Patents Short Answer Questions Flashcards
Gotta learn em all
What constitutes “services for the Crown” for the purposes of the Crown use provisions?
(x3)
s. 56(2) PA77 defines services to the Crown as including:
(a) the supply of anything for foreign defence purposes;
(b) the production or supply of specified drugs or medicines;
(c) purposes relating to the production or use of atomic energy.
s.59 PA77 extends use for Crown for any purpose during a period of emergency
Explain how “absolute novelty” is different to “relative novelty” and “local novelty”.
(x3)
Absolute novelty:
the state of the art comprises everything made available to the public anywhere in the world by means of written or oral description, by use, or in any other way, before the priority date of the application. Follows the library principle.
Relative novelty:
A publication in any country will destroy novelty, but use of the invention outside the country in which protection is sought does not form part of the state of the art.
Local novelty:
Any public use or publication of the invention before the priority date will not form part of the state of the art unless the use occurs in the country or the publication is available in the country.
What are the categories of subject matter excluded from patentability under s.1(2) PA77?
(x7)
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation;
(c) a scheme, rule, method of performing a mental act, playing a a game or doing business, or a program for a computer;
(d) the presentation of information;
The above exclusions only apply where the invention relates to that thing AS SUCH
When can a compulsory licence be granted in relation to a patent owned by a WTO proprietor under s.48A PA77?
(x2)
(a) where the patented invention is a product, that a demand for the product is not being met on reasonable terms;
(b) important technological or economic advances are prevented are hindered by the refusal to grant a licence for an invention;
(c) the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced by the refusal to grant a licence for the invention;
(d) the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced because of conditions imposed by the proprietor on the grant of a licence.
What are the four steps in the Pozzoli/Windsurfing approach?
x2
(1) Identify the notional skilled person and the relevant common general knowledge imbued upon him.
(2) Identify the inventive concept of the claim. If the inventive concept is not readily identifiable, construe it.
(3) What, if any, differences exist between the matter cited as part of the state of the art and the identified inventive concept of the claim?
(4) Viewed without knowledge of the invention as claimed, do these differences constitute steps that would have been obvious to the skilled person or do they require any degree of invention?
What defences may a person rely upon if that person is accused of improperly threatening somebody with a claim of patent infringement?
(1) Justification defence: where the rights holder can show that the act which is the subject of a threat is an infringing act or would be if carried out.
(2) A threat action cannot be brought if the alleged infringement consists of making or importing a product for disposal or of using a process.
(3) The rights holder was doing something that did not constitute a threat: providing factual information about the patent, making enquiries for discovering if the patent has been infringed, or making an assertion about the patent for the purpose of the enquiries.
(4) No primary actor can be found: okay to threaten an alleged secondary infringer if a primary actor (manufacturer or importer) cannot be found.
What, if anything, can be done where a person has failed to pay the renewal fee for a patent: (a) 2 months ago; (b) 15 months ago; (c) 30 months ago?
(a) 6 month grace period of s.25(4) means that if the fees are paid in the grace period, the patent is treated as if it never expired.
(b) The patent is treated as being terminated after the expiry of the grace period, but can be restored up to 13 months after the end of the 6 month grace period if the applicant can show that the fees were missed unintentionally. However, during this period of 13 months, third party rights are available.
(c) After 19 months there is no recourse unless there was a procedural violation from the patent office (19 month period otherwise inextensible).
On what grounds can the validity of a European patent (UK) be challenged?
(x2)
(i) The invention is not a patentable invention;
(ii) The patent was granted to a person who was not entitled to it;
(iii) The specification does not sufficiently disclose the invention;
(iv) There is added matter that extends beyond the scope of protection of the application as filed;
What formalities are needed to assign a European patent (UK) under English law?
(i) Must be in writing and signed on behalf of the assignor (unlike for EPO, the assignee does not need to sign);
(ii) There is not requirement to register an assignment, but failure to do so may have consequences in costs if not registered within 6 months of assignment in order to allow the party to claim future litigation costs and expenses.
When will third party rights exist under a patent (identify each of the cases)?
(i) Honest prior users acting in good faith have the right to continue using the invention in the manner done previously licences.
(ii) Third parties may have rights to practice inventions of patent applications which have been terminated and subsequently reinstated if they practised the invention in the time when the patent application was dead (i.e. between termination and reinstatement).
(iii) Third parties may continue practising an invention in a patent if the patent expired and was subsequently restored if they practised the invention in between expiry and restoration.
(iv) Resuscitated patent applications.
What restraints are there (if any) on a UK resident filing a PCT application at the International Bureau where the invention is: (a) a flea collar for cats; (b) a nuclear power system?
(x6)
In either case, under s.23 if there is information relating to military technology or if the information may be prejudicial to national security, then the person would have to file first with the UKIPO as the receiving office. They would then have to wait for written permission from the comptroller or 6 weeks from filing if no permission letter sent before filing in other countries.
For (a), it is almost entirely certain that neither the description or claims contain any restricted information. For (b), however, the invention is clearly directed to a matter of nation security, so should be filed first in the UK.
What limitations are faced by co-owners of patents but no sole proprietors?
(x7)
Each proprietor is entitled to work the invention without infringing and without having to account to the others.
Without permission of the other co-owners, a co-owner cannot:
(a) amend the spec or apply for an amendment to be allowed, or for the patent to be revoked;
(b) grant a licence under the patent or to mortgage a share of the patent.
When is an employee entitled to an invention as against an employer?
s.39 PA77 gives a ‘complete code’ for determining entitlement.
An invention will belong to an employer if:
(a) the invention was made in the course of the employees normal or specifically assigned duties and the invention was made in circumstances under which an invention might reasonably have been expected to have resulted; or
(b) an employee’s position and status within the organisation will be such that they will be taken to be under a special obligation to further the interests of the employer’s undertaking.
Employee inventions that fall outside these categories will belong to the employee.
What is the period of priority for a patent application under the Paris Convention and how does the Patent Law Treaty affect that period?
Paris: priority period is 12 months from the filing date of the first application for the same invention.
PLT: at least 2 months extra are provided in which to claim priority where the failure to file was unintentional. UK - 2 months, unintentional standard. EPO - 2 months, all due care standard.
When might a biotechnology invention be contrary to ordre public under Directive 98/44/EC (Patents Act 1977, Sch A2)?
(a) processes for human cloning;
(b) processes for modifying the germ line genetic identity of human beings;
(c) uses of human embryos for industrial or commercial purposes;
(d) modifying the genetic identity of animals which might cause them suffering without substantial medical benefit to man or animal.
What is a divisional application and when might it be filed?
A separate application which exclusively contains subject matter clearly and unambiguously derived from an earlier application such that the subject matter of the divisional does not extend beyond that of the earlier application. The priority date of the divisional is the same as that of the parent application. A divisional application cannot be made if the parent application has been granted, refused or withdrawn.
When will the rights in a patent be exhausted within the EU?
Under the doctrine of exhaustion, a patentee is unable to use a patent to prevent the further disposal of an article that has been placed on the market in the EEA with the patentee’s consent.
Furthermore, under the doctrine of implied licence, sale of a product implies a licence to keep, use and resell the product. If all parties in chain of supply are made aware of a limited licence preventing sale outside of the EEA, this may be enforceable to prevent export outside the EEA.
What is the test for sufficiency?
s.14(3) PA77: the spec shall disclose the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the art.
To assess sufficiency, we use a two stage test:
(1) ask whether the specification would enable the skilled person to put the invention into effect (Kirin-Amgen)
(2) Then ask whether the skilled person is enabled to put the invention into effect across the full range of the invention.
In the UK, the application needs to be sufficient at the date of filing.
In the EPO, the application needs to be sufficient at the time of publication.
What is ‘innocent infringement’ under s.62 PA77?
If an infringing user of a patented invention proves that, at the date of infringement, they were not aware or had no reason to believe that the patent existed, then they shall not be liable for damages or account of profits. They shall not be taken to have been aware of the patent if only the words “patent” or “patented” are applied to the product without also applying the relevant patent number.
What are the consequences of not registering the assignment of a patent in the UK?
Registered transactions take priority over unregistered transactions, even if the date of the unregistered transaction is earlier than the registered transaction.
If the patent is assigned without registration and is then infringed, the owner cannot claim damages unless the assignment is registered within six months of the assignment.
When is an application published under the EPC? And when will the rights conferred by publication come into being in the UK?
(x4)
Publication takes place 18 months after the priority date of the application.
The applicant can also request earlier publication.
If the publication is in English, the rights conferred by publication exist on publication. If not published in English, must file translation of the claims at the IPO to get rights conferred by publication.
When does an international application enter into the national phase: (a) in the UK; and (b) in Luxembourg?
The international phase lasts a minimum of 30 months from the priority date, except for states which opted to remain using the old time limit for Chapter I.
In the UK, the time limit for both Chapter I and II is 31 months from the priority date.
In Luxembourg, the time limit for Chapter I is 20 months (old limit) and 30 months for Chapter II.
It is also possible for the applicant to file an international application designating an EP regional phase, the EP application itself designating Luxembourg so that it effectively enters the national phase within 31 months if extra delay is required.
What is a licence of right and why might an inventor want to make such licences available?
(x4)
Any proprietor of a patent may apply for a licence of the patent to be available as of right such that any person is entitled to a licence of the patent.
An inventor may want to make a licence available as of right due to the renewal fees being halved (however if the licence of right is later taken down, then all renewal fees that would have been paid are due).
The inventor may also make a licence available as of right in order to advertise (due to the licence of right being published in the register) the invention and generate additional income from licensing if it has been difficult to find potential licensees.
They may also indemnify the proprietor against actions on grounds of anti-competitive behaviour.
What checks are performed by the receiving office under the PCT?
(1) The application is in a prescribed language.
(2) Whether the applicant does not obviously lack, for reasons of residency or nationality, the right to file an application at the receiving office.
(3) Check there is an indication that a request form has been filed.
(4) Check there is at least one designated state,
What is required the establish a date of filing under the PA77?
(x3)
s.15 PA77:
(a) documents that indicate that a patent is sought.
(b) documents that identify the person applying for a patent or that contain information sufficient to enable that person to be contacted by the patent office.
(c) documents that contain either: (i) something which appears to be a description of the invention for which the patent is sought; or (ii) a reference to an earlier application made by the applicant or a predecessor in title of his.
What are the remedies available to a claimant in infringement proceedings (a) before the Patents County Court; and (b) before the Comptroller?
(x6)
(a)
s. 61(1): (DADDI) injunction, delivery up or destruction, damages, account of profits, declaration of validity and infringement.
s. 61(2) Cannot award both damages and account of profits.
(b) s61(3) Comptroller can award only damages and declaration of validity and infringement.
When will can international application for a patent enter the national phase in the UK? And when would translations be required?
An international application enters the national phase in the UK 31 months from the priority date, or when the applicant expressly requests it early. The necessary fees must also be paid to enter the national phase.
Translations are required on entry into the national phase if the international application was not in an official language
What are the four requirements for a plant variety to be protected under the UPOV Convention (which is the same as the Plant Varieties Act 1997)?
(x3)
(DUNS) Distinct Uniform New Stable
What does Article 6 of Directive 98/44 on the legal protection of biotechnology provide?
(x6)
(1) Inventions are unpatentable where their commercial exploitation would be contrary to ordre public or morality, but not just because it is contrary to domestic law.
(2) The following in particular are unpatentable:
(a) processes for human cloning;
(b) processes for modifying the germ line genetic identity of human beings;
(c) uses of human embryos for industrial or commercial purposes;
(d) modifying the genetic identity of animals which might cause them suffering without substantial medical benefit to man or animal.
What is the term of a patent under the Patents Act 1977? And from what day is that term calculated?
(x5)
Term is 20 years from the date of filing of the application (not the priority date), subject to the payment of the necessary renewal fees.
What acts constitute the direct infringement of a patented product?
(x4)
For a product, it is an infringement if a person makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise.
What acts constitute the direct infringement of a patented process?
(x1)
For a process, it is an infringement for a person to use or offer to use the process in the when he knows or it would be obvious to a reasonable person in the circumstances that its use without consent of the proprietor would be an infringement of the patent.
It is also an infringement of a patented process to dispose of, offer to dispose of, use or import any product obtained directly by means of the process or keeps any such product for disposal or otherwise.
What is the time period for opposing the grant of a European patent and what are the grounds of opposition?
Time period = 9 months from grant of patent.
Grounds for opposition are:
(i) patentability (novelty, inventive step, industrial application);
(ii) added matter; or
(iii) sufficiency.
(NOT entitlement, clarity, unity or support).
What comprises the state of the art for the purposes of novelty and how does this differ from that used for inventive step?
(x7)
The state of the art comprises all matter which has at any time before the priority date of the application been made available to the public (whether in the UK or elsewhere), by written or oral description, by use or in any other way. The state of the art will also include matter contained in another patent application which was published on or after the priority date if the matter contained in the other application was in the application as filed and as published, and the priority date of that matter is earlier than that of the invention.
For inventive step, pieces of prior art may be mosaiced, while in novelty they may not.
What occurs during the “international phase” of an application under the Patent Cooperation Treaty?
(x2)
International phase begins when the application is filed at WIPO or a designated receiving office and ends at the entry into the national or regional phase.
During this phase, formalities are examined and an international search report is produced, together with a written opinion. The applicant may then amend the application, after which it is published.
Optionally, the applicant may choose to pursue a Chapter II application which gives a substantial examination.
What defences to patent infringement were introduced in the United Kingdom to give effect to the Biotech Directive (98/44/EC)?
Art 11 Biotech Dir: the sale or other form of commercialisation of plant propagating material to a farmer by the rights holder implies authorisation for the farmer to use the protected livestock for an agricultural purpose and to use the product of his harvest for propagation by him on his own farm..
When will an application be published and why is it relevant to infringement?
An application is published 18 months from the priority date of the application.
The rights conferred by publication then allow the applicant to sue infringing persons once the patent is granted where the infringing act takes place between publication and grant of the patent if would have been reasonable to expect that a patent would be granted.
What is the difference between German utility model protection and that for German patents?
(x6)
A utility model is registered about 6 to 8 weeks after filing, so effective protection is rapidly available.
Utility models are not available for methods.
Maximum term for a utility model is 10 years compared to 20 years for a patent.
Utility model applications have a 6 month grace period for disclosures made by the applicant; no such grace period is available for German patents.
Prior use use is relevant only within the territory of Germany.
Utility model applications are not examined before grant. Instead, validity is assessed before initiating an infringement action.
What restrictions, if any, would apply to a US applicant, using a UK based attorney, on filing an application at the European Patent Office for a new form of submarine engine?
The UK attorney, a UK resident subject to s23 PA77, would be obligated to first send the application to the UKIPO and request permission to file abroad. If permission is received, or 6 weeks has elapsed, then no further formalities are required. However, if communications are received from the security division of the UKIPO stating that the invention is subject to s.22 PA77, then filing abroad will be restricted.
Consideration would have to paid to the fact that the US applicant is also subject to the restrictions imposed by US law, that is, in the US, national security inventions must be filed first in the US if the invention was made in the US.
