Random Paper B Qs

Question 1

what is section 4A PA 1994?

Answer 1

(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 of the human or animal body.

(2) Subsection (1) does not apply to an invention consisting of a substance or composition for use in any such method.
(3) In the case of an invention consisting of a substance or composition for use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.
(4) In the case of an invention consisting of a substance or composition for a specific use in any such method, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if that specific use does not form part of the state of the art.

Question 2

What acts constitute the direct infringement of a patented process?

Answer 2

Section 60(1)(b)-(c) PA 1977:
(1) Subject to the following provisions of this section, a person infringes a patent for an invention if, and only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say--

[…]

(b) where the invention is a process, he uses the process or 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.
(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.

Question 3

What is the priority period under the Paris Convention?

Answer 3

Under Article 4C of the Paris Convention: 12 months from date of filing of first application disclosing that invention.

Thus, priority can be claimed from an application filed in a country party to the Paris Convention 12 months from date of filing of that application.

Specifically, the period starts on the day after the filing date and does not include the the same day of the filing date next year–meaning that if an application is filed on 11/01/08, the 12 month period over which you can file starts on 12/01/08 and ends on 11/01/09.

Question 4

What is the priority period under the Patent Law Treaty?

Answer 4

Article 13(2) and Rule 14(4) of the Patent Law Treaty provides that no less than 2 months extra shall be provided to the priority period under PC by signatory states.

In the UK, the extension only applies where failure to file was unintentional.

In EU, the extension only applies where there was a failure to file where due care was exercised.

Question 5

How is priority established (in relation to PC and PLT)?

Answer 5

In the 12 month period under the Paris Convention, the applicant must make a declaration of priority either at filing or within 16 months of the date of the date of the earlier filing (from which priority is being claimed).

In the extension period (provided by the PLT), a declaration of priority (a “late declaration”) must be made at the time of filing.

In either case, the priority claim must be supported by a certified copy of the original application within 16 months of the priority date.

Question 6

What is the time period for opposing the grant of a European patent and what are the grounds for opposition?

Answer 6

[There is no pre-grant opposition of a European application. However, third party observations can be filed in writing in English, French, or German.]

Period of opposition:

Article 99 EPC:
(1) Within 9 months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of the opposition shall not be deemed to have been filed until the opposition fee has been paid.

Grounds for opposition:

Article 100 EPC
Opposition may only be filed on the grounds that:
(a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
(b) the European patent does not disclose the invention in a matter sufficiently clear and complete for it to be carried out by a person skilled in the art;
(c) the subject-matter of the European patent extends beyond the content of the application as filed, or if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of an earlier application as filed.

Under article 101, if it is found that at least one of the grounds for opposition applies, then the patent will be revoked in all EPC states. Alternatively, the patent may be amended to overcome the grounds. Otherwise, the opposition may be rejected.

Question 7

What is required in order to obtain a date of filing under the Patents Act 1977?

Answer 7

Anyone may apply for a patent.

Section 15 PA 1977

(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.

Question 8

What comprises the state of the art for the purposes of novelty and how does this differ from that used for inventive step?

[Under PA 1977]

Answer 8

Under PA 1977:

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

[So subject-matter from patent application published on or after the date of priority is not considered.]

Subsection 2(3)
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 to also 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;
(b) the priority date of that matter is earlier than that of the invention.

Question 9

What comprises the state of the art for the purposes of novelty and how does this differ from that used for inventive step?

[Under EPC]

Answer 9

Article 56
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

Article 54(3)
Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 [date of filing of European patent] and which were published on or after that date, shall be considered as comprised in the state of the art.

Question 10

What occurs during the “international phase” of an application under the Patent Cooperation Treaty?

[Chapter I]

Answer 10

Prosecution under the PCT is divided into 2 phases: Chapter I and Chapter II

CHAPTER I - filing and receipt, international search and exam, publication

FILING:
File at Receiving Office (national or regional office) or at IB (WIPO). Filed in any language accepted by Receiving Office (UK: Eng/Welsh; EPO: Eng/Fr/Ge)

RECEIPT:
Receiving Offcie accords date of filing as date of receipt subject to certain requirements.

SEARCH:
If the Receiving Office is not an International Searching Authority (UK is not; EPO is), then application will be transmitted to ISA.

ISA performs an indentation search and provides a written opinion to accompany the report. [This is a International Preliminary Report on Patentability (IPRP) unless Chapter II report is requested, in which case it is a ISR + WO.]

PUBLICATION
The publication of the international application takes place 18 months after the priority date or earlier if the applicant requests it.

[An applicant can request a supplementary search within 19 months of the priority date. The search is conducted in the same way as the IPRP.]

Question 11

What occurs during the “international phase” of an application under the Patent Cooperation Treaty?

[Chapter II]

Answer 11

CHAPTER II- International substantive examination (optional)

Applicant must file a demand for the examination.
The examination is performed by the International Preliminary Examination Authority (usually the ISA–so EPO, usually).
This will be the IPRP.

Question 12

What is the duration of the international phase of a PCT application?

Answer 12

The international phase lasts a minimum of 30 months from the date of priority. However, the applicant can elect to enter the national phase earlier.

For UK and EPO, 31 month period is provided.

Question 13

What remedies are available for patent infringement a) before the Patents County Court (now Enterprise Judge) and b) before the comptroller?

Answer 13

Note that the Patents County Court is now known as the Intellectual Property Enterprise Court.

Remedies available from the IPEC (section 61(1)):

• –injunction;
• –order to deliver up or destroy the product;
• –damages;
• –an account for profits;
• –declaration that patent is valid and has been infringed by the defendant.

Claimant cannot be awarded both damages and account or profit.

Remedies available before the Comptroller (section 61(3)):

• –damages;
• –declaration that patent is valid and has been infringed by the defendant

Note that a case can only be heard by the Comptroller with the consent of both parties.

Question 14

What is the difference is scope between the ground of opposition for sufficiency under Art 100 EPC and revocation on the same grounds under section 72 PA 1977?

Answer 14

The scope of the ground of opposition for sufficiency under Art 100 EPC extends to “the European patent”, whereas under section 72 PA 1977 it extends to “the specification of the patent” only.

Question 15

When will an application be published and why is it relevant to infringement?

Answer 15

An application is published 18 months after the priority date, or earlier if a request is made.

The date of publication is relevant to infringement as proceedings can be brought for damages from infringement of rights conferred by publication of the application.

Summary of section 69 PA 1977:

• -the publication date is the date from which damages can be claimed if the patent;
• -can only claim after grant;
• -and act must infringe both claims as granted and as published.

[Under EPC, the publication takes place 18 months after the priority date OR at the request of the applicant before the expiry of that period.

As under the Patents Act, publication confers rights on the applicant regarding infringement proceedings and remedies–these are dealt with under national law.]

Question 16

When are renewal fees due to be paid? What are the consequences of failing to pay the renewal fee?

Answer 16

A patent lasts 20 years from the date of filing.
Need to renew every year after the 4th year (provided that the patent has been granted by 4th year).
Renewal for national patents, EP and PCT are all governed by section 25 PA 1977.

Summary of section 25 and corresponding rules:

(1) the renewal fee is due to be paid with the renewal period. The renewal period ends at the end of the last day of the month in which the renewal date falls.
(2) failure to pay within the renewal period results in the patent ceasing to have effect from the end of the renewal period.
(3) Payment of renewal fee + prescribed additional fee up until the end of the last day of the 6th month from the above period (6 months after renewal date ended) restores the patent. Patent is treated as though it never lapsed.

(4) Patent can be restored at any time within the period ending at the end of the last last of the 13th month from the 6 month grace period (i.e. period ending 19 months from the end of the renewal period).
(i) The restoration will be effective so long as the applicant satisfies the Comptroller that failure to pay was unintentional .
(ii) 3rd party rights may accrue during this period.

After 19 months from the renewal period, the patent is deemed to have ceased. The patent can only be restored in this case if there was a procedural error committed by the IPO.

Question 17

What things are deemed not be inventions under section 1(2) of Patents Acts 1977?

Answer 17

(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of–
(a) a discovery, a scientific theory or mathematical method;
(b) a literary, dramatic, musical, or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer;
(d) the presentation of information.
but the foregoing provisional 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.

Question 18

What is the difference between German Utility Model protection and that for German patents?

Answer 18

German Utility Model

(1) unexamined technical intellectual property right;
(2) maximum 10 year term of protection from date of filing (c.f. 20 years for patents);
(3) UM can protect all patentable subject-matter bar methods/processes (“use of” claims are product claims according to German Courts);
(4) whereas claims of a patent application my be amended during prosecution, after filing a UM cannot be amended of the applicant’s own volition;
(5) The following do not form part of the state of the art for a UM:
(i) oral disclosures;
(ii) public prior use outside Germany;
(iii) earlier filed, later published patent applications;
(iv) disclosure or public use by the applicant or his predecessor in title within a 6 month grace period.

Question 19

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?

(my notes seem to suggest that this will be on the exam…)

Answer 19

There are restrictions on residents of the UK (whether applicants, patent attorneys, or other persons) filing any patent application abroad.

Section 23 PA 1977

(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 if subsection 1A below applies to that patent, 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 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.

Summary of section 22:

–the Comptroller may prohibit or restrict the publication or communication to any specific person(s) of an application on filing at UKIPO if that application contains information prejudicial to national security.

–Comptroller may prohibit or restrict the publication or communication to any specific person(s) of an application for no more than 3 months from publication date if it is prejudicial to the safety of the public.

Question 20

A search fee was due to be paid on 10 Dec 2012, but the payment was missed. In what circumstances can the applicant apply for reinstatement?

Answer 20

[Restoration - refers to missing renewal fee payment;
Reinstatement - refers to missing search fee etc. payment]

Under section 20A

• -an applicant must request reinstatement;
• -within 12 months from the date on which the application was terminated;
• -or within 2 months of the applicant being able to meeting the outstanding requirement (removal of the cause of non-compliance);
• -or a period specified by the Comptroller;
• -applicant must satisfy the Comptroller that failure to pay was unintentional.

3rd part rights may accrue during this period.

Reestablishment of rights at EPO
Art 122(1) EPC: an applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application or of a request, or the deeming of the application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress.

3rd part rights may accrue during this period.

Question 21

What is meant by “services of the crown” for the purposes of Crown Use?

Answer 21

Section 56
(2) In this Act, except so far as the context otherwise requires, ‘services of the Crown’ includes–
(a) the supply of anything for foreign defence purposes;
(b) the supply or production 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 Crown’ shall be construed accordingly.

Question 22

What are the differences between an exclusive licence, a sole licence and a non-exclusive patent licence?

Answer 22

An exclusive licence means a licence from the proprietor which excludes all other persons (including the proprietor ) from working the invention.

A sole licence means a licence from the proprietor where the proprietor will not grant anyone else a licence for the invention, but the proprietor is not excluded from working the invention.

A non-exclusive licence is where a licence can be granted to more than one licensee and the proprietor is not excluded from working the invention himself.

Question 23

What are the conditions under Article 3 of Regulation (EC) 469/2009 for the granting of a supplementary protection certificate?

Answer 23

SPCs protect those products in patents for pharmaceuticals or plant protection products which need regulatory approval (marketing authorisation/product licence) and are intended to compensate for the delay in exploiting such products whilst such approval is obtained.

Under section 128B and schedule 4A (implements EC Regulation 469/2009), SPCs can be granted to the patent proprietor if:

• -the product is protected by a basic patent in force;
• -marketing authorisation to place the product on the market was obtained;
• -this was the first authorisation to place the product on the market;
• -the product is not already the subject of the SPC.

Question 24

What is the term of protection afforded by an SPC?

Answer 24

SPCs can extend protection for products requiring regulatory approval for up to 5 years beyond the end of the patent term (plus an additional 6 months if the product has undergone the appropriate paediatric testing).

SPCs are only granted for the product covered by the marketing authorisation.

The term of an SPC is determined from date of issuance of first marketing authorisation (MA) and is determined by:

Term = date of first MA in EEA - date of filing of corresponding patent - 5 years

Thus no SPC term is available if less than 5 years have elapsed between date of filing and date of first MA.

Proprietor must apply for SPC within the later of 6 months from first MA or within 6 months from grant.

Question 25

What restrictions are there on the co-ownership of a patent which do not apply to sole owners?

Answer 25

Section 36 PA 1977

(3) […] where two or persons are proprietors of a patent one of them shall not without the consent of the other or others
(a) amend the specification of the patent or apply for such an amendment to be allowed or for the patent to be revoked, or
(b) grant a licence under the patent or assign or mortgage a share in the patent or in Scotland cause or permit security to be granted over it.

There is also a kind of restriction/requirement placed on co-owners re infringement proceedings:
Section 66 PA 1977
(2) One of two or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless the others are made party to the proceedings; but any of the others made a defendant or defender shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

Question 26

In relation to the novelty of a patent, what grace period is available under Japanese law?

Answer 26

Applicant must file an application relating to disclosed subject matter within 6 months of disclosure;
Disclosing act must be carried out by person entitled to file the application;
A written submission (indicating the disclosure?) must be filed with the application; and
Evidence must be filed within 30 days (of filing?).

Question 27

When is an employee entitled to an invention as against his or her employer?

Answer 27

Section 39 PA 1977

(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 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 as belonging to the employee.

Expectation based on the “innovation duties” of the employee, not their personal brilliance.

Question 28

What is meant by a “licence of right”? And why might a patent proprietor grant such a right?

Answer 28

A patent proprietor may have an entry made on the register indicating that a licence is available to any person as of right. If any one wants a licence under the patent, the proprietor must grant them one.

Section 46 PA 1977
(2) where such an application is made, the comptroller shall give notice of the application to any person registered as having a right in or under the patent and, if satisfied that the proprietor of the patent is not precluded by contact granting licences under the patent, shall make an entry.

Reasons why a patent proprietor might grant a licence as of right:

(1) where it has been difficult to find potential licensees (advertising);
(2) to avoid a finding the proprietor is acting anticompetitively;
(3) renewal fees are halved (s 46(3)(d)).

The terms of the licence are agreed by the parties or, absent of an agreement, by the Comptroller on terms that assume a willing licensor and willing licensee.

Question 29

What is the term of a patent?

Answer 29

A patent lasts 20 years from the date of filing (section 25(1)) and shall take effect on the date on which notice of its grant is published in the journal.

Renewal fees must be paid annually from 4th anniversary of the date of filing to avoid lapse (provided patent has been granted by 4th year).

Supplementary Protection Certificates (SPCs) extend the term of protection by a maximum of 5 years (plus an extra 6 months if the patent relates to paediatric medicine). SPC shall take effect at the end of the lawful term of the basic patent.

SPCs can be applied for within 6 months of the first marketing authorisation being granted, or if later within 6 months of the grant of a basic patent. Available for plant protection and medicinal products.

Question 30

What is the difference between “absolute novelty”, “relative novelty”, and “local novelty”?

Answer 30

Absolute novelty - UK, EPC
Relative novelty - used to be applied in USA and China
Local novelty - used to be applied in New Zealand

[a document filed on the priority date does not form part of the state of the art]

Absolute novelty

Section 2 PA 1977

(1) An invention shall be taken to be new if it does not form part of the state of the art.
(2) The state of the art in the case of an invention shall be taken to comprise all matter (where a product, a process, information about either, or anything else) which has at the time before the priority date of the invention been made available to the public (whether in the UK or elsewhere) by written or oral description, by use, or in any other way.

Relative novelty - does not include public use outside jurisdiction

The state if the art in the regions employing relative novelty comprises all matter made available to the public by publication (but not use) both in the jurisdiction and anywhere else in the world, or by use in the jurisdiction.

Local novelty - must occur in jurisdiction

State of the art comprises all matter made available to the public by publication or public use in that jurisdiction only.

Question 31

Explain the test for inventive step first set out in T 1/80 Carbonless Copier paper/BAYER [1981] OJ EPO 206.

Answer 31

This is the approach used for assessing inventive step at the EPO. It is the so-called “problem-and-solution approach”.

There are 3 main stages in the problem and solution approach:

(1) Determining the “closest prior art”.
[generally corresponds to a similar use and requires the minimum of structural and functional modifications to reach the claimed invention (from Unilever case)]

(2) Establish the “objective technical problem” to be solved.
[determine the difference (distinguishing features) between the claimed features and closest proper art, identify the technical effect resulting from these features and then formulate the objective technical problem]

(3) considering whether or not the claimed invention. starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

Question 32

What are the traits of the person skilled in the art? What is the common general knowledge of the person skilled in the art

Answer 32

The person skilled in the art:

• -is notional (legal construct);
• -an expert in the technical field;
• -possesses no inventive capacity;
• -might be a team;
• -may consult other people.

The common general knowledge of the skilled person is assessed as follows (Chimeric gene/BAYER [2006]):

(1) Basic general knowledge of a particular field and the ability to look up such knowledge in the relevant literature;
(2) No undue effort in the way of such a search;
(3) The information must be unambiguous and useable in a direct and straightforward manner without doubts or further research work.

Question 33

What is excluded from patentability under Article 53 of the EPC?

Answer 33

Under article 53 EPC, European patents shall not be granted in respect of:

(a) inventions the commercial exploitation of which would be contrary to ‘order 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 for the production thereof.
(c) methods of 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.

Question 34

In what circumstances will a patent for a product be infringed?

Answer 34

A product may be directly and/or indirectly infringed.

(s 60(1) PA) A product is directly infringed if, and only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say—
(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.

It does not matter whether or not the person has knowledge that he is infringing the patent.

(s 60(2)) A product is indirectly infringed if, while the patent is in force and without the consent of the proprietor, 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.

(s 60(3)) Indirect infringement does not apply in situations in which staple commercial products are supplied or being offered for supply, unless the purpose for supplying or offering to supply is made for the purposes of inducing the person to whom the product is supplied or to whom the offer is made to do an act which constitutes an act of infringement.

Question 35

What is section 36(1)?

Answer 35

Section 36 Co-ownership of patents and applications for patents
(1) Where a patent is granted to two or more persons, each of them shall, subject to any agreement to the contrary, be entitled to an equal undivided share in the patent.

Question 36

What are the grounds on which the term of a Japanese patent can be extended?

Answer 36

The term of a patent in Japan is 20 years from the national or international application filing date.

Under article 67(2) of the Japanese Patent Act, the term of a patent may be extended by up to 5 years, where the patented invention cannot be worked because the relevant approval has not yet been obtained.

Such extensions must be applied for in writing before the patent right expires and within a predefined term of approval being granted.

According to the Japanese Patent Act, the term is set out in the Cabinet Order granting the issue of marketing approval.
The guidance given by Japanese Patent Attorney Association is 3 months within the granting of marketing approval.

Where the approval is not likely to be granted before expiry of the patent term, the patentee can write within the last 6 months of term to indicate that a request will be filed in due course.

If the patentee does this, it is possible to file the approval after expiry and possibly still extend the term.

Question 37

In what circumstances can a reference be made to the Enlarged Board of Appeal of the European Patent Office by a Technical Board of Appeal?

Answer 37

Reference can be made:

(1) At the request of one of the parties to the proceedings.
(2) When a point of law arises of fundamental importance.
(3) When there is ambiguity in the law.
(4) When there is conflict between decisions of different Technical Boards of Appeal.

(3) and (4) reasons are to ensure a uniform application of the law.

Question 38

What constitutes the state of the art under section 2 of the Patents Act 1977?

Answer 38

(Section 2(2)) 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 the 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.

(Section 2(3)) 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 any 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 the 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.

(Section 2(4) paraphrased) the state of the art does not include disclosures of the invention by the inventor at international exhibitions (as long as this in indicated on filing and evidence is filed within prescribed period) or disclosures made by a person who obtained the information either directly or indirectly from the inventor in situations where there was a breach of confidence or the information was obtained unlawfully.

Question 39

What does a patent application include?

Answer 39

The following (bar the description or something which appears to be the description) need not be filed at the date of filing.

Application:

(a) must contain request for grant of a patent.
(b) a specification containing a description of the invention.
(c) a claim or claims.
(d) any drawings.
(e) an abstract.

The deadline for filing the above is:
(a) where there is no declared priority date, 12 months beginning immediately after the date of filing the application; OR

(b) where there is a declared priority date–
(i) 12 months beginning immediately after the declared priority date;
(ii) if it expires later, the period of 2 months beginning immediately after the date of filing the application.

Question 40

What are the elements of a breach of confidence according to Coco v Clark [1969] RPC 41?

Answer 40

To establish a claim for breach of confidence, the claimant must show that:

(1) the information is capable of being protected.

[Although there is no limitation on the type of information that can be protected, the information must be identified with precision. The Courts will not protect “trivial information” nor “immoral information”. Furthermore, cannot protect information that is in the public domain.]

(2) the defendant owes the claimant an obligation to keep the information confidential (probably superseded by the “reasonable recipient test”).

[has to be a legal obligation, not simply a moral one.
he or she must have notice, or be held to have agreed, that the information is confidential.
notice of confidentiality might be implied by relationship e.g. doctor and patient
a contractual obligation can be imposed either expressly or implicitly
a third party who lacks “good faith” is bound by an equitable obligation of confidence as on notice.]

(3) the defendant uses the information in a way that breached that duty.

Question 41

What formalities are required (if any) to mortgage a patent in England by a limited company?

Answer 41

A patent or application may be mortgaged (must have consent from all proprietors) i.e. security for loans or other credit.

A mortgage will be void unless it is in writing snd signed by the mortgagor.

A company must register a mortgage or charge over a patent with Companies House.

More common for fixed and floating charges.

Question 42

What is required to establish a date of filing under the PCT?

Answer 42

Art 11 PCT

(1) The receiving office shall accord as the international filing date the date of receipt of the international application, provided that the office has found that, t the time of receipt:
(i) the application does not obviously lack, for reasons or 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 one of 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.

National or regional receiving offices are only competent where the applicant is resident in the country or is a national. Where filed at an incompetent receiving office, it is deemed to have been accepted on behalf of the IB (can always file directly to IB).

The filing of a request form automatically designates every country which is a party to the PCT (although it is possible to undesignated Germany, Japan, and Korea to protect national applications).

Once an international filing date is accorded, the applicant and IB are notified of that date.

The receiving office then transmits a (record) copy of the application to the IB–this is the official authentic copy.

Question 43

On what grounds might an application be refused on the grounds that it is contrary to public policy under the Biotech Directive (98/44)?

Answer 43

Under article 6

(1) Inventions shall be considered unpatentable where their commercial exploitation would be contrary to order 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) a process for cloning human beings;
(b) a process 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.

Article 6 is implemented in Schedule A2 of the Patents Act 1977.

Question 44

What is the effect of the London Agreement regarding language requirements?

Answer 44

States which have an official language in common with one of the official languages of the EPO (English, French or German) dispense with the language requirements under article 65(1) EPC.

This provision currently applied to the following states: UK, France, Germany, Ireland, Switzerland, Liechtenstein, Luxembourg, Monaco.

States which do not have an official language in common with the EPO may require that a translation of the claims into one of their official languages be supplied (basically all states apart from the ones listed above require this).

The above states dispense with further language requirements if the patent has been granted into an official language of the EPO prescribed by them, or translated into that language and supplied under the conditions provided for by Article 65(1) EPC.

The following states have prescribed English (don’t need to know this):

Albania
Croatia
Denmark
Finland
Netherlands
Hungary
Iceland
Norway
Sweden

The European patent may be supplied in national language alternatively (but not for Albania or Croatia).

The following states have not prescribed any language under Article 1(2) of the London Agreement:

Macedonia
Latvia
Slovenia
Lithuania

To summarise……..
To be valid in country X (X not Eng, Fr, Ge):
–claims in language X; and
–patent in language X or any one of Eng, Fr, Ge–usually Eng.

Question 45

What happens during national phase of PCT application?

Answer 45

The application is considered an e.g. Gb application and it proceeds to search (s 17) and substantive examination (s 18) under the UK Act. All prosecution in the national phase is in accordance with national patent laws.

Question 46

What is secret prior use under section 64 of the Patents Act 1977?

Answer 46

This is the prior use right. For the right to apply:

• -prior use has to be in UK;
• -act would have to constitute an act of infringement;
• -act needs to be in good faith.

Section 64

(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 do the right conferred by subsection (1) may–
(a) authorise the doing of that act by any partners 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 that acquires that part of the business in the course of which the act was done or the preparations were made.

Rights only extend to what you were doing before priority date (so if importing cannot make).

Question 47

What is meant by “effective and serious preparations” in section 64 PA?

Answer 47

–there must be something more than preparations to do the infringing act–what more will depend on the circumstances.

–the effectiveness of the preparations must be measured immediately before the priority date; it is not enough to show that the serious preparations, if pursued to finality, will have the requisite effect.

–where there have been full scale trials and a company was preparing to go into full scale commercial production, then this is probably sufficient to be serious and effective preparation.

Question 48

When is an employee entitled to compensation for developing an invention?

Answer 48

Where invention belongs to the employer…….

Section 40(1) PA 1977
(1) where it appears to the Court or the comptroller that on an application made by the 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 comptroller may award him such compensation of the amount determined under section 41 below.

Where invention belonged to employee and it was subsequently assigned to the employer…….

Section 40(2) PA 1977

(2) where it appears to the court or the comptroller on an application made by the 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 an 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.

Question 49

What are the official languages of the EPO? Set out three other language of publication under the Patent Cooperation Treaty.

Answer 49

Official languages of EPO: English, French, German.

A PCT application can be filed in any language accepted by the relevant receiving office:
UK–Eng or Welsh
EPO–Eng, Fr, Ge

The PCT application must be translated into a language of publication (14 months from priority date):
English, French, German, Arabic, Chinese, Japanese, Korean, Portuguese, Russian, or Spanish.

Question 50

What is meant by “compensation” in section 40 PA 1977?

Answer 50

Compensation must represent a “fair share” of the benefit which the employer has derived. It must be the benefit from the patent or invention (not from marketing, advertising etc.).

Question 51

What is meant by “outstanding” in section 40 PA 1977?

Answer 51

Kelly v GEC [2009]

“Outstanding” means “something special” or “out of the ordinary” and more than “substantial”, “significant” or “good”.

The benefit must be something more than would normally be expected to arise from the duties for which the employee is paid.

Question 52

What are the 4 criteria for protecting a plant variety?

Answer 52

Under section 4(2) of the Plant Varieties Act 1997, a plant variety can be protected if it is:

(1) new;
(2) stable;
(3) uniform;
(4) distinct.

This test correspond to the test under Article 6 of the Community Plant Varieties Regulation No 2100 of 1994.

Question 53

What is the grace period introduced under the American Inventors Act?

Answer 53

s 102 PA 2952
(b) Exceptions. –
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention–
A disclosure made 1 year or less before the effective filing date of the claimed invention shall not be prior art to the claimed invention under s (a) (1) if –
(A) the disclosure was made by the inventor or the joint inventor or by another who obtained the subject-matter disclosed directly or indirectly from the inventor or joint inventor; or
(B) the subject-matter disclosed had, before the disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject-matter disclosed directly or indirectly from the inventor or a joint inventor.

Question 54

What is needed to renew a priority date?

Answer 54

Withdraw application with no rights outstanding (no one has claimed priority from it). File new application at later date. [rough answer]

Question 55

When can a compulsory licence be granted in relation to a patent owned by a WTO (World Trade Organization) proprietor?

Answer 55

Under section 48(5) PA 1977, a WTO proprietor is any person who is a national of or domiciled in a country which is a member of the WTO or he has a real and effective industrial or commercial establishment there.

A compulsory licence will be granted for a patent owned by a WTO proprietor where:
• Where the patent is a product, the demand for the product is not being met in the UK on reasonable terms;
• By reason of the WTO proprietor refusing to licence the patent or licence the patent on reasonable terms (i) the exploitation of other inventions are hindered or prevented wherein those inventions involve an important technical advance of considerable economic significance relating to the invention owned by the WTO proprietor; (ii) the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
• By conditions imposed by the proprietor on the grant of licences…
o under the patent, or
o on the disposal or use of the patented product or
o on the use of the patented process
• …the manufacture, use, or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the UK, is unfairly prejudiced.

Question 56

Under what grounds can a patent be revoked under the Patents Act 1977?

Answer 56

Under section 72 PA 1977, the court or the Comptroller may revoke a patent on the grounds that:
• the invention is not patentable;
• the patent was granted to aperson not entitled to be granted that patent;
• the specification of the patented does not disclose the invention completely enough and clearly enough for a person skilled in the art to perform the invention;
• the matter disclosed in the specification extends beyond that disclosed in the application for the patent as filed, or in the earlier (priority?) application as filed;
• the protection conferred by the patent has been extended by an amendment which should not have been allowed.

Question 57

What defences may a person rely upon if that person is accused of improperly threatening someone with a claim of patent infringement?

Answer 57

Section 70C(4)

(4) It is a defence for the person who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 70A(2)(a) or (b) in relation to the product or the use of a process which is the subject of the threat, and
(b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

[new test reasonable steps, not best endeavours]

Question 58

What is meant by “disposes of” in s 60 PA 1977?

Answer 58

“Disposes of “ includes selling and probably the hire of the product (Kalman v PCL Packaging [1982])
It does not extend to throwing away an object (or simply loosing procession). It does not include deliver or despatch of a product by a warehouse person.

The location for the property passing might be determinative of where the disposal takes place (you don’t own something until property passes–not necessarily when you’ve got the thing in your hands.)

Question 59

What is meant by the wording “offer to dispose of” in section 60 PA 1977?

Answer 59

An offer to dispose of includes offering to do anything which amounts to a disposal of the product within the jurisdiction.

An offer requires a willingness to supply a product even if terms are to be agreed (no unduly legalistic meaning).

Not an infringing offer where the supply is to take place after the expiry of the patent.

An offer to supply a patented product on the internet from outside the UK is only infringing where the intention is to solicit customers from within the UK.

Question 60

What is meant by the word “uses” in section 60 PA 1977?

Answer 60

Not restricted to commercial use.

In relation to the internet, a use takes place in the UK where a person who makes inputs on a computer is located there.
Prevents having servers offshore to easily circumvent infringement.

Use of process where a process is contained with a computer program, then running of a computer program will be using the process.

Question 61

What constitute offering a process for use under section 60(1)(b) PA 1977?

Answer 61

(a) an offer to work the process for a person (who takes the products to the factory to be processed).
(b) an offer to sell a person a machine which uses the process (but a genuine disclaimer may avoid infringement).

(c) selling a person information to work the process him or herself (akin to a sale of confidential information).
This is unlikely to occur by reason of the fact that the information about the process would be otherwise available (in the published patent).

Question 62

What is the knowledge requirement in relation to every aspect of infringement?

Answer 62

If the person reasonably believes:

(a) he or she has consent;
(b) that he or she is not offering the process for use; OR
(c) he or she believes that the activities fall outside the scope of the monopoly.

there is no infringement.

Question 63

What is meant by “priority date of a patent” and how is the priority date determined?

Answer 63

The priority date is the date upon which novelty and inventiveness, the state of the art, is determined.

The priority date is either the date of filing the application OR the date of filing of an earlier application from which priority is claimed.

In the UK at least, the priority date is used for determining certain time limits in the Act and rules, such as the date of publication.