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IP > Patents - Statute Sections > Flashcards

Patents - Statute Sections Flashcards

1
Q

PA1977 S1(1)

A

A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say:

  • the invention is new;
  • it involves an inventive step;
  • it is capable of industrial application;
  • the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A

and references in this Act to a patentable invention shall be construed accordingly.

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2
Q

PA1977 S1(2)

A

The following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -:

  • a discovery, scientific theory or mathematical method;
  • a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
  • a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
  • the presention of information;

but the following provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

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3
Q

PA1977 S1(3) and S1(4)

A

(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality
(4) For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it

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4
Q

PA1977 S2(1)

A

An invention shall be taken to be new if it does not form part of the state of the art

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5
Q

PA1997 S2(2)

A

The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.

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6
Q

PA1977 S2(3)

A

The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say—

(a) that matter was contained in the application for that other patent both as filed and as published; and
(b) the priority date of that matter is earlier than that of the invention.

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7
Q

PA1977 S2(4)

A

(4) For the purposes of this section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either—
(a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person—
(i) from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or
(ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it;
(b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor; or
(c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.

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8
Q

PA1977 S3

A

An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).

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9
Q

PA1977 S4A

A

(1) A patent shall not be granted for the invention of—
(a) a method of treatment of the human or animal body by surgery or therapy,

or

(b)a method of diagnosis practised on the human or animal body.

Paraphrase of remainder of section:

(2) Does not apply to invention consisting of substance or composition for use in any such method
(3) Invention consisting of substance or composition for use in any such method shall not prevent invention being taken as new if any such method does not form part of the state of the art
(4) Ditto for specific use

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10
Q

PA1977 S7

A

(1) Any person may make an application for a patent either alone or jointly with another
(2) A patent for an invention may be granted—
(a) primarily to the inventor or joint inventors;
(b) to any person or persons entitled because of enactment (i.e. statute ), rule of law, foreign law, treaty, international convention, or enforceable term in contract entered with inventor prior to making of invention (paraphrase)
(c) succesor(s) in title of above (paraphrase)

and to no other person.

(3) Inventor/joint inventor refer to actual deviser(s) of invention (paraphrase)
(4) Rebuttable presumption that applicant is entitled (paraphrase)

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11
Q

PA1977 S15(1)

A

(1) Subject to the following provisions of this Act, the date of filing an application for a patent shall be taken to be the earliest date on which documents filed at the Patent Office to initiate the application satisfy the following conditions—
(a) the documents indicate that a patent is sought;
(b) the documents identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and
(c) the documents contain either—
(i) something which is or appears to be a description of the invention for which a patent is sought; or
(ii) a reference, complying with the relevant requirements of rules, to an earlier relevant application made by the applicant or a predecessor in title of his.

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12
Q

PA1977 s20B(4)

A

If the application has been published under section 16 above before its termination and, after the termination and before publication of notice of the request for its reinstatement, a person gains third party rights to use the invention (i.e. prior user rights).

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13
Q

PA 1977 s23

A

(1) Subject to the following provisions of this section, no person resident in the United Kingdom shall, without written authority granted by the comptroller, file or cause to be filed outside the United Kingdom an application for a patent for an invention [F45if subsection (1A) below applies to that application,] unless—
(a) an application for a patent for the same invention has been filed in the Patent Office (whether before, on or after the appointed day) not less than six weeks before the application outside the United Kingdom; and
(b) either no directions have been given under section 22 above in relation to the application in the United Kingdom or all such directions have been revoked.

(1A)This subsection applies to an application if—

(a) the application contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or
(b) the application contains information the publication of which might be prejudicial to the safety of the public.]
(2) Subsection (1) above does not apply to an application for a patent for an invention for which an application for a patent has first been filed (whether before or after the appointed day) in a country outside the United Kingdom by a person resident outside the United Kingdom.
(3) A person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be liable—
(a) on summary conviction, to a fine not exceeding £1,000; or
(b) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.

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14
Q

PA 1977 s25(1)

A

(1)A patent granted under this Act shall be treated for the purposes of the following provisions of this Act as having been granted, and shall take effect, on the date on which notice of its grant is published in the journal and, subject to subsection (3) below, shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.

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15
Q

PA1977 s33

A

Effect of registration on rights on patents

(1) Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction, instrument or event to which this section applies shall be entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction, instrument or event to which this section applies if, at the time of the later transaction, instrument or event—
(a) the earlier transaction, instrument or event was not registered, or
(b) in the case of any application which has not been published, notice of the earlier transaction, instrument or event had not been given to the comptroller, and
(c) in any case, the person claiming under the later transaction, instrument or event, did not know of the earlier transaction, instrument or event.
(2) Subsection (1) above shall apply equally to the case where any person claims to have acquired any right in or under a patent or application for a patent, by virtue of a transaction, instrument or event to which this section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction, instrument or event to which this section applies.
(3) This section applies to the following transactions, instruments and events:—
(a) the assignment or assignation of a patent or application for a patent, or a right in it;
(b) the mortgage of a patent or application or the granting of security over it;
(c) the grant, assignment or assignation of a licence or sub-licence, or mortgage of a licence or sub-licence, under a patent or application;
(d) the death of the proprietor or one of the proprietors of any such patent or application or any person having a right in or under a patent or application and the vesting by an assent of personal representatives of a patent, application or any such right; and
(e) any order or directions of a court or other competent authority—
(i) transferring a patent or application or any right in or under it to any person; or
(ii) that an application should proceed in the name of any person;

and in either case the event by virtue of which the court or authority had power to make any such order or give any such directions.

(4)Where an application for the registration of a transaction, instrument or event has been made, but the transaction, instrument or event has not been registered, then, for the purposes of subsection (1)(a) above, registration of the application shall be treated as registration of the transaction, instrument or event.

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16
Q

PA 1977 s36

A
  • Rights of co-owners
  • Each co-owner is entitled to work the patent without the consent of or need to account to the other or others
  • Each co-owner is not permitted to (without the consent of the other co-owner(s)):
    • amend the specification of the patent or apply for such an amendment to be allowed or for the patent to be revoked, or amend the specification of the patent or apply for such an amendment to be allowed or for the patent to be revoked, or
    • grant a licence under the patent or assign or mortgage a share in the patent
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17
Q

PA1977 s39

A

(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if—
(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or
(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, 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 the employer’s undertaking.
(2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.

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18
Q

PA1977 s40

A

Employee may be awarded compensation under s40(1) where

  • an employee has made an invention which belongs to the employer for which a patent has been regarded, and
  • having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent for it is of outstanding benefit to the employer
  • it is just that the employee be given such compensation

Employee may be awarded compensation under s40(2) where:

  • a patent has been granted for an invention made by and belonging to an employee
  • his rights have since been assigned to the employer or an exclusive license granted to them
  • and the benefit derived by the employee is inadquate in relation to the benefit derived by the employer from the invention or patent for it (or both); and
  • it is just that employee receive additional compensation

Quote:

(1) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that—
(a) the employee has made an invention belonging to the employer for which a patent has been granted,
(b) having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer, and
(c) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer,

the court or the comptroller may award him such compensation of an amount determined under section 41 below.

(2) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that—
(a) a patent has been granted for an invention made by and belonging to the employee;
(b) his rights in the invention, or in any patent or application for a patent for the invention, have since the appointed day been assigned to the employer or an exclusive licence under the patent or application has since the appointed day been granted to the employer;
(c) the benefit derived by the employee from the contract of assignment, assignation or grant or any ancillary contract (“the relevant contract”) is inadequate in relation to the benefit derived by the employer from the invention or the patent for it (or both); and
(d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer in addition to the benefit derived from the relevant contract;

the court or the comptroller may award him such compensation of an amount determined under section 41 below.

19
Q

PA1977 s42

A
  • Contracts which diminish employees rights in the invention are not enforceable
20
Q

PA1977 s46

A
  • Relates to licenses of right
  • States that if an entry that licenses are available as of right then:
    • any person shall, at any time after the entry is made, be entitled as of right to a license under the patent on terms agreed with the proprietor or, in default of agreement, by comptroller
    • comptroller may order that the licence of a prior licence holder be exchanged, on their application, for a licence of right on terms so settled
    • if licence of right, then no injunction can be granted, and damages shall not exceed double the amount of licences
    • renewal fees are halved
  • Licencess may request proprietory take proceedings to prevent infringement and, if the proprietor refuses or neglects to so within two months, licensee may bring proceedings in their own name with proprietor as a defendant
21
Q

PA1977 S48A

A

Grounds for compulsory license where patent proprietor is a WTO proprietor are:

  • for product patents, a demand in the UK is not being met on reasonable grounds
  • that refusal of proprietor to grant a licence(s) on reasonable terms causes:
    • exploitation of another patented invention involving an important technical advance of considerable economic significance to be prevented or hindered
    • unfair prejudice to the establishment or development of commercial or industrial activities in the UK
  • conditions imposed on the grants of licenses etc. unfairly prejudice ditto

No order or entry shall be made for WTO proprietor’s unless:

  • applicant has made efforts to obtain a licence from the properietor on reasonable commercial terms and conditions; and
  • his efforts have not been successful within a reasonable period

Compulsory licence granted:

  • shall not be exclusive
  • shall not be assigned except with business
  • shall be predominantly for supply to UK
  • shall include conditions entitling proprietor to adequate renumeration
  • shall be limited in scope and in duration to the purpose for which licence is granted
22
Q

PA1977 s55

A
  • Government department and any person authorised in writing by a government department may perform any acts without consent of proprietor and these will not count as an infringement
23
Q

PA1977 S56(2)

A

In this Act, except so far as the context otherwise requires, “the services of the Crown” includes—

(a) the supply of anything for foreign defence purposes;
(b) the production or supply of specified drugs and medicines; and
(c) such purposes relating to the production or use of atomic energy or research into matters connected therewith as the Secretary of State thinks necessary or expedient;

and “use for the services of the Crown” shall be construed accordingly.

24
Q

PA1977 S60(1)

A

Infringement is:

(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; (knowledge requirement only applies to offering for use - statute is unclear!)
(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

25
Q

PA 1977 S60(2)

A

Definition of Secondary Infringement

a person infringes where he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

26
Q

PA1977 S60(5)

A

Defences to patent infringement:

  • private, non-commercial use
  • experimental purposes relating to the subject-matter of the invention
  • it consists of the extemporaneous preparation in a pharmacy of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consists of dealing with a medicine so prepared;
  • temporary/accidental ship/aircraft/hovercraft/vehicle defences
  • use by a farmer of product of his harvest for propragation or multiplication by him on his own holding where there has been a sale by patent proprietor of plant propagating material to farmer with consent for agricultural use
  • use by a farmer of animal/animal reproductive material for agricultural purpose following a sale to farmer by proprietor of patent of breeding stock or other animal reproductive material containing patented invention
  • study/test/trial required to get medical authorisation
27
Q

PA1977 S61

A

Remedies available for infringement in court are:

  • injunction
  • delivery up/destruction
  • damages
  • account of profits
  • declaration of validity and infringement

Remedies available at comptroller:

  • damages
  • declaration of validity and infringement
28
Q

PA1977 s64

A

Prior user rights

(1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention—
(a) does in good faith an act which would constitute an infringement of the patent if it were in force, or
(b) makes in good faith effective and serious preparations to do such an act,

has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act.

(2) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may—
(a) authorise the doing of that act by any partners of his for the time being in that business, and
(b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

29
Q

PA1977 S70

A

A communication is threat if a reasonable person in the position of a recipient would understand from the communication that:

  • a patent exists, and
  • a person intends to bring proceedings against another prson for infringement of the patent by
    • an act done in the UK, or
    • an act which, if done, would be done in the UK
30
Q

PA1977 s70A

A

A threat is not actionable if the infringement is alleged to consist of:

  • for a product invention, making a product for disposal or importing a product for disposal, or
  • for a process invention, using a process
  • or an act which, if done, would constitute one of these, or
  • is a threat in relation to any other infringement to a person who has done or intends to do the acts above, or
  • is contained in a permitted communication
31
Q

PA1977 s70B

A
  • A communication is a permitted communication if:
    • made for a permitted purpose
    • all information in relation to the threat is necessary for that purpose and the person making the communication believes it to be true
  • Permitted purposes are:
    • giving notice that a patent exists
    • discovering who is making/importing product for disposal, or using process
    • giving notice that a person has a right in or under a patent, where relevant to any proceedings that may be brought
      *
32
Q

PA1977 s70C

A

Remedies and Defences for Unjustified Threats

  • Remedies:
    • declaration that threat is unjustified
    • injunction against continuance of threat
    • damages for loss suffered by reason of the threat
  • Defences:
    • the act in respect of which proceedings were threatened constitutes or would constitute an infringement of the patent or
    • reasonable steps were taken to identify maker/importer of product/user of the process but one could not be identified and the person to who the threat was made was informed of these steps
33
Q

PA 1977 s74A

A

A patent proprietor or any other person may request the comprtroller to issue an opinion on a prescribed matter in relation to the patent.

Opinions are given in relation to infringement and/or validity of patent/SPC.

Not in section but relevant here - Following an opinion that a patent is invalid, the comptroller may revoke the patent under s73.

34
Q

PA1977 89A(3)

A

(3) The national phase of the application begins—
(a) when the prescribed period expires, provided any necessary translation of the application into English has been filed at the Patent Office and the prescribed fee has been paid by the applicant; or
(b) on the applicant expressly requesting the comptroller to proceed earlier with the national phase of the application, filing at the Patent Office—
(i) a copy of the application, if none has yet been sent to the Patent Office in accordance with the Treaty, and
(ii) any necessary translation of the application into English,

and paying the prescribed fee.

For this purpose a “copy of the application” includes a copy published in accordance with the Treaty in a language other than that in which it was originally filed.

35
Q

Article 53 EPC

A

European patents shall not be granted in respect of:

(a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
(c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

36
Q

Article 6 of Biotech Directive

A
  1. Inventions shall be considered unpatentable where their commercial
    exploitation would be contrary to ordre public or morality; however, exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation.
  2. On the basis of paragraph 1, the following, in particular, shall be considered unpatentable:
    (a) processes for cloning human beings;
    (b) processes for modifying the germ line genetic identity of human beings;
    (c) uses of human embryos for industrial or commercial purposes;
    (d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
37
Q

Article 4 of Biotech Directive

A
  1. The following shall not be patentable-
    (a) plant and animal varieties;

(b) essentially biological processes for the production of plants
or animals.

  1. Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.
  2. Paragraph 1(b) shall be without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process.
38
Q

Biotech Directive Article 5

A
  • Genes in humans not patentable
  • Genes isolated from human body or otherwise produced by technical process may be patentable even if the structure is identical to a natural element
  • Industrial application of sequence or partial sequence must be disclosed in application
39
Q

PCT Article 11(1)

A

The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.

40
Q

Landmines Act 1988 S2(2)

A

No person shall assist, encourage or induce any other person to engage in any conduct [to develop or produce an anti-personal mine]

On this basis, the patent office no longer grants patents for such devices

41
Q

PA1977 S62

A

Restrictions on recovery of damages for infringement.

No damages/account of profits against a defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for supposing that the patent existed, and the application of the word patent to a product is not enough without a number/internet link.

42
Q

PA1977 S68

A

Effect of non-registration on infringement proceedings.​

Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed before the transaction, instrument or event is registered in proceedings for such an infringement, the court or comptroller shall not award him costs or expenses unless—

(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.

43
Q

PA1977 S69

A

Rights Conferred by Publication

  • Applicant has from the date of publication and until the grant of the patent, the same rights as they would have had to bring proceedings before the court/comptroller for damages in respect of any act which would have infringed the patent
    • Despite explicit reference to damages, account of profits also available in principle - Spring Form Inc. v Toy Brokers
  • Cannot bring proceedings until patent has been granted and it must have been an act that would have infringed both the claims as published and as granted
44
Q

PA1977 78(7)

A

While this subsection is in force, an application for a European patent (UK) published by the European Patent Office under the European Patent Convention in French or German shall be treated for the purposes of sections 55 and 69 above as published under section 16 above when a translation into English of the claims of the specification of the application has been filed at and published by the Patent Office and the prescribed fee has been paid, but an applicant—

(a) may recover a payment by virtue of section 55(5) above in respect of the use of the invention in question before publication of that translation; or
(b) may bring proceedings by virtue of section 69 above in respect of an act mentioned in that section which is done before publication of that translation;

if before that use or the doing of that act he has sent by post or delivered to the government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done the act, a translation into English of those claims.

IP (6 decks)

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