SDK Short Answer Questions Flashcards
What constitutes “services of the Crown” for the purposes of the Crown use provisions? (x3)
Section 56(2) defines ‘services of the Crown’ as including:
a) the supply of anything for foreign defence purposes
b) the production or supply of specified drugs or medicines
c) such purposes relating to the production or use of atomic energy or research into matter connected therewith as the Secretary of State thinks necessary or expedient.
But note it is NOT a closed list - “INCLUDING…”
s59(1) PA - The meaning of services of the crown is extended beyond its normal meaning by section 59 to include use of the invention, during a period of emergency, for any purpose which appears to the department to be necessary or expedient for:
- the efficient prosecution of any war
- maintenance of supplies or services essential to the life of the community
- securing a sufficiency of supplies essential to the well-being of the community
- promoting the productivity of agriculture, commerce and industry
- redressing the balance of trade
- assisting the relief of suffering and the restoration and distribution of essential supplies in any country or territory outside the UK which is in grave distress as a result of war.
Explain how “absolute novelty” is different from “relative novelty” and “local novelty”. (x3)
Absolute novelty: the state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use, or in any other way, before the date of filing or priority. The fact that the disclosure is unlikely to have been seen or understood by anyone within the jurisdiction is irrelevant. This is a bright line test that follows the library principle. (UK & EPO)
Local novelty: any public use or publication of the invention before the priority date will not destroy novelty unless the use occurs in the country or the publication is available in the country (e.g. New Zealand).
Relative novelty: a publication available in any country will destroy novelty but use of the invention outside the country in which protection is sought does not (e.g. Australia before 2000, USA).
What are the categories of subject matter excluded from patentability under section 1(2) of the Patents Act 1977? (7)
It is hereby declared that the following (AMONGST OTHER THINGS) are not inventions for the purposes of this Act, that is to say, anything which consists of -
(a) a discovery, 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 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.
When can a compulsory licence be granted in relation to a patent owned by a WTO Proprietor under section 48A of the Patents Act 1977? (x2)
In the case of an application made under section 48 above in respect of a patent whose proprietor is a WTO proprietor, the relevant grounds are–
(a) where the patented invention is a product, that a demand in the United Kingdom for that product is not being met on reasonable terms;
(b) that by reason of the refusal of the proprietor of the patent concerned to grant a licence or licences on reasonable terms–
(i) the exploitation in the United Kingdom of any other patented invention which involves an important technical advance of considerable economic significance in relation to the invention for which the patent concerned was granted is prevented or hindered, or
(ii) the establishment or development of commercial or industrial activities in the United Kingdom is unfairly prejudiced;
(c) that by reason of conditions imposed by the proprietor of the patent concerned on the grant of licences under the patent, or on the disposal or use of the patented product or 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 United Kingdom, is unfairly prejudiced.
(2) No order or entry shall be made under section 48 above in respect of a patent whose proprietor is a WTO proprietor unless–
(a) the applicant has made efforts to obtain a licence from the proprietor on reasonable commercial terms and conditions; and
(b) his efforts have not been successful within a reasonable period.
(3) No order or entry shall be so made if the patented invention is in the field of semi-conductor technology.
What are the four steps in the Pozzoli/Windsurfing approach? (2)
(i) Identify the notional skilled person. This involves identifying the relevant common general knowledge.
(ii) Identify the inventive concept of the claim. If the concept cannot readily be identified, the court must construe it.
(iii) What, if any, are the differences between the matter cited as part of the state of the art and the inventive concept or the claim or the claim as construed.
(iv) Viewed without any knowledge of the alleged invention as claimed [NO HINDSIGHT], do these differences constitute steps that would have been obvious to the person skilled in the art, or do they require any degree of invention?
[p15 Pozzoli judgement - “First one must actually conduct the first two operations in the opposite order – mantle first, then concept. For it is only through the eyes of the skilled man that one properly understand what such a man would understand the patentee to have meant and thereby set about identifying the concept.”]
What defences may a person rely upon if that person is accused of improperly threatening someone with a claim of patent infringement?
Defence 1: “justification defence” where the rights holder can show that the act which is the subject of a threat is shown to be an infringing act or would be infringing if carried out.
Defence 2: a groundless threat action may not be brought for
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.
(b) a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement allege to consist of doing anything else in relation to that product or process
(in summary, manufacturers can’t be sued for threatening other manufacturers)
Defence 3: the rights holder was doing something that did not in fact constitute a threat:
(a) providing factual information about the patent
(b) making enquiries for the sole purpose of discovering whether or by whom the patent has been infringed or
(c) making an assertion about the patent for the purpose of any enquiries so made
Defence 4: “no primary actor can be found” – under certain circumstances businesses can take advantage of this defence where they have threatened to sue an alleged secondary infringer when a primary actor (i.e. a manufacturer or importer) cannot be found.
More detail:
s70(2A) - If defendant (in groundless threats action, i.e. threatenor) can show that the acts in respect of which proceedings were threatened constitute or, if done, would constitute and infringement
(a) claimant is entitled to relief only if he shows the patent is invalid in a relevant respect
(b) even if he does, he shall not be entitled to relief if the defendant proves that at the time of making the threats he did not know and had no reason to suspect that the patent was invalid
(in summary, that the threats were not groundless)
s70(4) - a groundless threat action may not be brought for
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.
(b) a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement allege to consist of doing anything else in relation to that product or process
(in summary, manufacturers can’t be sued for threatening other manufacturers)
s70(5) - the following are not threats
(a) providing factual information about the patent
(b) making enquiries for the sole purpose of discovering whether or by whom the patent has been infringed or
(c) making an assertion about the patent for the purpose of any enquiries so made
s70(6) - threat made by A to B - defence for A to prove that he used his best endeavours, without success, to discover -
(a) where the invention is a product, the identity of the person who made of imported it
(b) where the inventive is a process and the alleged infringement consists of offering it for use, the identity of the person who used it
(c) where the invention is a process and the alleged infringement is an act falling within s60(1)(c), the identity of the person who used the process to produce the product in question and that A notified B accordingly, before or at the time of making the threats, identifying the endeavours used.
(in summary if you really tried to find the manufacturer but failed, then you can go after the retailer without being sued for making a groundless threat)
What can be done, if anything, where a person failed to pay the renewal fee for a patent:
(a) 2 months ago;
(b) 15 months ago; and
(c) 30 months ago.
s25(4) - six month grace period - if paid, patent treated as if it had never expired, no third party rights
deadline for restoration after renewal fee is not paid is 19 months from the end of the anniversary month (or 13m after expiry of s25(4) period)
BUT s28(3) - to take advantage of the additional 13 month period, the applicant must show that missing the original deadline and the s25(4) period was unintentional.
Longer than 19 months : no hope unless there was a procedural violation from the UKIPO (19m period is otherwise inextensible) [FYI procedural violation example given in lectures - UKIPO not specifically obtaining address for service for following year renewal reminder, so sent to incorrect person and not paid]
On what basis can the validity of a European patent (UK) before challenged? (x2)
Grounds of Revocation
Patents Act 1977: Section 72
In the UK can be brought before the Court or Comptroller on the following grounds:
(i) The invention is not a patentable invention
(ii) The patent was granted to a person who was not entitled to it
(iii) The specification does not disclose the invention sufficiently
(iv) There is added matter which extends the scope of protection improperly
(v) There was an improper amendment which extends the scope of protection
Opinions on validity are available from the IPO.
Grounds of Opposition
Art 100 EPC
A central challenge to the validity of an EP patent can be made during the opposition period (i.e. 9 months after grant). Anyone can file a notice of opposition, so long as it is based on one of three grounds:
(i) subject matter is not patentable under Art 52-57 EPC 2000
(ii) disclosure is not sufficiently clear and complete for the invention to be worked
(iii) the subject matter extends beyond the content of the application as filed.
What formalities are needed to assign a European patent (UK) under English law?
An assignment of a UK patent is void unless it is in writing and signed on behalf of the assignor. Unlike the assignment of a European patent application, the assignee does not need to sign the declaration. Although it is not strictly necessary to register the assignment with the UKIPO, it is highly advisable to do so within 6 months in order to allow the party to claim future litigation costs and expenses.
When will third party rights exist under a patent (identify each of the cases)?
Private Use – it is done privately and for non-commercial purposes
Experimental Use – the act is done for experimental purposes relating to the subject matter of the invention, including anything done in or for the purposes of a medicinal product assessment, including clinical trials and other studies required for obtaining or varying an authorisation to sell or supply, or offer to sell or supply, a medicinal product in the UK or elsewhere.
Extemporaneous preparation of prescription – the preparation of a medicament in a pharmacy for an individual in accordance with a prescription.
Agricultural exhaustion – the use in specified circumstances by a farmer of the product of their harvest, under section 60 (5)(g) of the Patents Act 1977, or the use of breeding stock or other animal reproductive material constituting or containing the patented invention sold to the farmer by the patentee or with his consent, for agricultural purposes, under section 60(5)(h).
Studies, tests or trials – the act is done in conducting a study, test or trial which is necessary for the application of paragraphs 1 to 5 of Article 13 of the EU Directive of 2001 on veterinary medicinal products or paragraphs 1 to 4 of Article 10 of the EU Directive of 2001 on medicinal products for human use or any other act which is required for the purpose of the application of those paragraphs.
Prior Use - Under section 64 of the Patents Act 1977
- What restraints (if any) are there on a UK resident filing an PCT application at the International Bureau where the invention is:
(a) a flea collar for cats;
(b) a nuclear power system?
(x6)
s23(1) - a UK resident cannot file or cause to be filed outside of the UK an application containing info:
(a) which relates to military technology or for any other reason the publication of which might be prejudicial to national security, or
(b) the publication of which might be prejudicial to the safety of the public
unless -
(a) an application for a patent for the same invention has been filed in the UK not less than six weeks before filing the foreign application; and
(b) either no directions have been given under s22 or all such directions have been removed.
s23(2) - subs. (1) doesn’t apply if a foreign application for the invention has been filed first by a non-UK resident.
Consequences:
(a) on summary conviction, a fine not exceeding £1,000
(b) on conviction on indictment, imprisonment for a term not exceeding
two years or a fine, or both.
If and only if the person filing the application or causing it to be filed:
(a) knows that filing the application, or causing it to be filed, would contravene this section; or
(b) is reckless as to whether filing this application, or causing it to be filed, would contravene this section.
What limitations are faced by co-owners of patents but not sole proprietors? (x7)
s36(2) - Each proprietor is entitled to work the patent without infringing and without having to account to the others
Without permission of the other co-owners, a co-owner CANNOT:
s36(3)(a) 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
s36(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.
When is an employee entitled to an invention as against an employer?
Section 39 provides a ‘complete code’ for determining entitlement. In particular, an invention will belong to an employer if:
(a) the invention was made in the course of the employees normal or specifically assigned duties and the invention was made in circumstances under which an invention might reasonably have been expected to have resulted; or
(b) an employee’s position and status within an organization will be such that they will be taken to be under a ‘special obligation to further the interests of the employer’s undertaking’ [i.e. a senior managerial role or administrative position].
Employee inventions that fall outside these categories will belong to the employee.
What is the period of priority for a patent application under the Paris Convention and how does the Patent Law Treaty affect that period?
Paris Convention Article 4C:
In order to validly claim priority of an earlier application, an international application must always be filed within the priority period, which is 12 months from the filing date of the earlier application whose priority is filed (see PCT Rule 2.4); otherwise, the right of priority will be lost.
Patent Law Treaty Article 13(2) and Rule 14(4):
Not less than two months shall be provided by the signatory states where failure to file was unintentional (or where all due care was exercised). For example, the UK has adopted a 2 month PLT period with the ‘unintentional’ standard and the EPC has adopted 2 months under the ‘all due care’ standard. Time periods should be counted from the day after filing.
When might a biotechnology invention be contrary to ordre public under Directive 98/44/EC (Patents Act 1977, Sch A2)?
Article 6
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.
- 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.
What is a divisional application and when might it be filed?
An application which has been divided up; possibly due to plurality problems, entitlement problems or otherwise. Its priority date is the date of filing of the parent “earlier application”.
Cannot add matter.
S.15(9)(a) also requires that the Divisional application is made by the same applicant (or their successor in title). If these criteria are met, the Divisional application may provisionally be accorded the same date of filing as the “parent”.
A Divisional application cannot be made if:-
a) the “parent” has been refused;
b) the “parent” has already been withdrawn by the applicant; *
c) the “parent” has been taken to be withdrawn by the office;
d) the “parent” has been granted - the date of grant is taken to be the date on which the grant letter (‘B’ Letter) is issued;
e) the r.30 compliance period for the “parent” has expired. a Divisional can proceed if the “parent” is withdrawn after the Divisional application has been lodged
R36 EPC - The applicant may file a divisional application relating to any pending earlier European patent application.
Art. 76 EPC (1) A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.
(2) All the Contracting States designated in the earlier application at the time of filing of a European divisional application shall be deemed to be designated in the divisional application.
When will the rights in a patent be exhausted within the EU?
A patent owner’s ability to control the way patented products are disposed of is limited by the common law doctrine of implied license and the doctrine of exhaustion as developed under Community law. Under the doctrine of exhaustion, a patentee is unable to use a patent to prevent the further disposal of an article that has been placed on the market in the EEA with the patentee’s consent.
Additionally, according to Article 10 of the Biotech Directive, the protection conferred by a patent shall not extend to biological material obtained from the propagation or multiplication of biological material placed on the market by the owner of the patent (or with their consent).
As stated in sections 60(5)(g)-(h), this is particularly relevant to farmer’s privileges in respect of using a patented product (e.g. produced by their own harvest) for propagation and multiplication on their farm or for the breeding of animals.
Doctrine of implied licence - sale of a product implies a licence to keep, use and resell the product.
If all parties in chain of supply are made aware of a limited licence preventing sale outside the EEA, this may be enforceable to prevent export outside the EEA.
What is the test for sufficiency?
According to s14(3), “The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.” (see also Art 83 EPC)
To assess sufficiency, we use a two stage test:
- ask whether the specification would enable the skilled person to put the invention into effect. (Kirin Amgen)
- then ask whether the specification would allow the skilled person to put the invention into effect across the whole range of the invention.
In this context, as in the assessment of novelty and inventive step, the skilled person should be defined as in Herbicides; meaning that common general knowledge at the time of filing can be used to interpret the specification.
To fulfil the sufficiency criteria, the invention must be put into effect without undue burden (Preprothamation/Unilever), and although some degree of trial and error is permissible, there must be enough information in the specification and common general knowledge to lead the skilled person necessarily and directly towards success (Stable Bleaches/Unilever).
What is ‘innocent infringement’ under section 62 of the Patents Act 1977?
“s62(1) - In proceedings for infringement of a patent, damages shall not be awarded, and no order shall be made for an account of profits, against a defendant or defender 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 a person shall not be taken to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words of that subsection.”
Initially the scope of protection offered by section 62 was thought to be narrow; only covering the time between priority and publication. Now, the scope of protection also seems to cover small companies or industries where patents are uncommon.
Relevant cases:
Where a person inspects the register before starting their operations, and there is nothing to alert them to the risk of infringement, they have no reasonable way of knowing the patent exists (Diado Kogyo).
There is no general requirement that a patent search is conducted. An assessment must be made as to whether this is reasonable (Scheneck Rose).
What are the consequences of not registering the assignment of a patent in United Kingdom law?
Whilst the validity of a patent assignment does not depend on whether or not it has been registered…
s33 - a person who claims to have acquired a patent by virtue of any transaction (B) shall be entitled as against any other person who claims to have acquired it by virtue of an earlier transaction (A) if, at the time of B -
(a) A was not registered, or
(b) in the case of an unpublished application, notice of A had not been given to the comptroller, and
(c) in any case, person of transaction B did not know of A.
s68 - if patent is infringed before the transaction is registered, the court shall not award costs unless -
(a) it was registered within 6 months of the date of the transaction or
(b) as soon as practicable thereafter.
Also potential loss of priority rights.
Also no compensation for crown use.
When is an application published under the EPC? And when will the rights conferred by publication come into being in the United Kingdom? (x4)
Art 93(1) EPC - The European Patent Office shall publish the European patent application as soon as possible:
(a) after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority, or
(b) at the request of the applicant, before the expiry of that period.
Art 93(2) The European patent application shall be published at the same time as the specification of the European patent when the decision to grant the patent becomes effective before the expiry of the period referred to in paragraph 1(a).
s77(1) PA 1977: Rights in UK from publication of mention of grant in the European Patent Bulletin (no translation requirement after 2008 due to the London Agreement).
When does an international application enter into the national phase: (a) in the United Kingdom; and (b) in Luxembourg.
The UK allows 31 months from the priority date for international applications to enter the national phase. This term applies to applications following the Chapter I and Chapter II (i.e. international preliminary examination) routes.
Luxembourg allows 20 months for International applications following the Chapter I route and 30 months for applications following the Chapter II route. However, it would also be possible to file an EP application designating Luxembourg within 31 months from the priority date, regardless of whether the applicants chose to follow the Chapter I or Chapter II route.
What is a ‘licence of right’ and why might an inventor want to make such licences available? (x4)
s46(1) “any time after grant of a patent its proprietor may apply to the comptroller for an entry to be made in the register to the effect that licenses under the patent may be available as of right. The terms of the license are agreed by the parties or absent agreement by the comptroller.”
A license of right enables patentees to put a note on the register that licenses are to be available as of right. Anyone will then be able to apply for a license and establish the scope of the license they desire (i.e. to manufacture, sell or import). Accordingly, the patentee is no longer able to dictate who can exercise the patent nor control the terms of the licenses (which will be set by the parties, or if an agreement cannot be reached, by the comptroller).
- Licenses of right may be used to advertise the fact that the owner of the patent is willing to grant licenses to parties who wish to exploit the invention.
- They may also indemnify the proprietor against actions on grounds of anti-competitive behaviour.
- Licenses of right halve the renewal fees payable.
What can be done, if anything, where a person failed to pay the renewal fee for a patent granted at the UK IPO:
(a) 3 months ago;
(b) 16 months ago;
(c) 30 months ago.
(a) 3 months is within the 6 month grace period. The renewal fee can validly be paid with an additional surcharge.
(b) If the applicant can show that the appropriate standard of care has been met (i.e. unintentional non-payment at the UKIPO), the renewal fee can be paid and the patent restored during the restoration period. This runs 13 months from the end of the grace period.
(c) The renewal fee can only be paid after the end of the restoration period if the fault was on the IPO.
What checks are performed by the receiving Office under the Patent Cooperation Treaty?
- In a prescribed language
- Checks whether the applicant does not obviously lack, for reasons of residence and nationality, the right to file an international application with the receiving Office.
a. If there are two or more applicants, it is sufficient that the Office with which the international application is filed is the receiving Office of or acting for a Contracting State of which at least one of them is a resident or national - Other minimum requirement for an international filing date:
a. an indication that it is intended as an international application (i.e a request on a request form)
b. the designation of at least one contracting state
c. the name of the applicant
d. something resembling a description
e. something resembling claims
- An abstract, drawings, sequence listing or biological deposits (if necessary)
What is required to establish a date of filing under the Patents Act 1977? (x3)
S15(1) – earliest date on which documents filed at the IPO to initiate the application satisfy following conditions:
(a) indicate that a patent is sought;
(b) identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and
(c) 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.
What are the remedies available to a claimant in infringement proceedings (a) before the Patents County Court; and (b) before the comptroller? (x6)
s61(1) - Remedies of COURTS (DADDI acronym)
a. Injunction
b. order to Deliver up or destroy
c. Damages
d. Account of profits
e. a Declaration that the patent is valid and has been infringed
s61(2) - Court will not award both damages and account of profits
s61(3) - Comptroller may award only damages or a declaration of infringement
When will an international application for a patent enter the national phase in the United Kingdom? And when would translations be required?
- Under the Paris Convention (Article 4C), the application must enter into the UK national phase within 31 months from priority date
s89A(3)(a) either at the end of the prescribed period: R66(1) 31 months from declared priority date or filing date, or, s89A(3)(b) when the applicant expressly requests it early.
- This may be extended by 2 months if the deadline was unintentionally missed (Patent Law Treaty Article 13(2) and Rule 14(4)).
- Translations are needed on entry into the National phase if the International application was not published in an official language (French, German, or English).
s89A(3)(b) Translations (+ prescribed fee) required at end of prescribed period in order for national phase to begin.
s89A(3)(b) Translations (+ prescribed fee and copy of the application if not already sent) required in order for national phase to begin when applicant requests it early.
What are the four requirements for a plant variety to be protected under the UPOV Convention (which is the same as the test under the Plant Varieties Act 1997)? (3)
To be protected a variety has to be (DUNS):
- Distinct;
- Uniform;
- New.
- Stable
What does Article 6 of Directive 98/44 on the legal protection of biotechnology provide? (5)
- 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.
- 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.
What is the term of a patent under the Patents Act 1977? And from what day is that term calculated? (x5)
s25(1) Continues in force until the end of the period of 20 years beginning with the date of filing the application for the patent (NOT priority date…)
Renewal required at fourth anniversary of filing and subsequent years.
s25(3) Where any renewal fee in respect of a patent is not paid by the end of the period prescribed for payment (the “prescribed period”) the patent shall cease to have effect at the end of such day, in the final month of that period, as may be prescribed.
s25(4) If during the period ending with the sixth month after the month in which the prescribed period ends the renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes of this Act as if it had never expired.
- Renew up to 3 months before, or within 1 month after, the due date to avoid late payment fees.
You can renew up to 6 months after the due date but you have to pay a late fee.
- Additional (non-patent) right can be increased by a maximum of 5 years for medicinal products and agrochemicals with marketing authorisation (SPC).
- A further 6 months paediatric extension may also be gained.
What acts constitute the direct infringement of a patented product? (x4)
s60(1) A person infringes a patent only if, while patent is in force, he does any of the following things in the UK without consent of patent proprietor -
(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
s60(2) A person also infringes if he supplies or offers to supply in the UK 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, that those means are suitable for putting, and are intended to put, the invention into effect in the UK.
What acts constitute the direct infringement of a patented process? (x1)
Direct infringement of a process patent (section 60(1)(b)(c):
- 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 without the consent of the proprietor would be an infringement of the patent
or he:
- disposes of,
- offers to dispose of,
- uses or
- imports
any product obtained directly by means of that process or
- or keeps any such product whether for disposal or otherwise
What is the time period for opposing the grant of a European patent and what are the grounds of opposition?
- Art 100 EPC
- 9 months
- from the grant of the patent
- patentability (novelty, inventive step, industrial application)
- added matter
- insufficiency
- Does NOT include: entitlement, clarity, unity, or support
What is required to obtain a date of filing under the Patents Act 1977?
- Section 15
- Documents indicate that a UK patent is sought (do not need a formal request)
- identify the person applying to the application sufficiently to allow them to be contacted
- something that appears to be a description
- or a reference, complying with the relevant requirements of rules, to an earlier application made by the applicant or his predecessor.
What comprises the state of the art for the purposes of novelty and how does this differ from that used for inventive step? (7)
Section 2(2)
- The state of the art shall be taken to comprises
- all matter
- 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.
Section 2(3)
- The state of the art shall also be taken to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if
- that matter was contained in the application for that other patent both as filed and as published; and
- the priority date of that matter is earlier than that of the invention.
Section 2(4)
- the disclosure of matter constituting an invention shall be disregarded if occurring later the six months immediately preceding the date of filing the application for the patent and either:
- the disclosure was made unlawfully or in breach of confidence by any person; or
- 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
- the disclosure was due to the inventor displaying the invention at an international exhibition (as defined in s.130 PA 1977 or Art 55(1)(b) EPC) 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.
In relation to inventive step, the state of the art does not include the disclosures defined in section 2(3).
For inventive step documents can be (appropriately) mosaicked.
For novelty documents must be taken alone, unless documents are clearly taught as connected.
What occurs during the “international phase” of an application under the Patent Cooperation Treaty? (x2)
‘International phase’ begins when the application is filed at WIPO (or a designated receiving office) and ends at the entry of the national or regional phase (31 months for UK and EPO). During this phase formalities are examined and then an international search report is produced (now with an additional opinion, to form the WOISA).
The applicant is given the chance to amend the application after which it is published. Must enter regional Phase at at least 30 months (jurisdictions differ on application of time limit).
Optional Chapter II with substantive examination, giving an opportunity to address objections in the WOISA to obtain a more positive IPRP.
The deadline for filing the Demand is the later of: 22 months from the priority date, and 3 months from the issuance of the Written Opinion of the International Search Authority (WOISA)
Detailed checklist:
- Application filed at a competent receiving office by a resident/national of a PCT contracting state or using a strawman
- Assigned a filing date
- Receiving Office transmits a record of the application to the IB
- The ISA conducts a search (only for written disclosure, not use)
- ISA writes compiles a search report and written opinion, which becomes the IPRP (Chapter 1), unless a chapter 2 report is given.
- Optional: can request a supplementary international search within 9 months of priority date
- Publication takes place 18 months after the priority date.
- 10 languages: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish
- In the optional Chapter 2, the applicant can file a Demand for the International Preliminary Examination Authority to conduct a International Preliminary Examination
- Ends when it enters the national/regional phase (typically 30 months from priority, 31 months for UK and EPO)
What defences to patent infringement were introduced in the United Kingdom to give effect to the Biotech Directive (98/44/EC)?
Art 10 Biotech Directive covers exhaustion of biological patents:
- Protection does not extend to biological material obtained from the propagation or multiplication of biological material placed on the market by the owner of the patent or with their consent. [BUT does not extend to other types of propagation / multiplication for which the product was not marketed]
Art 11(1)-(2) Biotech Directive provides two specific forms of “farmer’s privilege” (mirrored in section 60(5)(g)-(h) PA 1977):
- 60(5)(g) provides a defense where a farmer uses the product of their harvest for propagation or multiplication on their farm.
[BUT]
- Only applies to the plant species and groups set out in para 2 schedule A1 of PA 1977:
- i.e. fodder plant, cereal, potato, and oil and fibre plant.
60(5)(h) provides that ‘the use of an animal or animal reproductive material by a farmer for an agricultural purpose … of breeding stock’ is non-infringing.
[Construction depends on how ‘agricultural purpose’ is construed, but does not include commercial reproductive activity or sale within the community]
The Act tells us that ‘use for agricultural purposes’ includes situations in which the animal or reproductive material is made available for the purposes of pursuing the farmer’s agricultural activity; [BUT] it does NOT include ‘sale within the framework, or for the purposes of a commercial reproductive activity.’
When will an application be published and why is it relevant to infringement?
- 18 months from the priority date
- third party rights are awarded to anyone who
- in the UK
- before the priority date
- does in good faith an act which would constitute an infringement of the patent were it in force; or
- makes in good faith effective and serious preparations to do such an act
- has the right to continue
- but, they can not assign a license
- if that act was done in the course of business, the 3rd party may authorize others in the business to also continue to work the invention’ and
- assign the right/transmit it on death/dissolution to any person who acquires that part of the business.
What things are deemed not to be inventions under s. 1(2) of the Patents Act 1977?
Section 1(2)
The following (among other things) are not inventions.
Anything which consists of—
(a) a discovery, 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 only to the extent that a patent or application for a patent relates to that thing as such.
What is the difference between German utility model protection and that for German patents? (x6)
- A utility model is registered about 6 to 8 weeks after filing, so effective protection is rapidly available.
- In Germany, utility models are not available for methods.
- The maximum term of protection for a utility model in Germany is 10 years.
- Description or use by the applicant within six months before the application date (priority date) of the utility model is not taken into account as prior art (six months grace period)
- The prior art is more limited compared to that of patents: It only comprises written descriptions.
- Prior use is relevant only within the territory of Germany.
- A utility model is not an examined right. It is essential that validity is assessed before initiating infringement action. Failure to do this might result in the utility model owner having to pay damages if the utility model is found to be invalid during infringement proceedings.
Utility models:
(a) The disclosure must be written (oral disclosures don’t count) and have been made available in Germany (i.e. local novelty). There’s a 6 month grace period for description or use “if it is based on the conception of the applicant or his predecessor in title.”
(b) Ten years from filing, subject to payment of renewal fees (after 3 years for a further 3 years then for 2 years at a time).
Patents:
(a) Absolute novelty standard.
(b) Maximum of twenty years from filing, subject to payment of yearly renewal fees from 3rd year of patent. Supplementary protection certificates for up to an additional five years. Paediatric extensions for a further period of up to six months.
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?
There are restrictions on residents of the UK (whether applicants, patent attorneys or other persons) filing a patent application abroad (including at the EPO or at Geneva under the PCT) where the application contains information which relates to military technology of which, for any reason, might prejudice national security or the safety of the public.
All search fee was due to be paid on 10th December 2012, but the payment was missed. In what circumstances can the applicant apply for reinstatement?
S20A “Reinstatement of Applications”
(1) Reinstatement possible when an application refused or treated as having been refused or withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of the Act or rules within a particular time period.
(2) The comptroller shall reinstate the application if and only if:
- the applicant requests him to do so; and
- he is satisfied that the failure to comply was unintentional (evidence will be required).
R32 “Reinstatement of applications under section 20A”
(1) A request under section 20A for the reinstatement of an application must be made before the end of the relevant period (12 months).
What is the difference between an exclusive licence, a sole licence and a non-exclusive patent licence? (x1)
An Exclusive Licence means that no person or company other than the named licensee can exploit the relevant intellectual property rights. Importantly, the licensor himself is also excluded from exploiting the intellectual property rights.
Sole Licence. This is typically understood to mean that the licence is exclusive, except that the licensor also reserves full rights to exploit the intellectual property itself. The licensor does not have the right to grant any other sub-licences.
A Non-Exclusive Licence grants to the licensee the right to use the intellectual property, but means that the licensor remains free to exploit the same intellectual property and to allow any number of other licensees to also exploit the same intellectual property.
The exclusive licensee has the same right as the proprietor of the patent to bring infringement proceedings in respect of acts committed after the date of the licence (subsection (1)) and may be awarded damages or other relief by the court or the comptroller in respect of infringement of his rights as exclusive licensee (subsection (2)). The proprietor must be made a party to any such proceedings (subsection (3)).
Non-exclusive licensees, on the other hand, do not have the right to commence infringement proceedings.
Compulsory license:
- Paris Convention Art 5(A)
- Cannot be granted for failure to work until 4 years have lapsed since the patent was filed or 3 since it was granted.
- Must be non-exclusive
- Cannot be assigned (except with the business)
What are the conditions under Article 3 of Regulation (EC) 469/2009 for the granting of a supplementary protection certificate?
A certificate shall be granted if, in the Member State in which the application is submitted and at the date of that application:
(a) the product is protected by a basic patent in force;
(b) a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with Directive 2001/83/EC or Directive 2001/82/EC, as appropriate;
(c) the product has not already been the subject of a certificate;
(d) the authorisation referred to in point (b) is the first authorisation to place the product on the market as a medicinal product.
SPC is for pharmaceutical or plant protection products needing regulatory approval to be sold in the UK for which a marketing authorisation or product licence is required.
Enters into force when your patent expires and can last for up to 5 years. An SPC for a medicinal active ingredient may also be extended for a further six months if it has undergone the appropriate paediatric testing.
Must have a valid UK patent that protects the active ingredient and a marketing authorisation to place the active ingredient on the UK market as a pharmaceutical or plant protection product must have been granted.
The SPC is granted to the holder of the patent protecting the active ingredient, not to a licensee or a manufacturer of a pharmaceutical or plant protection product.
Only protects the active ingredients present in a medicinal or plant protection product. It does not extend the patent.
UK SPC only effective in the UK.
What restrictions are there on the co-ownership of a patent which do not apply to sole owners?
According to Section 36(3), where two or more persons are proprietors of a patent one of them shall not without the consent of the other or others
- 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 or
- in Scotland cause or permit security to be granted over it.
