Patents - Infringement Flashcards
What do Article 69(1) EPC and its Protocol (s.70(1) PA) say regarding the extent of protection of a European Patent, as summarised in Virgin Atlantic v Premier Aircraft [2009] EWCA Civ 1062?
(1) Extent of protection is determined by the claims.
(2) The description and drawings shall be used to interpret the claims.
(3) This means that the claims are to be construed purposively, with the inventor’s purpose being ascertained from the description.
(4) Thus, the description is used not only to resolve ambiguities in the claims but to help construe their meaning.
What are the two infringement questions in Eli Lilly v Actavis [2017] UKSC 48?
(1) Does the variant infringe as a matter of normal interpretation? (cf Kirin-Amgen)
(2) Does the variant nonetheless infringe because it varies from the invention in immaterial ways?
As explained in Kirin-Amgen v HMR [2004] UKHL 46, what is purposive construction?
(1) It’s understanding what a reasonable prson to whom the utterance was addressed would have understood the author to be using the words to mean.
(2) The notional addressee is the person skilled in the art,
(3) who reads the document in light of common general knowledge of the art, and
(4) who assumes that the document’s purpose is to describe and demarcate an invention.
In Eli Lilly v Actavis [2017], what are the three questions to determine whether a variant falls within the extent of the invention?
(1) Does the variant achieve the same result in substantially the same way as the invention?
(2) Would the person skilled in the art at the priority date, knowing that the variant achieves the same result as the invention, that it does so in substantially the same way as the invention?
(3) Would the reader of the patent have concluded that the patentee nevertheless intended that strict compliance with the literal meaning of the claims was an essential requirement of the invention?
According to s60(1)(a) PA 1977, what acts constitute infringement of a patent covering a product?
M’Douki
M ake D ispose of O ffer to dispose of U se K eep I mport
in the United Kingdom, without the consent of the proprietor of the patent.
According to s60(1)(b) PA 1977, what acts constitute infringement of a patent covering a process?
(1) Use or
(2) Offer for use when knowing (or would be obvious to a reasonable person) that its use there without the consent of the proprietor would infringe.
in the United Kingdom.
According to s60(1)(c) PA 1977, what acts constitute product-by-process infringement?
(1) For a product obtained directly from a process,
(2) Douki
D ispose of O ffer to dispose of U se K eep I mport,
in the United Kingdom.
According to s60(2) PA 1977, what is indirect infringement?
(1) Supplying or offering to supply,
(2) to someone not entitled to work the invention
(3) means, relating to an essential element of the invention, for putting the invention into effect,
(4) when he knows (or would be obvious to a reasonable person) that the means are suitable for putting the invention into effect, and
(5) are intended to put the invention into effect in the United Kingdom.
What is the exception to indirect infringement in s60(3) PA 1977?
(1) If the supply or offer to supply is of a staple commercial product,
(2) unless the supply or offer is made for the purpose of inducing the person supplied to do an act covered by s60(1).
According to s69(1) PA 1977, what acts infringe the rights conferred by publication?
If the relevant act would infringe the patent as granted and any claim in the patent application in the form immediately before the preparations for the application were completed.
According to s60(5) PA 1977, what acts are allowable?
Acts which…
(a) are done privately and non-commercially
(b) are done for experimental purposes relating to the subject-matter of the invention
(c) extemporanous preparation
(d) temporary visiting ship or aircraft
(e) use by a farmer of the product of his harvest for propagation on his own holding, if there had been an original sale of plant propagating with the patent proprietor’s consent.
According to s64(1) PA 1977, what rights does a prior user have?
(1) If a person, before the priority date of the patent
(2) and in good faith
(3) does or makes effective and serious preparations to do
(4) an infringing act,
(5) he has the right to do the act.
(4) before the priority d
In American Cyanamid v Ethicon [1975] AC 396, what criteria must be fulfilled in order for an interim injunction to be granted?
(1) There needs to be a serious question to be tried.
(2) The balance of convenience, including adequacy of damages, must lie in favour of the claimant.
Which approaches are used to estimate damages?
(1) Lost sales
(2) Lost licenses
(3) User principle
In s39 PA 1977, under what circumstances do an employee’s invention automatically belong to his employer?
(a) if it was made in the course of his normal duties or duties specifically assigned to him, and the circumstances in both cases are such that an invention might reasonably be expected to result from the carrying out of his duties, or
(b) if the invention was made in the course of the duties of the employee, and because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of his employer’s undertaking.
