted if in the MS in which the application is submitted and at the date of the application:
- the product is protected by a basic patent in force
- a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with the relevant directive(s) - [available to 3rd parties]
- the product has not already been the subject of a certificate
- the authorisation referred to above is the first of its kind for that product.
An applicant can only make one SPC application per product.
Issue: ‘Protected by a Basic Patent in Force’
Multiple Active Ingredients: Medeva
If the product is as active ingredient it’s simple because a single basic patent may cover it, but if it’s a combination of multiple active ingredients a single basic patent may not.
In Medeva, the CJEU concluded that that an SPC cannot be granted if the active ingredients are not specified in the wording of the claims of the basic patent.
Precise Wording of the Claims: Eli Lilly v HGS
In Eli Lilly v Human Genome Sciences, Lilly sought a declaration that an SPC applied for by HGS on the basis of their patent and Lilly’s marketing authorisation would be invalid. This invalidation action was based on the fact that the antibodies in Lilly’s marketing authorisation weren’t specifically claimed in the basic patent in force.
The CJEU concluded that active ingredients can be claimed w.r.t. their function; as long as the claims relate, implicitly but necessarily and specfically to the active ingredient in question. Claims construed in accordance with Art. 69 ofc and the scope of the basic patent in force should not be exceeded by the SPC. There is no need for the active ingredient to be specified by a structural formula.
Priority date
UKPA 5
General Overview
The priority date (PD) is either the date of filing or the filing date of an earlier application for which the application in suit claims priority.
The PD is the date at which novelty and inventive step are assesed, such that any disclosures made after this date do not count against the application in suit.
Different matter contained in an application may have different priority dates.
Excluded Disclosures
There are just 2 excpetions to this, and these are called ‘excluded disclosures’. The first is unpublished patent applications with earlier PDs, and the second is disclosures made as a result of a breach of confidence, or disclosures made at certain accredited conferences. For the latter 2, the applicant may file for their patent within 6 months of such a disclosure, and have the disclosure of the invention form part of the state of the art.
Claiming Priority
Timeframe
Priority can be claimed within 12 months of the date of filing of the application in suit, and within 16 months of the filing of the priority application.
If the 12 month deadline is missed, the applicant has a further 2 months, the ‘Paris Period’, in which they can pay a late fee. In the UK, the applicant would need to demonstrate that this failure was unintentional, in Europe its ‘due care’.
Requirements
Only the applicant for the priority application or their successor can claim priority. A certified copy of the priority application must be provided, and the priority application must have been filed n a WTO or PC country.
The priority application and the application in suit must be for the same invention. In the UK we do something similar to the Bonzel v Intervention Added Matter test, called the Samsung v Apple test:
- Read and understand, through the eyes of the PSA, the priority document
- Determine the subject matter of the relevant claim
- Decided wither the subject matter of the claim can be derived directly and unambiguously from the disclosure of the priority document
Regeneration
An application can regenerate it’s PD before it’s publication and refile to generate a new PD on the new date of filing (Haberman 2003).
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’.
National Phase and Regional Phase
The rationale for the PCT system is to allow an applicant to centrally file the equivalent of multiple national applications. This system provides applicants with an indication of their chances of success in the national offices, providing a delay for the major filing cost for designation. The main disadvantage being central opposition.
International Phase:
Chapter 1
Filing & receipt, international search and international publication. All done by the receiving office.
Who can apply?
Any resident or national in a PCT state, or someone who has a real and effective industrial or commercial establisment in a PCT state.
Language
They must apply in any language accepted by the receiving office: UK is English and Welsh; EPO is English, German, and French.
Within 14 months of the PD, the application must be translated into a language of publication: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, or Spanish.
Competency
Applicants have 3 choices as to where they put in an application:
- A receiving office is component where the applicant is a resident or national.
- Applicants can file at the IB.
- If filed at an incompetent receiving office, it is deemed to have been accepted on behalf of the IB.
Declarations
The applicant needs to declare:
- Non-prejudicial disclosures
- Entitlement to be granted a patent
- Entitlement to claim priority (can be claimed to any PC or WTO country)
How is a DoF secured?
When the receiving office receives:
- indication an international patent is sought
- something that appears to be a desciption
- something that appeears to be claims
- name of the applicant
- designation of at least one PCT state
In addition, applications require an abstract, drawings, and a request. The request auto-designates every PCT state.
Once the international filing date is secured, the receiving office transmits a copy to the IB.
International Search
An ISA will conduct a search. For the IPO or EPO, the ISA is the EPO.
Written Opinion
The ISA provides a written opinion with their ISR on patentability. It covers novelty, inventive step, and industrial applicability.
Supplementary IS can be requestion within 19 months of the PD.
Publication
18 months after the PD or ealier if requested. Rights conferred by publication accrue where it is published in English, or when a translation comes through.
3rd Party Observations
Any 3rd paty can file observations anonymously and for free.
Chapter 2
International Preliminary Examination may optionally be requested to assess patentability at an international standards. The request must occur within 22months of the PD or 3 months of the ISR+WO. The search authority for the UK and EU is the same as above.
IPER is issued 28 months form the PD. The applicant has an opportunit to amend in response.
Regional Phase:
When does it occur?
The International Phase lasts a minimum of 30 months, but its 31 months in the UK or EPO.
Luxembourg = 20 months, Tanzania & Uganda = 21 months
Canada = 42 months if you pay them.
What do we need?
UK: Pay fee, file translations, local pub, search and exam.
EPC: Pay fee, file translations, supplementary searches and examinations.
Ordre Public
General Overview
EPO has argued that the rationale for the ordre public and morality clause is a question of principle to safeguard public trust in the patent system as a whole.
It has also been argued that the objective of the patents system is to promote socially beneficial invention. For instance, as patens are an economic driver, the absence of patents or patentability in a technological field will discourage research in that particular field. Thus, patents can indirectly influence desirable types of inventions, acheiveing it’s underlying objective.
Statutes
TRIPS
TRIPS says member states may exclude from patentability inventions, wherein such prevention is *necessary* to protect public morality or ordre public, including protecting human, animal or plant life, and avoiding serious prejudice to the environment, provided that exclusion is not based solely on the invention being contrary to law.
UK, Europe & US
This is reflected in the wording of UKPA 1(3) and EPC 53(a). The US does not employ a morality provision.
The UK also has a landmines act which prevents the development of anti-personnel mines; inventions related to this subject matter are exluded under UKPA1(3).
Biotech Directive
Provides further insight:
- cloning human beans
- germline genetic ID HB
- genetic ID of animals, suffering, substantial
- use of embryos human.
Oncomouse
From this came the Oncomouse EPO case, in which researchers produced a mouse that was genetically predisposed to get cancer. Ultimately these mice posed substantial medical benefit.
Greenpeace v Brustle
Brustle applied for a German patent which processed embryonic stem cells and could plausibly have had substantial medical benefit. The courts were asked to comment on the definition of ‘human embryo’ and provided quite a broad one at that; they essentially said that anything that could become a human qualifies as a human embryo.
“any human ovum after fertilisation, any non-fertilised human ovum into which the cell nuclues from a mature human cell has been transplanted, and any non-fertilised human ovem whose division and further development have been stimulated by parthenogesis.”
They also ruled that scientific research of human embryos is an industrial/commercial use, and that the destruction of human embryos is excluded.
Support
General Overview
The purpose of support is to ensure that the monopoly conferred corresponds to the technical contribution made. Fuel Oils/EXXON.
Mimumum Requirement
It’s not enough to recite the claims in the description.
The absence of an essential feature should be objected to as ‘lack of support’ not insufficiency.
Test
Ascertain the invention from the spec and compare it to the invention ascertained from the claims. (Shering)
