Patents Act

Question 1

Surrender of Patents

Answer 1

The proprietor may offer to surrender their patent

In writing

At any time

Stating that there is no pending action for revocation or infringement or where an action is pending, full details of the action

A third party may oppose the surrender

If surrender is accepted, has effect from date of notification in the OJ

Cannot sue afterwards for prior infringements

Unlikely to be accepted if pending action for revocation or infringement which can result it retroactive loss of a patent.

Question 2

Non-prejudicial disclosures

Answer 2

A disclosure is not part of the state of the art of the disclosure occurred during a 6 month period preceding the filing date in the UK and…

The disclosure was due to the invention being obtained unlawfully or in breach of confidence

Or the disclosure was due to the inventor or proprietor displaying the invention at an officially recognised international exhibition, the inventor states this on filing and supplies evidence within 4 months of filing.

Question 3

What types of applications are s2(3) prior art

Answer 3

GB, EP, PCT(GB), PCT(EP)

(Not PCTs not entering GB or EP)

For EPs even if GB designation is withdrawn before publication, publication is still s2(3) prior art

PCTs are treated as EPs in the EP regional phase

Question 4

Methods of Treatment and Diagnosis

Answer 4

Methods of treatment of the human or animal body by surgery or therapy

Methods of diagnosis practices on the human or animal body

Substances and compositions for use in such methods are allowed.

A new use of a known substance is new

Treatment is of the human or animal body - purification of a patient’s blood through a dialysis machine is not excluded

Purely cosmetic treatments are not excluded

Cosmetic surgeries are excluded

Therapy assumes relief of a medical condition

Diagnosis includes a medical decision phase

Diagnosis is: the i. Collection and II. Comparison of date to iii. Identify any deviation from the norm and iv. Attributing that to a particular clinical picture.

Diagnosis assumes medical condition, pregnancy tests are not diagnoses

Question 5

Assignments/Licences

Answer 5

For patents and published UK applications register assignments and licences at the UKIPO within 6 months or as soon as practical after date of assignment/licence otherwise costs or expensive for infringement proceedings will not be awarded to the assignees or exclusive licensees.

For unpublished UK applications, notify the Comptroller of any registerable event.

For EP(GB)s register at the EPO

The PCT does not have a register so licences etc. cannot be registered. Notify the IB of assignments and licences during the international phase

Question 6

Later/Earlier Transactions/Events

Answer 6

An earlier transaction/event has entitlement over an earlier transaction or event if:

a) the earlier transaction/event was not registered

or

b) if transaction/event occurred before publication, notification was not given to the Comptroller

and

the later transacting party did not know about the earlier transaction.

This also applies where a second right is incompatible with a first right arising from an unregistered transaction or event.

A transaction is not valid if not done with the correct owner

Question 7

What is the default arrangement for co-ownership?

Answer 7

Equal undivided share

subject to agreements to the contrary

Question 8

What rights do co-owners have by default?

Answer 8

Each is entitled to work the invention independently and source essential means for it.

All parties must agree to:

amend, revoke, licence, assign or mortgage the patent.

Applies to patents and applications

Any of the above may be altered by agreement

Each owner can sue for infringement without asking for permission of the others. The other parties are automatically brought into proceedings but are only liable for costs if they take an active part in them

Question 9

Transactions in patents and patent applications if the owner is overseas

Answer 9

A UK representative is required to transfer rights

Question 10

Original proprietor and licensee rights when application/patent is transferred to completely new proprietor

Answer 10

Licence lapse upon registration of new owner.

Old proprietor and existing licensees are entitled to continue working the invention or begin if serious and effective preparations have been made in good faith to work the invention in the UK.

They have up to 2 months of the order of the transfer to request a new licence.

Licence must be for reasonable period and on reasonable terms.

Question 11

When can you declare priority if you file an application within 12 months from the earliest priority?

Answer 11

At the same time as filing the application (within 12 months)

or

Up to 16 months from the earliest priority provided no request has been made for early publication of the application claiming priority, or that such a request is withdrawn in time to prevent publication.
Pay fee, file form

Question 12

What can you do if you miss the 12 month convention deadline? (priority)

Answer 12

If one unintentionally misses the 12 month deadline when filing, can request a late filing of the application up to 14 months from filing

Provided no request has been made for early publication of the application claiming priority or such a request is withdrawn in time to prevent publication.

Must declare priority when filing the request

Provide evidence of why the late filing was unintentional

Pay late fee, declaration fee, file form

Question 13

Who may a patent be granted to

Answer 13

The inventor(s)

or in preference a person entitled by agreement, law, or treaty (e.g. employer)

or a successor in title to either of the above

An applicant cannot be entitled via an unenforceable assignment, e.g. any assignment that diminishes an employee’s rights

Question 14

Section 8 - Procedure to Resolve Entitlement before grant for a UK application

Answer 14

Any party may refer a question of entitlement to the Comptroller

The Comptroller can:
- Replace some or all applicant names with the new party/s
- Refuse to grant a patent
- Amend to excise contested elements of the patent application
- Order a licence or transfer of right in the application to the new party/s

If the new party’s elements of the application are excised or the application is refused or withdrawn, the Comptroller may order that the new part can file a new application for those elements (no added matter) within 3 months from the decision or end of the appeal (treated as having been filed on the date of the older application).

Question 15

a) UK applications

b) UK patents

c) foreign applications

d) joint applicant disputes

e) joint applicant disputes when one applicant is not entitled

f) inventorship disputes

Answer 15

a) s8

b) s37

c) s12

d) s10

e) s10 and s8 in combination

f) s13 (but use s12 for foreign applications)

Question 16

What to consider if joint applicants split

Answer 16

Likely to be a conflict of interest. Select which you will continue to represent and advise the other to seek a new representative.

Question 17

Consequences of offering settlement

Answer 17

Party could bear costs if court if they reject a settlement offer

Question 18

Section 12: Entitlement Disputes for Foreign Applications

Answer 18

Before grant of an overseas patent…

…any person may refer a question of entitlement to the Comptroller

If overseas app is EP, determination under S12 is typically that applicant is resident in the UK or that the employee is employed in the UK

Where a foreign application grants during s12 proceedings then proceedings can continue

s12 can be used to determine inventorship (unlike s8 which defers to s13)

The decision can affect granted sister cases overseas, thought it will only be guidance in their jurisdictions - not binding on parallel litigation overseas

For EP

Request suspension of EP proceedings, providing proof entitlement proceedings have begun in the UK

If successful, a UK decision can be used to transfer rights of an EP application

For PCT

Cannot suspend proceedings but successful decision can be applied to the international application

Question 19

Section 13: Declaration of Inventorship

Answer 19

Within 16 months from priority provide the UKIPO with:

• the identity of the inventors
• a derivation of rights if the applicant is not the inventors

A 2 month extension as of right is available under R108(2)

Failure to do so results in the application being deemed withdrawn

For PCT(GB) entering the national phase, have the later of 16 months from priority and 2 months from the start of the national phase to request a mention of the inventor.

The right of an inventor to be mentioned can be waived if requested before preparations for publication are complete. Must give reason why inventor does not want to be named.

Anyone can apply to have an alleged inventor mentioned in a patent or published application

Question 20

When is the application fee due?

Answer 20

Within the later of 12 months from priority or 2 months from filing

Question 21

The abstract…

Answer 21

Does not form part of the state of the art under s2(3)

It is citable as part of a published document under s2(2)

Question 22

Withdrawal of applications…

Answer 22

cannot be reversed but the Comptroller can correct an error or mistake in the withdrawal of the application

Question 23

If the applicant’s name and address is not provided…

Answer 23

…the Comptroller will request and the applicant has two months from the request to comply

Question 24

Unity of Invention

Answer 24

Two or more inventions have unity when the share a technical relationship based on matching or complimentary special technical features that define a contribution of the prior art

Question 25

Enabling Description

Answer 25

An enabling description provides enough information for the skilled person to work the invention across the whole scope of the claim

Question 26

Sufficiency

Answer 26

The test of whether the full scope of the invention as defined in the claims is clearly and completely disclosed by the description

Question 27

Support

Answer 27

Whether there is enough technical information in the application to support (provide basis for) the text of the claims

Question 28

Date of Filing

Answer 28

The earliest date on which the following conditions are met:

a) an indication that a patent is sought
b) identifies the applicant or enables contact with them
c) something that appears to be a description of the invention or a reference to an earlier relevant application

Question 29

When are the claims due?

Answer 29

Within 12 months

Or, if claiming priority:

The later of 12 months from priority or 2 months from filing

Can get a 2 month extension under Rule 108(2)

Question 30

When is the abstract due?

Answer 30

Within 12 months

Or, if claiming priority:

The later of 12 months from priority or 2 months from filing

Can get a 2 month extension under Rule 108(2)

Question 31

When does the description need to be filed if the earlier application is filed by reference?

Answer 31

Within 12 months

Or, if claiming priority:

The later of 12 months from priority or 2 months from filing

Can get a 2 month extension under Rule 108(2)

Question 32

When does a certified copy of the referenced application need to be filed by? (For applications filed by reference)

Answer 32

Within 4 months of filing

Can get a 2 month extension under Rule 108(2)

Question 33

When does a translation of the referenced application need to be filed by? (For applications filed by reference)

Answer 33

Within 4 months of filing

Can get a 2 month extension under Rule 108(2)

Question 34

When is the search fee due?

Answer 34

Within 12 months

Or, if claiming priority:

The later of 12 months from priority or 2 months from filing

Can get a 2 month extension under Rule 108(2)

Or, for PCT(GB)s….

The later of the period above and 2 months from the start of the national phase

Question 35

Missing Parts

Answer 35

Can add missing parts between the filing date and date of preliminary examination or within 2 months of notification by the preliminary examiner

Unless the applicant withdraws the missing parts in writing before the preliminary exam or before 2 months of notification by the preliminary examiner…

…the date of filing will be re-dated to when the missing part was filed….

Unless…

On or before the initial filing date, a priority document is declared that contains the missing parts

and

a request is made not to re-date the application in writing….

…identifying the missing part in the priority application…

…before preliminary examination or within 2 months of notification by the preliminary examiner

The request fails if the priority document is missing any of the added material

A certified priority document needs to be filed within the earlier of 16 months from the priority date or 4 months from the date of the request to keep the filing date

A certified copy isn’t needed if the UKIPO already has a copy

Question 36

Divisionals

Answer 36

Can only be filed while the parent is pending (the parent has not been terminated or withdrawn or not yet granted)

Must be filed before the last 3 months of the compliance period

The divisional application must include a statement that identifies it as a divisional

Question 37

New applications following disputes…

Answer 37

can be filed within 3 months of the Comptroller’s order or within 3 months of the end of any appeal of that order

Question 38

Deadlines for filing declaration of inventor and priority docs for divisionals and new applications following disputes

Answer 38

The later of 2 months from filing or the relevant dates…

…unless they are filed in the last 6 months of the compliance period, in which case they must comply on filing

Question 39

Welsh texts…

Answer 39

…will be translated by the Comptroller

Question 40

When is the national fee due for PCT(GB)s (which replaces the application fee)?

Answer 40

Must be paid to enter the national phase (at national phase entry)

Question 41

Deadline for filing formal drawings

Answer 41

Typically around 15 months or within one month of notification

Question 42

What happens if an application is withdrawn after preparations to publish are complete? (typically about five weeks before)

Answer 42

The application is published

The application counts as s2(2) prior art but does not count as s2(3) novelty only prior art

Question 43

When is the deadline for correcting an erroneous priority date in the declaration

Answer 43

2 months from notification

Question 44

When does substantive examination need to be requested?

Answer 44

*Six months from the publication date (as publicised in the OJ)

Pay exam fee

Together with any excess description page fee, for the 36th and subsequent pages

Otherwise the application will be deemed withdrawn

For applications under a s22 secrecy order

2 years from priority

For divisional applications or applications following a dispute

The later of the normal period for the parent application or 2 months from filing…

…unless within 6 months of the compliance period, in which case it needs to be requested on filing

For PCT(GB)s

The later of 33 months from priority or 2 months from entry into the national phase

The date to request exam can be extended as of right by 2 months under Rule 108(2) - file form, pay fee

The date can be further extended at the Comptroller’s discretion under Rule 108(3) providing a good reason why failure to request was out of the applicant and agent’s control - file form, pay fee

Question 45

What happens if there are more than 25 claims?

Answer 45

Excess claims fees for the 26th and subsequent claims will need to be paid together with the **search fee

Question 46

When do additional search fees need to be paid?

Answer 46

File the search request and pay the second search fee no later than 3 months before the end of the compliance period.

Question 47

What happens if PF9A and PF10 are submitted together

Answer 47

A Combined Search and Examination Report is issued (unless it is specified that the applicant does not want this to happen)

Question 48

When is voluntary amendment possible?

Answer 48

After the search report has issued

Question 49

Accelerated Search

Answer 49

Can be requested with a reason (e.g. wanting to see the results before foreign filing)

Question 50

Unsearched claims

Answer 50

Can be reconsidered during examination if a supplementary search is carried out (e.g. due to amendment) - requires payment of fee unless waived by Examiner. More lenient than the EPC which prevents amendments based on unsearched subject matter

Question 51

What options does the applicant have if the Examiner requires a supplementary search (e.g. if there is non-unity or due to amendment following the search)

Answer 51

a) Pay the additional search fee

or

b) amend to render the search unnecessary

or

c) successfully argue otherwise

Question 52

How many opportunities does the applicant have to comply with defects highlighted by the exam report and/or argue against them

Answer 52

One

Question 53

When is the Compliance date (the period for putting the application in order for grant)?

Answer 53

The later of

4.5 years from the priority date

or

12 months from the first exam report

For new applications following a dispute

The later of the compliance period of the originating application or 18 months from the filing date of the new application

For divisionals

The compliance period is the compliance period of the parent application

Question 54

What happens if the Examiner uses third-party observations within the last 3 months of the compliance period

Answer 54

The applicant has 3 months to respond

Question 55

When does the grant fee need to be paid

Answer 55

If, when notified of the intent to grant under s18(4)…

the number of claims is greater than 25 and is greater than the number of claims when the search was requested

or

the number of pages of the description is greater than 35 and is greater than the number of pages of the description when the examination was requested

the applicant must pay a grant fee corresponding to the further additional claims fees and/or pages fees

within 2 months of the notification of intent to grant.

Question 56

What happens if there are no objections before publication

Answer 56

The Examiner will wait until at least 3 months after publication before granting a patent to allow third-party observations

Consider requesting early publication of the application

Question 57

When can voluntary amendments and divisionals be filed once a notice of intent to grant has issued?

Answer 57

Voluntary amendments and divisional filings are not possible between the administrative grant date and notification of grant in the OJ

To avoid this happening without warning, the UKIPO will issue a notification of intent to grant (under s18(4)) which indicates a later grant date.

The UKIPO will provide at least a one month window to file divisionals or to make voluntary amendments if the first exam communication is a s18(3)

or a 2 month to file divisionals or make voluntary amendments if the first exam communication is a s18(4)

Question 58

Double Patenting

Answer 58

If an EP(GB) claiming priority from a corresponding GB case grants before the GB case, the GB case is likely to be revoked

If the GB patent grants first and then an EP(GB) grants with the same claims, the GB patent will be revoked

unless: the cases are amended to distinguish them
the GB designation of the EP is withdrawn before the EP(GB) grants

or

the EP(GB) is surrendered before the GB grants

The UKIPO will wait until the end of the EP opposition period/procedure in case a successful opposition removes the EP(GB) patent

Question 59

When can you register a patent in Hong Kong based on a GB or EP(GB) or CN patent?

Answer 59

Within 6 months of grant providing the application was also recorded in Hong Kong within 6 months of publication.

Only formalities are examined before allowance

Question 60

What happens if the first communication under s18(3) is more than 3.5 years after the priority date

Answer 60

the response time for the communication is 2 months, and only extendable to 4 months

Question 61

What happens before loss

Answer 61

The applicant is entitled to a hearing, appeal to a patents court, then appeal (on facts and law) to the court of appeal

Question 62

Accelerated examination

Answer 62

Can be requested if can demonstrate hardship (e.g. likely infringement or where grant is needed to secure investment)

Acceleration can be requested using the green channel for inventions with an environmental benefit

Question 63

Pre-Grant Amendment

Answer 63

The applicant can voluntarily amend at any time before grant providing they do not add matter

To amend before grant:

Request amendment in writing
Identify amendment and provide a reason for it

Wait for search report to issue but can keep on amending until the first exam report is issued

if the first report is a s18(4) report, one voluntary amendment is allowed if it is within 2 months

if the first report is a s18(3) report, one voluntary amendment is allowed if it is part of a reply to the report

or

if the first report is a s18(3) report issued before publication, can keep on voluntary amending before actually replying to the report

The Comptroller may also consent to an amendment

For a PCT(GB), if it has already received its search report (ISR), voluntary amendments can be made upon or after national phase entry

Question 64

What happens if an appeal is pending or the time to bring an appeal has not expired by the end of the compliance period?

Answer 64

The court determines an extended compliance period.

If no appeal is brought, the compliance period ends 28 days from the decision.

Time to bring an appeal = 28 days from a decision

Question 65

What is the deadline for requesting an appeal (e.g. on a decision to refuse an application)

Answer 65

28 days from the decision

Question 66

What should you do if it is close to the end of the compliance period?

Answer 66

Mark correspondence as urgent

Question 67

When can you reinstate an application?

Answer 67

When an application has been refused or treated as withdrawn due to missing a deadline either set by the Comptroller or the Act…

If the failure to meet the deadline was unintentional

If an extension is not still available

cannot reinstate an application following a late declaration of priority with a late filing

Request reinstatement as soon as possible to prevent third party rights accruing.

Question 68

What must you do to reinstate an application?

Answer 68

Request reinstatement within 12 months of the date of termination of the application

File evidence that the failure was unintentional

Unintentional may include an isolated mistake, does not include changing one’s mind

Remedy to failure that caused the application to be deemed withdrawn within a period specified by the Comptroller - at least 2 months

Have one month to request a hearing if reinstatement is refused

Question 69

What happens when reinstatement is requested?

Answer 69

Notice of the request will be given in the OJ.

A decision to reinstate is also published

Question 69

What is the effect of reinstatement for 3rd parties

Answer 69

If the application has published, and a 3rd party carries out an infringing act during a potential as of right extension period it is still an infringement.

If the application has published, a potential extension period has passed but a 3rd party continues or repeats an earlier infringement, this is still an infringement.

If the application has published and between termination and notice of request of reinstatement, anyone who begins in ** good faith** to effectively infringe or makes serious and effective preparations to do so, they may continue. This right does not become exercisable until after any deadline by which an extension could have been requested.

“Continue” suggests that significant expansion or divergence from their original act is not allowed

This right also applies to partners in a business but can only be transferred as part of the business itself

Question 70

Third Party Observations

Answer 70

Between publication and the administrative grant date any person may file third party observations

Relating to the application’s patentability

Filing observations does not make you a party to proceedings

*If the observations are within the last 3 months of the compliance period and result in a s18(3) exam report, the applicant is given a total of 3 months to put the application in order.

Question 70

What happens if a GB, EPC or PCT relates to military technology?

Section 22: Information prejudicial to national security or public safety

Answer 70

A GB, EPC or PCT application must be first filed at the UKIPO where it is reviewed to see if it is prejudicial to national security

If so, the Comptroller may prohibit or restrict publication/distribution

For cases that may be prejudicial to the safety of the public the Comptroller can prevent or restrict any dissemination of the invention for up to 21 months

While the prevention is in force:

• Can still prosecute to readiness to grant in the UK
• The application is suspended and not published
• EPC applications are not sent to the EPO
• PCTs are not sent to the IB or ISA

Any application identified as prejudicial to national security or public safety is notified to the Secretary of State who:
- determines if publication of the application or invention would prejudice security or safety
- instructs the Comptroller to extend the period of prevented or restricted publication until instructed otherwise
- will review security / safety again within 9 months of filing and every 12 months thereafter
- lifts the restrictions if application is no longer prejudicial

If hardship due to the restriction is shown, the Government may make a hardship payment

The renewal fee is waived while the prevention is in force

Breaching the prevention makes one liable to:
i) a fine of up to £1000
ii) up to 2 years in prison

Can seek discretion to disclose to specified persons

If an EP is not received by the EPO within 14 months, conversion to designated states may be possible

A PCT designating GB may be converted to a GB national filing if it is not received by the IB within 14 months

Don’t cross reference to a secret application, or the second application will become secret too

Question 71

When do restrictions to file overseas apply? (s23)

Answer 71

If an application relates to military technology, prejudices national security or public safety.

Unless the application was filed in the UK 6 or more weeks ago and there is no prevention order in force

The restrictions do not apply if a non-UK resident previously filed the application overseas anyway.

Can request foreign filing clearance from the UKIPO

Question 72

What happens if someone breaches an s23 order? (i.e. first files an application relating to military technology, or that may prejudice public safety or national security)

Answer 72

Breaching the restriction on overseas filings makes one liable to:

a) a fine of up to £1000 or
b) up to 2 years in prison

but only if you knew that filing would contravene s23 or were reckless with the possibility that it would.

Question 73

What happens if payment is not made within the renewal period?

Answer 73

The patent ceases to have effect at the end of the renewal date (the anniversary of filing, not the end of the month)

Question 74

What can a proprietor do if they miss the renewal period?

Answer 74

Pay renewal fee with a surcharge within a 6 month grace period

(to the end of the month 6 months after the last month of the renewal period)

File form, pay fee

The surcharge is £0 in the first month and £24 for each succeeding month

Question 75

When is the renewal fee due for a UK application when the grant date is earlier than 3 years 9 months from the filing date

Answer 75

At the end of the month of the 4th anniversary of the filing date.

The renewal period for paying is during the 3 calendar months preceding and including the anniversary

Question 76

When is the renewal fee due for a UK application when the grant date is at or later than 3 years 9 months from the filing date?

Answer 76

At the end of the month 3 months after the grant date.

The renewal period for paying is from the grant date to the end of the month 3 months after the grant date.

Question 77

When is the renewal fee due for an EP(GB) application if the EP grants within the 3 month period ending with the 4th anniversary of the filing date

EP grants within 3 years 9 month to 4 years from filing date

Answer 77

The end of the month 3 months from the grant date

The renewal period for paying is from the grant date to the end of the month 3 months after the grant date.

Question 78

When is the renewal fee due for an EP(GB) application if the EP grants later than the 4th anniversary of the filing date?

Later than 4 years from the filing date

Answer 78

The end of the month after the 5th anniversary of the filing date

The renewal period for paying is from 3 months prior to the 5th anniversary of the filing date to the end of the month containing the 5th anniversary of the filing date.

Question 79

When are subsequent renewal fees due?

Answer 79

At the end of the month of the next anniversary of filing

The renewal period is the three calendar months leading up to and including the renewal date in the third month

Question 80

What happens if a renewal payment is overdue?

Answer 80

The Comptroller must send a reminder within 6 weeks are the renewal period expires

If the renewal fee and surcharge are not paid by the end of the grace period, the Comptroller will send a notice within 6 weeks and point out the possibility of restoration

Failure of the Comptroller to send a payment reminder could be interpreted as a procedural irregularity, allowing for the possibility of additional time to pay the fees

Question 81

When does a patent’s term expire?

Answer 81

At midnight the day before the 20th anniversary of the filing date (up to and not including the 20th anniversary)

Question 81

What happens if a GB patent grants after the second or subsequent renewal period

Answer 81

The proprietor has to pay all the outstanding renewal fees.

Question 81

What happens if a granted patent lacks unity?

Answer 81

Cannot object to a granted patent on grounds of unity

Question 82

Section 27: Post Grant Amendment

Answer 82

Cannot add matter

Cannot broaden scope of claims

Request in writing

Identify the proposed amendment and provide a reason for it

Retroactive to the date of grant

An application to amend is posted in the OJ

May be opposed by a third party
- e.g. if it adds matter, broadens scope, or still leaves the patent invalid

If currently in proceedings for infringement or revocation, use s75, not s27

Question 83

What should you do if prior art comes to light after grant of an EP patent?

Answer 83

Amend using post-grant central amendment

Question 84

When can an application for restoration of a lapsed patent be made?

Answer 84

Within 13 months after the grace period

If failure to pay in the original period or grace period was unintentional

Question 85

Who can make an application to restore a lapsed patent?

Answer 85

The proprietor or one of several joint proprietors

Question 86

What should you do to restore a lapsed patent?

Answer 86

Apply for restoration before the end of the 13 calendar months from the end of the grace period

File evidence that failure to pay was unintentional

Notice of the application to restore will be published in the OJ

Request asap to minimise third party rights

After the Comptroller allows a restoration, **pay missing fees* before restoration is enacted and advertised. The UKIPO issues a deadline, typically 2 months

If restoration is not allowed, have one month to request a hearing

Question 87

What effect does restoration have on third parties?

Answer 87

An infringing act still infringes if it was done during the grace period

An infringing act still infringes if it was a continuation of an earlier infringement

If, after the grace period but before the notice of application to restore was published in the OJ, an otherwise infringing act or a serious preparation to do so is begun in good faith or they may continue to do that act

Persons allowed to work the invention can allow partners within their business to work it but can only assign or bequeath the right as part of the business

*“Continue” suggests that significant expansion or divergence from the original act is not allowed.

Question 88

Who can pay renewal fees?

Answer 88

Anyone

Question 89

Post grant entitlement disputes (Section 37)

Answer 89

Only someone claiming a proprietary interest may start post-grant entitlement proceedings

Can only launch post grant entitlement proceedings up to 2 years from grant unless the proprietor knew they were not entitled when the patent was granted

Successful proceedings may result in:
a) the claimant being made an extra or replacement proprietor
b) a licence being granted
c) the current proprietor or rights-holder being directed to comply

Where the result is revocation due to ownership by an unentitled grantee, the claimant may apply for a patent in the whole/ part of the spec they are entitled to within 3 months of the decision or end of appeal. Such a new filing will keep the filing date of the original.

Applies to UK and EP(GB) patents

Question 90

Licensee rights when at least one of the original proprietors is the same.

Answer 90

Any licences or other rights are considered to be issued by the updated proprietors

Question 91

When does an invention belong to an employer?

Answer 91

If it was made in the course of normal duties of the employee and an invention might reasonably be expected to arise from them

If it was made in the course of additional specifically assigned duties and an invention might reasonably be expected to arise from them

or

If it was made in the course of the employee’s duties and implicit in these duties is a special obligation to further the interests of the employer

Invention is broader than patentable invention since ownership can be determined prior to grant

Normal duties does not preclude working at home or outside normal hours

Question 92

Who is an employee?

Answer 92

Someone who has a contract of service or apprenticeship with an employer

For PhD students look at employment contracts, funding/grant agreements for IP clauses. Consider several outcomes but typically a student will own their invention in the absence of indications to the contrary.

For directors or major shareholders, request confirmation that they are employees. If so likely to have special obligation.

For contractors and other non-employees, check if there is a contract and whether it deals with ownership. Request a copy to inspect. Check whether there is a contract of service (employee) or a contract for service (not an employee). Consider the nature of the work and whether inventions may arise in the contractor’s normal duties under the contract.

Advise including an IP ownership clauses in any agreements you propose.

Question 93

Who does s39 apply to?

Answer 93

Employees normally resident in the UK and mainly employed in the UK

Question 94

Where does the burden of proof lie for employee ownership disputes?

Answer 94

The burden of proof is on the employer as the default position is ownership by the employee

Question 95

Employee compensation when an invention made by the employee belongs to the employer.

Answer 95

If, while a patent is in force or within **one year of its lapse*…

…and a patent has been granted for an invention made by the employee and belonging to the employer…

…and the invention and/or patent is of outstanding benefit to the employer factoring in the size and nature of the company…

…so it is just that the employer compensates the employee….

…then the court or comptroller may award compensation to the employee.

Question 96

Employee compensation when an invention made by an employee as is assigned or exclusively licensed to the employer

Answer 96

If, while a patent is in force or within one year of its lapse an employee makes an application for compensation…

…and a patent has been granted for an invention made by and belonging to the employee but assigned or exclusively licensed to the employer…

…and the benefit to the employee is inadequate in relation to the benefit to the employer of the invention and/or patent…

…so it is just that the employer further compensates the employee…

…then the court or Comptroller may award compensation to the employee.

*The one year window after the patent has lapsed may be extended under R108 at the Comptroller’s discretion’

File a caveat to request to be informed of when the patent lapses

Question 97

When does an invention or patent have an outstanding benefit?

Answer 97

Not merely substantial but out of the ordinary

Future benefit is not included

Foreign rights can be taken into account

The benefit is the actual not theoretical benefit

Must factor out contributions of adverts etc.

Onus is on the employee to prove it is outstanding

Question 98

When may the benefit to an employee be considered inadequate?

Answer 98

When the benefit to the employer diverges significantly from that understood at the time the agreement was made

Question 99

How much compensation should be awarded (employee compensation)

Answer 99

A fair share of the benefit to the employer from the invention, patent, application and/or assignment of any rights in the invention, patent or application, whilst taking into account:

a) the employee’s duties
b) the employee’s existing pay/benefits
c) the effort and skill in inventing
d) any co-inventor’s contribution
e) the employer’s contribution

Question 99

What happens when a contract diminishes an employee’s rights?

Answer 99

Any term diminishing the employee’s rights is unenforceable in respect of those rights…

…but this does not extend to any duty of confidentiality

Question 100

Who does s39 to 42 apply to (employee rights/compensation)?

Answer 100

Employees mainly employed in the UK

If unclear where mainly employed, then if they are attached to a UK place of business

Question 101

What period is used to calculate the benefit to the employer

Answer 101

The calculated benefit to the employer from an invention does not extend beyond the period the patent is in force

Question 102

When are licences of right available?

Answer 102

Any time after grant a proprietor may apply to register that licences are available as of right

Question 103

What does the Comptroller do when a proprietor registers that licences as of right are available?

Answer 103

The Comptroller:
- informs current rights holders
- ensures there are no contractural obligations prohibiting licensing
- advertises that licences of right are available in the OJ

Question 104

What are the consequences of a proprietor registering that licences of right are available?

Answer 104

Any person is entitled to a licence on agreed terms/terms of the Comptroller

Any infringer who takes a licence may only pay damages up to 2x a retrospective licence fee

Renewal fees payable are halved after registration

An infringer can take a licence without admitting liability

A licensee as of right may, unless their licence expressly states otherwise, request the proprietor defend against infringement.

After 2 months from such a request, the licensee as of right can act themselves if the proprietor does not, with the proprietor drawn in as co-claimant.

A proprietor added as co-claimant is not liable for costs/expenses unless they actively participate in the licensee’s action.

Any infringer can take a licence and avoid an injunction and limit damages except for the case of importation outside the EEA

To get a renewal fee reduction, the application must be registered at least 10 days before the fee is due

Question 105

How can a licence of right be cancelled?

Answer 105

The proprietor can apply to cancel the licence at any time after the licence of right was registered

To cancel they must pay the balance of all discounted renewal fees

Any licensees need to consent to the cancellation

Alternatively…

An existing third party may apply for cancellation of a request for a licence of right within 2 months of the date of entry - e.g. if they have an existing agreement with the proprietor that precludes licences of right

Applications for cancellation may be opposed within 2 months

Question 106

Infringement of a product

Answer 106

Making, using, disposing, offering to dispose, importing, keeping the product in the UK while the patent is in force

M.U.D.O.I.K.

Question 107

Infringement of a process

Answer 107

using or offering the process for use in the UK when it is known or would be obvious that it would infringe to do so

or

using, disposing, offering to dispose, importing or keeping any product directly obtained by the process

U.D.O.I.K.

Question 108

Indirect infringement

Answer 108

When the supply and recipient are in the UK…

…and when a person supplies or offers to supply in the UK an unauthorised person with any means relating to an essential element of the invention if the person knows or it is obvious that those means are suitable for and intended for putting the invention into effect in the UK

Unless the means is a staple commercial product and is not used to induce infringement

For importation consider where the transfer of title of ownership occurred

Question 109

What is exempt from infringement?

Answer 109

a) private non-commercial use
b) experimental purposes relating to the subject-matter of the invention
c) a medicine prepared in a pharmacy in response to an individual’s prescription
d) use for the needs of a ship temporarily in UK waters
e) use in an aircraft/vehicle temporarily in UK territory/airspace/waters
f) certain exempt aircraft lawfully in the UK and their parts or accessories
g) farm use: propagating the product of a harvest on own holding
h) farm use: breeding livestock
i) human or veterinary health trials for market authorisation

a), b), and c) do not excuse acts under 60(2)

Ships and aircraft must be registered outside the UK to gain exemption

Both vehicles registered in the UK and not yet registered anywhere (and hence open to UK registration) are not exempt

Question 110

Who has the onus of proof for patent infringement?

Answer 110

The patentee except in the case of a process producing a new product - the existence of the product causes a presumption of infringement

Question 111

What are patented products?

Answer 111

• a patented product
• a direct result of a patented process
• a product to which a patented process has been applied (a process that results in alteration to the product)

Question 112

What should you do if your client is concerned about possibly infringing a patent?

Answer 112

Carry out a freedom to operate search

Consider a declaration of non-infringement

Question 113

What should you do if you think a company’s product is potentially infringing a client’s patent

Answer 113

Purchase the item to provide evidence of infringement

Question 114

What remedies are available if infringement proceedings are successful?

Answer 114

a) a full injunction
b) an order to deliver up or destroy the infringing product
c) damages or an account of profits
d) a declaration of validity and infringement
e) costs or expenses

Question 115

When is the cut off for claiming damages?

Answer 115

Can only claim damages for infringements up to 6 years ago

Question 116

What should you consider if the client is the patentee?

Answer 116

If unclear whether infringement has occurred, analyse and/or buy the product to establish infringing act(s)

Identify possible infringers and whether they are directly or indirectly infringing

Consider whether an amicable solution is desirable
- offer a licence
- offer to sell the relevant product to them or provide the relevant service
- cross licence if they have refined client’s invention or developed a complementary invention

Put infringer on notice to avoid innocent infringer defence. E.g. send copy of the application/patent. Take care not to threat.

Note to client the risk of inviting observations before grant or opposition or revocation actions after grant

Ensure patent is valid. Evaluate prior art and propose amendments if necessary.

Patent must be granted and in force before rights can be asserted.

If application is not granted, accelerate proceedings

Consider amending the current application to a narrow claim directed towards the infringement and filing a divisional application to the remaining broad material.

For small clients / infringements under £10K consider suggesting the small claims track in the IPEC to save costs

Question 117

How can you accelerate proceedings?

GB, EP, PCT

Answer 117

For a UK application:
- request combined search and examination
- request accelerated prosecution by reason of infringement
- request early publication to obtain s69 rights (provisional infringement)

For an EP application:
- use PACE
- request early publication
- pay exam and des fees early and waive right to confirm proceedings with examination
- note some states only confer protection once claims are published in their language - consider preparing translations early and sending to EPO and desired designated states

For a PCT:
- request early publication
- request early entry into the national/regional phase (and request early processing)

Question 118

What is required to obtain an interim injunction?

Answer 118

• A serious (not frivolous) case is to be tried
• The potential harm cannot be adequately compensated for by eventual damages won at trial
  Damages are unlikely to be adequate if the company’s exclusive market position will be irreparably damaged by entry of a competitor
• There is a balance of convenience
  The court will take into consideration other relevant details such as the financial standings of the parties - avoiding possible hardship that might arise by either granting or not granting the interim injunction
• If the above points are balanced, the status quo will be maintained

If an interim injunction is granted, a financial cross-undertaking may be required to compensate the other side if the injunction was wrongly granted - the ability to pay is likely to be a factor in the balance of convenience.

Do not delay requesting an interim injunction

Question 119

What should you consider if your client is an infringer?

Answer 119

Identify the possible infringers and whether they are directly or indirectly infringing the patent

Consider amicable options:
- take a licence
- purchase the product or service
- cross licence
….in return for not bringing any action for previous infringement

Check patent is granted and in force (the patentee cannot bring infringement actions in the UK until a patent is granted and the patent must still be in force)

An alleged infringer can view an unpublished patent

Check whether the infringer is a prior user. Check if they have documentation that may act as prior art.

Request a declaration of non-infringement from the patentee, and if they do not co-operate, from the Comptroller or court

Request an opinion on validity and infringement of the patent from the UKIPO

Offer a settlement
If a claimant recovers less than what was offered prior to proceedings, they pay full costs (if in a weak position as an infringement and have no alternative, if payment looks inevitable)

Carry out a prior art search against the patent

Consider filing third party observations if they know of details that may affect grant of the patent.
The patentee has more scope to amend before grant so consider waiting and bringing revocation or opposition proceedings later

For an EP patent, check whether currently in the opposition period and if so, file an opposition

For a UK patent, bring revocation proceedings

Consider what amendments the patentee could make to maintain their patent in a form that would still read onto client’s activities

Does the patentee have patents in other jurisdictions which could affect the client’s activities? Check for equivalents in other jurisdictions.

Question 120

What may restrict damages?

Answer 120

• Innocent infringement - damages or account of profits are not awarded against a defendant who can prove they were unaware and had no reasonable grounds to suppose the patent existed and was in force at the time of the infringement

Mere application of the word “patented” to a product is not enough to confer awareness, unless in conjunction with the patent number or a web link

• Infringement during the grace period - damages are discretionary for infringement during the grace period.

Question 121

What is taken into account when considering damages for a patent that has been amended?

Answer 121

a) at the date of infringement, whether the defendant knew or had reasonable grounds to know that s/he was infringing

b) whether the patent as published was prepared in good faith and with reasonable skill and knowledge (didn’t ignore art)

c) whether the current proceedings are brought in good faith

Typically damages are not awarded for infringements prior to amendment of an infringed claim, unless the court/Comptroller is satisfied that the claim was originally filed in good faith (didn’t ignore art) and the infringement fell within the scope of the claim in each form

Question 122

When should you amend to restore validity?

Answer 122

Amend as early as possible

Post-grant, it is generally preferable to amend under s27 rather than s75 as there is generally more freedom

Question 123

What will the court or Comptroller take into when awarding damages for infringement of a partially valid patent?

Answer 123

a) whether the infringer knew or would reasonably suspect that they were infringing
b) whether the patent was framed in good faith and with reasonable skill and knowledge amended when aware of relevant prior art
c) whether the infringement proceedings were brought in good faith (did the proprietor believe in the validity of the patent)

Relief may be conditional on amending under s75 to recover the partial validity

Question 124

Prior Use

Answer 124

A person in the UK who, before the priority date…

…in good faith…

…did an act that would infringe the patent if it had been done in force…

or

…made serious and effective preparations to do so…

…may continue to do so…

but cannot licence others to do so.

If the act or preparations was done in the course of a business, the right to continue may be used to authorise partners in the business and be assigned or bequeathed as part of the business.

Consider whether prior use could act as prior art

Continue assumes that the preparations are ongoing. A pause in the preparations may suggest they are no longer serious or effective

Question 125

What is a certificate of contested validity

Answer 125

If, during court/Comptroller proceedings, the patent is contested but found to be wholly or partially valid, a certificate may be awarded.

Any subsequent proceedings that unsuccessfully contest validity is entitled to costs from the other party on an ‘indemnity’ basis - i.e. also paying the reasonable legal costs of the proprietor.

Question 126

Can co-owners initiate infringement proceedings?

Answer 126

Yes. Co-owners can initiate infringement proceedings. The other co-owners must be made party to proceedings but are not liable for costs unless they actively take part.

Question 127

Can exclusive licensees initiate infringement proceedings?

Answer 127

Yes. An exclusive licensee can initiate infringement proceedings after the date of the licence.

Damages/relief takes account of the exclusive licensee’s losses.

The proprietor is made a party to proceedings but is not liable for costs unless they take part.

An exclusive licensee also excludes the patent proprietor in the relevant jurisdiction

Question 128

Can a sole licensee bring infringement proceedings?

Answer 128

No. A sole licensee may be the only licensee but does not exclude the patentee and cannot bring proceedings by themselves.

Question 129

What happens if a patent is infringed before a transaction is registered?

Answer 129

Where a transaction occurs and the patent is infringed before the transaction is registered the court or Comptroller will not award costs for infringement proceedings unless:

a) the transaction was registered within 6 months of the transaction

or

b) it can be proved to have been registered as soon as practicable thereafter

Question 130

What are the conditions for suing for provisional infringement?

Answer 130

Proceedings are begun after the patent has granted

The act would infringe the claims as originally published as well as the final granted patent

Publication of the application must be in English

*Consider sending the infringer a translation of the published application.

Consider requesting early publication*

Question 131

What will the court consider when evaluating damages for provisional infringement?

Answer 131

Whether it would have been reasonable to expect that infringement would eventually occur given the published contents of the application.

Question 132

When does a communication contain a threat of infringement proceedings?

Answer 132

If its recipient would reasonably understand that:

a) a patent or published application exits and

b) someone intends to bring proceedings in respect of an act done, or which would be done in the UK

Question 133

When is a threat of infringement proceedings an actionable threat?

Answer 133

A threat of infringement proceedings is actionable by any person aggrieved by the threat

as long as the threat is not in respect of an act of making or importing a product for disposal or using a process

or in respect of intending to perform such an act

and the threat was not made to made to a person who has performed or intends to perform such an act e.g. to a manufacturer, importer, or user of a process

provided it was not made in a permitted communication

Question 134

What are examples of permitted purposes? (threats)

Answer 134

Giving notice that a patent or published application exists

Discovering whether or by whom a patent or published application has been infringed

Giving notice that a person has a right in or under a patent or published application when a third party’s awareness of that right may be relevant to any future proceedings.

Question 135

What are not permitted purposes?

Answer 135

a) requesting a person ceases commercial activities in relation to a product or process
b) requesting a person delivers up or destroys a product
c) requesting a person gives an undertaking relating to a product or process

Question 136

What are the remedies for an actionable threat?

Answer 136

a) a declaration that a threat was unjustified
b) an injunction against continued threats and/or
c) damages in respect of any loss sustained by the aggrieved party as a consequent of the threats

Question 137

What are defences for an actionable threat?

Answer 137

It is a defence for the threatener to show that the action for which proceedings were threatened does (or would if done) constitute infringement of the patent or published application, once granted;

or to show that despite taking reasonable steps, the threatener has failed to identify who has committed the relevant act, and notified the recipient of the steps taken before or when making the threat (e.g., if they made it clear to the recipient that they were seeking a different, unknown infringer but only if reasonable attempts to find the primary infringer have filed and you notify the secondary infringer of your efforts)

Question 138

What happens if a professional advisor is instructed to send an actionable threat

Answer 138

The professional advisor is not liable if they are acting on the instructions of the threatener and identifies that threatener in the communication.

They have the burden of proving this requirement was met.

Question 139

What should you consider as the aggrieved party? (threats)

Answer 139

Ensure proof of the threat is available

Ask the client to prepare a submission explaining how/why they are aggrieved (e.g. loss of business/clients due to circulation of threat)

Question 140

When may a declaration of non-infringement be ordered?

Answer 140

A declaration that an act does not or a proposed act would not infringe can be ordered by the court providing:

a) the person seeking the declaration has already written to the proprietor requesting acknowledgement of their declaration and providing full particulars of their activities and

b) the proprietor has refused or failed to give any acknowledgement

The Comptroller can also make such a declaration but if in doing so they find the patent invalid, this does not bind the court in any future infringement proceedings

Question 141

What are the grounds for revocation?

Answer 141

a) lack of patentability
b) lack of entitlement
c) and insufficiently enabling description
d) added matter
e) a broadening amendment post grant - extending protection

Question 142

Who may make an application for revocation through lack of entitlement?

Answer 142

Only be a person with a proprietary interest

Question 143

When must an application for revocation through lack of entitlement be made by?

Answer 143

The application for revocation by lack of entitlement must be made by the 2nd anniversary of the date unless it can be shown that the current proprietor knew they were not entitled at grant.

Question 144

What post grant amendment options does a proprietor have for an EP(GB)?

Answer 144

Amendment under s27 or s75 at the UKIPO, and central limitation at the EPO

Question 145

When may the Comptroller continue revocation proceedings?

Answer 145

If the original applicant drops out if it is considered to be in the public interest.

Question 146

When is revocation effective from?

Answer 146

Revocation is fully retroactive

A consequence of revocation may be that licensees sue for a refund of the license fees

Question 147

What are the grounds of opposition for an EP?

Answer 147

a) lack of patentability

b) lack of sufficiency

c) added matter

Not entitlement - for entitlement for EP(GB) use s37, s12 in conjunction with Art 61 EPC (entitlement in EPC)

Question 148

When should you amend a granted patent to restore validity?

Answer 148

Partial validity can affect damages so consider amending s27 first (before asserting a patent and inviting a revocation action) if you think a claim is currently invalid. If you don’t amend it this may be interpreted as bad faith.

Balance this against any need to act quickly, e.g. when seeking an interim injunction

Question 149

What happens if after grant, a prior art document denies novelty by virtue of s2(3)?

Answer 149

The Comptroller may revoke the patent.

The proprietor can object and amend if possible (no added matter, no broadening amendment)

Question 150

What happens if the Comptroller issues an opinion that a patent is not novel or inventive

Answer 150

They may revoke the patent after the period for requesting a review has elapsed or any subsequent appeal has occurred

The proprietor can object and amend if possible (no added matter, no broadening amendment)

Question 151

What should you consider if a granted GB is replaced by an equivalent EP(GB) e.g. to avoid double patenting?

Answer 151

Any licence or assignment of the granted GB would lapse and would likely need to be replicated for the new patent.

Question 152

What are proceedings in which validity may be put at issue?

Answer 152

a) infringement proceedings
b) actionable threat proceedings
c) declarations of non-infringement
d) revocation
e) disputed crown use

Question 153

When can validity proceedings be stayed?

Answer 153

If there is a parallel opposition proceeding at the EPO

Question 154

What can a validity or infringement opinion be on?

Answer 154

a) whether an act is or would be an infringement of the patent
b) whether or to what extent the patent lacks novelty or inventive step
c) whether the patent provides a sufficiently enabling disclosure
d) whether a patent application contains added subject matter
e) whether a claim in a granted patent has been broadened
f) whether a supplementary protection certificate is invalid

Question 155

What is the effect of validity or infringement opinions?

Answer 155

They are non-binding

Question 156

What happens when someone requests a validity or infringement opinion?

Answer 156

Requests are noted in the register

Anyone may file observations on any issues raised by the request within 4 weeks of advertisement in the register

Copies of the observations are sent to the patentee and requester within the 4 weeks

The recipients may make observations within a further 2 weeks

The patentee, requester and observers get a copy of the opinion

Requests can be withdrawn

For opinion requests resulting in a negative opinion the UKIPO can start the process of revoking a patent in clear cut cases, after the patentee has had the opportunity to apply for a review of the opinion

Question 157

Who can request a review of an opinion?

Answer 157

Patentees or exclusive licensees

Question 158

When may an opinion be reviewed?

Answer 158

If someone applies for a review of an opinion within 3 months from issue of opinion…

…and no other proceedings have decided the issue under review

Question 159

What are grounds for a review?

Answer 159

a) an opinion wrongly concludes that a patent is wholly or partially invalid

b) an opinion wrongly concludes non-infringement based on its interpretation of the specification

Question 160

What is the outcome of a review of an opinion?

Answer 160

The opinion is either set aside or they are not. A new opinion is not issued

Question 161

What happens when a request of a review of an opinion is filed?

Answer 161

The request is advertised in the OJ

Anyone may file observations on issues raised by the request within the later of 4 weeks from advertisement or two months from issue of the opinion

Copies of observations are sent to the patentee and requester and the recipients may make observations within the later of 4 weeks from advertisement or 2 months from issue of the opinion.

Question 162

S75 - Amendment during revocation or infringement proceedings

Answer 162

Proprietor must request in writing…

…identifying the proposed amendment…

…and giving a reason for it

No added matter

No broadening amendments

Amendment will be advertised in the OJ

May be opposed

Amendments are retroactive to date of grant

If an EP(GB) was originally published in another language, provide a translation of the original and amended portions of text

If patent is an EP(GB) consider EPO central amendment

Question 163

What does ‘no added matter’ mean?

Answer 163

Can only amend within the limits of what a skilled person would have derived directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the document as filed.

Question 164

What renewal fees are paid if an EP(GB) grants 4 or more years after its filing date

Answer 164

A renewal fee is payable to the UKIPO but not in respect of any period prior to the grant date - no back payment or duplication with EPO renewal fees,

Question 165

What is the authentic text of EP patents?

Answer 165

The text in the language of proceedings

For GB domestic purposes it is the GB translation of a FR or DE language text if this confers narrower protection, except for revocation proceedings

Question 166

What happens if a translation error results in a narrower GB protection than that of the granted EP patent in the language of proceedings?

Answer 166

A corrected translation can be supplied and published, but the now wider protection conferred is no retroactive.

People acting in good faith who only infringe the wider coverage can continue working the invention

Question 167

When can an EP(GB) application be converted to a UK application

Answer 167

If the application was not received by the EPO within 14 months of priority (e.g. due to a PCT receiving office error) provided:

The applicant requests conversion within 3 months from notification of loss directly to the UKIPO, pays the application fee and if necessary, translates the application into English within 2 months

OR

Such a request is relayed from another patent office of an EP convention country within 20 months of priority and the applicant then pays the application fee and if necessary translates the application into English within 4 months

Question 168

What is the effect of a converted EPO application?

Answer 168

A converted application keeps the filing date it would have received from the EPO

Any corresponding documents filed with the EPO are treated as filed with the UKIPO

Question 169

When can the UK court/comptroller determine entitlement questions:

a) other than employer-employee questions

Answer 169

a) If either the applicant has their residence or principal place of business in the UK or the other party has their residence or principal place of business in the UK and the applicant does not have a residence or principal place of business is any state that is signatory to the EPC protocol on recognition, and providing neither part has agreed in writing to submit to the jurisdiction of a different state

Question 170

When can the UK court/comptroller determine entitlement questions:

b) employer-employee questions

Answer 170

If either the employee is mainly employed in the UK or the employer has a place of business in the UK to which the employee is attached, providing the parties have not agreed in writing to submit to the jurisdiction of a different state.

Question 171

When is the international phase of a PCT

Answer 171

From PCT filing until 30 months from priority

Question 172

When does the national phase begin?

Answer 172

When:

a) the 31 month priority period expires and (if needed) an English translation is filed with the UKIPO

or

b) a request for early entry into national phase and an English translation are filed with the UKIPO

and the national fee is paid

…otherwise the application is considered withdrawn

Question 173

When is the search fee, exam fee and declaration of inventorship due for a PCT(GB)?

Answer 173

Up to 2 months after entry into national phase if later than normal deadline

Question 174

Can you delay entry into the national phase?

Answer 174

Yes, by 2 months using R108

This also delays the deadline for filing national fee and any translations

Reinstatement may be available for applications deemed withdrawn due to unintentional failure to meet the requirement for GB national phase entry

Question 175

What is the reversal of the burden

Answer 175

If a patented process creates a new product, production of the same product by an unauthorised party is prima facie infringement of the process unless it can be proven to the contrary

Question 176

What happens if some falsely claims that a product they sell is patented

Answer 176

They are liable for a fine of up to £1000

allows for reasonable period to sell marked stock and change marketing literature

Same if a person falsely claims a product they sell has a corresponding patent application when the application has been withdrawn or refused.

Question 177

How should you request a correction of an error?

Answer 177

Request in writing
Specify the correction to make

In the specification, the correction should be obvious to make (immediately evident that nothing else could have been intended)

Non-obvious errors in other application documents and forms can be corrected

unless it is due to corruption during electronic transmission

If the correction is unobjectionable, it will not be advertised in the OJ

The correction will be advertised in the OJ if related to erroneous withdrawal of the application

Anyone can request corrections of errors under R105

Question 178

What happens if there is an irregularity of procedure before the UKIPO?

Answer 178

The Comptroller may correct for any irregularity of procedure before the UKIPO if they think fit

Extensions of due dates can only be allowed if the UKIPO contributed wholly or in part to the irregularity

(Any length of extension may be granted)

Question 179

What is the effect of resuscitation of a withdrawn application?

Answer 179

Where a request was made to correct an error or mistake in withdrawing an application the effect is as follows:

If the Comptroller published notice of a request to correct the error then any continuation or a repetition of an earlier infringement is still an infringement

If the Comptroller published notice of a request to correct the error but between the date of withdrawal and the date of notice a person:

a) began in good faith an otherwise infringing act
or
b) made in good faith serious and effective preparations to do so

then they have a right to continue

but they cannot licence this right.

If the otherwise infringing act or preparations to do so was in the course of business, the person may authorise the partners in the business to carry out the act and assign or bequeath the right as part of the business

Any product made as a result of this is free to use it as if from the patentee

Request resuscitation asap to minimise 3rd party rights

Question 180

What extension is available for time limits specified by the Comptroller?

Answer 180

An extension under s117B

The applicant or proprietor must request in writing…

…within 2 months of the expiry of the missed time limit

The extension lasts the earlier of:

2 months or
The end of the compliance period

No form or fee

Reinstatement excludes errors in the s117B process. This is because failure to reply to the Exam report renders the application dormant, not withdrawn. Still have the Rule 30 period to get it in order, but this will be discretionary if both the reply and s117B deadline were missed

Question 181

What extensions are available for some statutory deadlines

Answer 181

Extension under R108(2)

**2 month as of right ** extension
File form pay fee within 2 months of missed deadline

The Comptroller may allow a further discretionary extension under R108(3).

File form. File evidence as to why the further extension should be granted. Fee payable if extension is granted

Must request further discretionary extension within 2 months from missed deadline (if foresee that as of right extension won’t be long enough)

Extension limited to 2 months??

Question 182

What happens if someone is notified that the applicant will bring infringement proceedings for an unpublished patent application

Answer 182

They can request information/ inspect documents relating to the application

Question 183

What are the limitations of product by process claims?

Answer 183

Product by process claims are not limited by process features.

Question 184

When could an interrupted day occur?

Answer 184

When there is an interruption to normal operation at the UKIPO

When there is an interruption to the normal operation of postal services in the UK

Question 185

What happens when there is an interrupted day?

Answer 185

Certification appears in the OJ

Deadlines falling on an interrupted day are extended to the next uninterrupted an open day

Question 186

What happens if there is a delay in or failure of a communication service?

Answer 186

The Comptroller will extend any period of time in the act or rules when satisfied that the failure to meet a deadline was wholly or mainly attributable to a delay in or failure of a communication service *e.g. post, courier, email

Such an extension is made after notifying the parties concerned and subject to any conditions directed by the Comptroller

The communication service should be external to the applicant - a failure by one’s own email server may not fall under R111.

The hearing officer may use the balance of probabilities to determine whether a postal delay has occurred.

Question 187

What is the Actavis test?

Answer 187

i. Does the variant achieve substantially the same result in substantially the same way

if yes, then…

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?

If yes, then…

Would the reader have concluded that the patentee intended strict compliance with the literal meaning of the claims was an essential requirement of the invention?

If no, the variant infringes.

Question 188

Equivalents (EPC)

Answer 188

For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Question 189

What are supplementary protection certificates?

Answer 189

No extensions of a patent, a separate right that provides similar protection for inventions that are subject to regulatory approval that make take an appreciable portion of the patent’s life to complete.

Protection only extends to the embodiment of the invention (specific product) for which regulatory approval is obtained

Two types, one for medicines and one for plant protection products

Question 190

How should you apply for a supplementary protection certificate?

Answer 190

Apply for a certificate within the later of:

6 months of receiving authorisation to put the product on the market (if patent is in force)

or

6 months of grant

Pay an application fee and cumulative renewal fees for the duration of the SPC in advance of it coming into effect. There is a 6 month grace period for this cumulative fee.

Maximum term is 5 years - term is less of 5 years and the period between the date of lodging the patent application and the date of product authorisation, minus 5 years.

If a supplementary protection certificate is not granted until after the original patent has expired then intervening rights are possible.

Question 191

What should you consider when considering whether a repair consists of making the article?

Answer 191

i - is the part replaced such a subsidiary part of the patented article that its replacement, when required does not involve making a new article?

ii - does the replaced part have a significant;y lower life expectancy than the retained part? Would one anticipate replacing the replaced part several times during the life of the retained part?

iii - Is the component easily replaceable?

iv - Does the replaced part include any aspect of the inventive concept?

i.e. is the replaced part a freestanding item of property that does not include, or relate to, the inventive concept?