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Law paper > Post Grant Procedures > Flashcards

Post Grant Procedures Flashcards

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1
Q

when is the first renewal date?

A

renewals are payable from the fifth year in advance on a granted patent therefore on the 4th anniversary of filing renewals become due if the patent is granted

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2
Q

if a renewal is not paid what date does the patent cease to have effect?

A

on the renewal date (the anniversary of filling not the end of the month)

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3
Q

When is the renewal period?

A

The renewal period is the three months before and including the anniversary of filing.

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4
Q

if the patent grants in or after the three month 4th year renewal period starts what is the renewal date?

A

The renewal date will be three months after the grant date

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5
Q

if the patent grants in or after the three month 4th year renewal period starts what is the renewal period?

A

The renewal date is three months from the grant date in this case and the renewal period is the threemonths preceeding and including the month in which the renewal date falls.

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6
Q

What form do you use to pay the renewal fee

A

PF12

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7
Q

What do you use PF12 for?

A

paying renewal fees

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8
Q

how long is the grace period for paying a rewnewal fee after the renewal period?

A

six months

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9
Q

what form is used to pay the renewal fee in the grace period

A

PF12 but including an applicable late fee.

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10
Q

What is the late fee if paying the renewal fee in the grace period?

A

There is no late fee in the first month and the fee is £24 in the second month and eccrues £24 per month thereafter

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11
Q

if the patent grants later than the second renewal fee is due (5th anniversary) what occurs

A

if the patent grants later than the second renewal fee is due (5th anniversary) on grant all the outstanding renewal fees must be paid.

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12
Q

If a UK(EP) patent is revoked and reinstated by the EPO and a renewal fee becomes due in this period what occurs?

A

The renewal fee becomes payable during a modified renewal period of 2 months from reinstatement R41A

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13
Q

What section deals with post grant amendment?

A

S27 voulentary and S75 during litigation

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14
Q

What does S27 deal with

A

Post grant amendment.

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15
Q

What effect do post grant amendments have?

A

The are retroactive to grant

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16
Q

What are the limitations on post grant amendments/

A

They can not broaden the scope of coverage

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17
Q

What does S26 deal with?

A

Granted patent immunity from Unity objections

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18
Q

Which section states a granted patent is immune from objections based on Unity?

A

S26

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19
Q

What is the process for amending a patent under S27 and S75

A

Make a request in writing
Identify the proposed amendment
Give reasons for this amendment

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20
Q

What section deals with restoration of a lapsed patent?

A

S28

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21
Q

What does S28 deal with?

A

restoration of a lapsed patent

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22
Q

what form is used for applying to restore a lapsed patent under S28

A

PF16

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23
Q

What is PF 16 used for?

A

Applying to restore a lapsed patent

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24
Q

When can a patent be restored

A

for 13 months after the end of the 6 month grace period

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25
Q

what will occur if a renewal fee has not been paid at the end of the extended period?

A

The patent will cease to have effect from the renewal date (anniversary of filing)
THEREFORE
third party rights start ecruing
AND
the comptroller must before a period of six weeks from the end of the extended period send notice to the proprietor of the patent stating:
The extended period has expired and bringing to attention S28 provisions
AND
the lapse of the patent will be published in the OJ

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26
Q

What should an application to restore a lapsed patent include?

A

PF16 and evidence that the non payment of the renewal fee was unintentional

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27
Q

What options does the applicant have if a request under S28 is denied?

A

If the request for restoration of a lapsed patent is denied the applicant can request a hearing with the comptroller within 1 month of the notice

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28
Q

if the S28 application on what form is not accompanied by evidence what will occur?

A

if no evidence the non payment of the renewal fee before the end of the extended period was unintentional was provided the comptroller will specify a period to supply it

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29
Q

what are the requirements of unintentional

A

The applicant not the agent must have not intended to allow the patent to lapse. Therefore, an error or misunderstanding can be sufficient - a change of mind after the grace period is not unintentional - however a change of mind during the grace period and then not renewing due to a misunderstanding is unintentional

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30
Q

What occurs if an application under S28 is successful

A

If an application to restore a lapsed patent is successful - The applicant must file a PF12 pay all outstanding fees in the prescribed time - normally 2 months

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31
Q

What is the effect of restoration of a patent under S28

A

The patent is restored anything done to the patent in the intervening period is valid.
AND
Any would be infringing acts committed in good faith or if serious and effective preparations to undertake such acts have been undertaken after the end of the extended period and before the publish of application to restore the patent the person doing so will be able to continue
they will not be able to assign or transfer this right however if the right is held within a business if the whole business is sold the right will move with the business. The right can also be transferred by inheritance.
Any person in reciept of an infringing item by disposal after the end of the extended period will be treated as if the product was disposed by the prioprietor of the patent

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32
Q

What does S29 deal with?

A

Surrender of a patent

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33
Q

What section deals with surrender of a patent?

A

S29

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34
Q

what will occur when an application under S28 is filed?

A

The comptroller will publish that an application for restoration has been made

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35
Q

What effect does a successful application under S29 have

A

The patent is surrendered from the date of publication in the OJ.
It is not possible to sue afterwards for prior infringment

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36
Q

What form is used to make a request under S29

A

PF2 requst to surrender a patent

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37
Q

a s29 application can be opposed by any person for what period?

A

A person must oppose surrender of a patent within 4 weeks of publication in the OJ

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38
Q

what form is used to oppose an application under S29

A

an opposition to surrender of a patent is made on PF15 within 4 weeks of publication of the surrender in the OJ

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39
Q

what sort of property is a patent

A

a patent application is personal property

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40
Q

if co-owned what acts require consent of both parties

A

transfer of ownership, assignment of any rights or licensing - both parties are allowed to practice the invention

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41
Q

What is required for an assignment to be valid

A

The assignment must indicate clearly what is being assigned and be signed by the assignor
if a person this signature must be witnessed if a company a seal must be applied

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42
Q

what form is used to register a transaction

A

PF21

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43
Q

what is PF21 used for

A

to register a transaction (assignment of rights or a license)

44
Q

What section deals with determination of rights in a granted patent?

A

S37

45
Q

What does S37 deal with

A

The determination of rights in a granted patent

46
Q

What orders can be given under S37

A

include a claimant as an extra or replacement proprietor
OR
require registration of a transfer or event giving rise to a right for a claimant
OR
Grant a license
OR
direct the current proprietors or rights holder to comply facilitate

47
Q

How long does a proprietor have to react to a S37 order?

A

within 14 days or the claimant may apply to the comptroller to do it themselves

48
Q

If the result of S37 proceedings is revocation of all or part of the patent what is the next step

A

If entitled the entitled person must apply for a patent within three months of the final decision or end of appeal R20
Such a new filing will be entitled to the original priority date.

49
Q

What is the deadline for bringing S37 proceedings

A

two years from grant.
UNLESS
the grantees of the patent knew he was not entitled at the point of grant.

50
Q

who can apply to bring proceedings under S37?

A

anyone with a proprietary interest

51
Q

What is dealt with by S46

A

licenses of right

52
Q

What section deals with licenses of right?

A

S46

53
Q

What are licenses of right?

A

A patent proprietor may register that licenses are available in his patent as of right using PF28
THEN
any person is entitled to a license on agreed terms or terms fixed by the comptroller - The comptroller may exchange existing licenses for these licenses if the terms are more favourable
ALSO
Any infringer has damages limited to 2x a retrospective licence fee if they take a licence
IN EXCHANGE
for the renewal fee being reduced by half

54
Q

What form is used to register a patent as of right?

A

PF28

55
Q

What action will the comptroller take if PF28 is filed

A

PF28 is a registration for licenses as of right
The comptroller will inform any current registered rights holders
and ensure that there are no contractual obligations that prevent licencing from occurring
licenses as of right will be registered in the OJ

56
Q

What section cancels a License of right?

A

S47

57
Q

S47 deals with what section?

A

Cancelling a license of right

58
Q

When must a patent be registered under S46 to gain the fiscal benefit?

A

A patent must be registered for a licence of right at least 10 days before the fee is due to gain the half price renewal fee.

59
Q

Who can cancel a license of right and how?

A

The proprietor using PF30

60
Q

If filing PF30 what occurs

A

A licence of right is cancelled and the proprietor must pay back the balance of any discounted renewal fees
IF
all license holders consent to the cancellation

61
Q

Who can oppose an application under S47

A

A third party may apply for cancellation of a license of right within two months of grant if they have an existing agreement that precludes such a license.
BY
Filing PF2 initiating proceedings before the comptroller and giving reasons

62
Q

What proceedings may allow the validity of a patent to be questioned?

A 
DRATOC
S61 & S69 infringement proceedings of a patent or published application
OR
S70A Actionable threat
OR
S71 Declaration of none infringement
OR
S72 Revocation
OR
S58 disputed crown use
AND
NO OTHERS

DRATIC
D eclarations of validity and infringement
R evocation proceedings
A ctionable
T hreats proceedings
I nfringment proceedings of a patent or published ap
c rown use disputed

63
Q

what section Proceedings during which validity may be put at issue

A

S74

64
Q

What does S74 concern?

A

Proceedings during which validity may be put at issue

65
Q

On what grounds will the comptroller revolk a patent under S73

A

S73 exists to prevent double patenting.
Thus
If a patent is no longer novel by virtue of S2(3) noveltry destroying prior art the comptroller will revolk - but must inform the proprietor and give the opportunity to amend under S75 subject to S76
OR
If the validity of the patent is found lacking under S74A opinion of validity
OR
A patent with the same subject matter, same priority date and same appliant is granted by EP (after opposition period or oppositions finish)
IN ALL CASES
the proprietor has the opportunity to amend within S76 to make the patent valid/not double patented

66
Q

What section deals with the comptroller’s power to revolk

A

S73

67
Q

What is section 73

A

The comptrollers power to revolk

68
Q

What effect does revocation under S72 have and how does it different to S29 surrender?

A

Revocation is retroactive, so it is as if the patent never granted. Therefore, licencees may sue for any fees back or any previous damages awarded for infringment may have to be repaid.
Surrender of a patent under S29 is not retroactive thus no issue. This is also why an application under S29 is not likely to be granted during any proceedings that may call validity into question

69
Q

What grounds can’t be used as grounds for revocation?

A

Unity and clarity

70
Q

What effect do revocation proceedings have on the right to challenge validity during infringement proceedings?

A

no effect. The proceedings can occur in paralell

71
Q

How many application for revocation can a person make?

A

only one unless given leave by the courts

72
Q

when can’t an application for revocation be refered to the court?

A

When an outstanding application under S27 is outstanding with the Comptroller
UNLESS
The proprietor agrees
OR
the comptroller certifies in writing that a court would be more suitable to properly determine the outcome of the proceeings

73
Q

What are the limitations on revocation under S72(1)(b) entitlement?

A

The person making the intervention must have been found to be entitled to grant of the patent during S71 declaration of non-infringement or S37 post grant entitlement proceedings
AND
Proceedings must be brought before the second anniversary of the grant of the patent
UNLESS
the proprietor knew at the point of grant he was not entitled

74
Q

On what grounds can a patent be revoked under S72

A 
PPEAS
The invention is not patentable
OR
The patent was granted to a person not entitled
OR
Lack of sufficiency
OR
added matter
OR
the protection of the patent was extended by an amendment that should not be allowed.
P atentability
P ostgrant amendment not allowable
E ntitlement
A dded mattert 
S ufficiency
75
Q

Who can intervene under S72

A

any person including the proprietor of the patent

76
Q

What section deals with the power to revok patents?

A

S72

77
Q

What does S72 deal with

A

the power to revoke patents

78
Q

What is the result of requesting a declaration of non-infringment?

A

The court or comptroller will provide an opinion on infringment. In doing so they will question the validity of the patent. If the patent is found to be invalid this will not result in revocation unless proceedings are brought under S72

79
Q

What conditions must be fulfilled for a declaration under S71

A

For a declaration of non infringement to be issued by a Court or the Comptroller
IF
The person must have already written to the proprietor of the patent requesting such a declaration
AND
the proprietor must have either refused or failed to acknowledge the request

80
Q

What does S71 deal with?

A

Declarations or Declaration of non-infringement

81
Q

What section deals with a declaration of none infringement

A

S71

82
Q

What can cause a stay of proceedings under S74 in the UK?

A

If a concurrent opposition proceedings is beign held under the EPO the Comptroller may decide to stay proceedings
UNLESS
this will cause undue delay to the possible UK revocation

83
Q

What does S74A

A

Opinions as to validity or infringment

84
Q

On what prescribed matters may who request an opinion from the comptroller? S74A

A

The prescribed matters R93(6) are:
Whether an act constitutes infringement
OR
whether, or to what an extent a patented invention is not patentable
OR
Whether a patent sufficiently discloses the application
OR
whether the patent extends beyond the matter contained in that originally filed
OR
whether an impermissible post grant amendment has been allowed
OR
Whether a supplementary protection certificate is permissable.

P atentability
P ost grant amendment
A dded matter
S ufficiency
S upplementary protection certificate
85
Q

on what form must an opinion relating to a patent be requested and what must accompany that form?

A

PF17 a FEE of £200
AND A STATEMENT
-The question on which an opinion is sought
-The requesters submissions on the question
-Any supporting documentation
AND
the name and address of any person the requester is aware may have an interest in the request (not including the person instructing the request if through an agent)
any particulars of proceedings that may be relevant to the request

86
Q

what is PF 17 used for

A 
requesting an opinion on 
I nfringment
P atentability
P ost grant amendment
A dded matter
S ufficiency
S uplementary protection certificate
87
Q

Can an opinion under S74A be requested annonamously?

A

Yes if using an agent acting on behalf of someone

88
Q

For what reason may the comptroller not issue an opinion under S74A

A

If the comptroller deems the request to be vexatious or frivolous
OR
or the Question will be sufficiently considered in any relevant proceedings
OR
the requester withdraws the request

89
Q

who shall be notified of a request under S74A and what will be included?

A

The notification will include - any
The patent holder
AND
Any registered license holder
AND
any person who has filed a request for notification under Rule 54 regarding request of an opinion
AND
any other party to whom the request may be of interest
AND
any further advertisement the comptroller thinks fit (i.e. in the register)
UNLESS
The request is withdrawn before notification has been sent out. In which case only the patent holder is notified of the request and withdrawal

90
Q

Who can file observations on a request for an opinion?

A

Any person within 4 weeks of advertisement of the request for opinion - they must also ensure that the observations are received by the requester and the patent holder as well as the comptroller

The requester and/or patent holder has a further 2 weeks to respond only to the observation starting from the end of the 4 weeks

91
Q

Who prepares an opinion?

A

A request for an opinion will be referred to an examiner by the comptroller

92
Q

Who receives an opinion?

A 
The requester
AND
the patent holder
AND
any party who filed observations
93
Q

Is it possible to appeal an opinion after issue?

A

NO but a patentee or an exclusive license holder may apply for a review of an opinion within 3 MONTHS of issue
UNLESS
the issue for review has already been decided in other proceedings

94
Q

What form is used to request a review of an opinion?

A

PF2 - Initiation of proceedings before the Comptroller
AND
a statement of grounds for the review IN DUPLICATE
GROUNDS INCLUDE
a patent was wrongly found to be invalid
OR
a patent by interpretation of the specification was wrongly found to be not infringed

95
Q

Who will be informed of a review of an opinion?

A

the requester
AND
any person who filed observations

96
Q

How long do third parties have to make observations on a review of an opinion?

A 
Any party make make an observation
BEFORE the later of
four weeks from filing of the review
OR
Two months from issue of the original opinion
97
Q

What is the outcome of a review of an opinion?

A

The opinion stands or falls it is not reissued or amended.

98
Q

What does S75 deal with?

A

Amendment during revocation or infringement proceedings

99
Q

When may the comptroller or court permit amendment during proceedings?

A

When the validity of the patent may be put at issue

100
Q

What must a request for amendment under S75 include?

A 
details of the amendment
AND
reasons for the amendment
NOTE
better to amend under S27 more leanient 
OR
If EP(GB) can amend under Art 105A but will apply to all EP validations
101
Q

What is the effect of an amendment under S75

A

An amendment during proceedings under S75 is retroactive to grant. i.e. as if it granted like this.

102
Q

What does S101 deal with

A

unauthorised claim of patent rights

103
Q

What section deals with unauthorised claim of patent rights.

A

Section 110

104
Q

What is and what is the penalty for falsely claiming a product is patented or has patent pending?

A

tagging patented or any like in literature or on the product

£1000

105
Q

What circumstances can a fallse claim to patent protectino be excused

A

If a patent has recently lapsed or been revolked, sufficient time is allowed to shift remaining stock that may be stamped

106
Q

What defences are available to a person accused of false product marking?

A

When a product has been marked without concent
OR
inability to control anothers sale of old stock.

107
Q

What section deals with an unauthorised claim a patent has been applied for?

A

S111

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