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.