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.
In relation to the novelty of a patent, what grace period is available under Japanese law?
12 month grace period from 9 June 2018 (up from 6 months):
(1) Grace period for experimental use or presentation at an academic conference.
(2) Grace period for breach of confidence (“against the will of the person having the right to obtain the patent”)
(3) Grace period for international exhibition.
(4) Any person seeking the application of paragraph (1) or (3) shall submit to the Commissioner of the Patent Office, at the time of filing of the patent application, a document stating thereof and, within thirty days from the date of filing of the patent application, a document proving the fact that the invention which has otherwise fallen under any of the items of Article 29(1) is an invention to which paragraph (1) or (3) of this Article may be applicable.
The applicant shall submit (in the case of 1.(b) above:
(a) a written statement to that effect at the time of filing; and
(b) proof, within 30 days of the filing date, that the disclosure was in respect of the invention
What is meant by “a licence of right?” And why might a patent proprietor grant such as right?
If anyone wants a licence under the patent, the proprietor must grant them one.
- this includes current licensees and infringers
o advertising (e.g. when it has been difficult to find potential licensees)
o to avoid a finding that the proprietor is acting anti-competitively
o renewal fees are halved (section 46(3)(d))
- The terms of the license can be agreed between the patent proprietor and the putative licensees
- In such a case there is no restriction on what can be agreed
- In the absence of an agreement, the comptroller sets the terms of the licence
- The Comptroller will use his discretion to ensure the proprietor receives reasonable renumeration
- Test is it set out terms that would be agreed between the notional willing licensee and the willing licensor
- A fair reasonable balance need to be struck (Smith Kline & French’s Patent)
In the context of an infringement proceeding:
- non injunction will be granted
- damages will be limited to double the license fee
If the patent proprietor wants the endorsement removed, he must:
- Pay full renewal fees
- Licensees must consent
- Opposition to cancellation is possible
What is the ‘library principle’?
When assessing whether a public disclosure has taken place, the law must draw the line somewhere. The library principle states that an obscure book on the shelves of a public library that nobody consulted was nevertheless made available to the public. Therefore, inasmuch as the public had a right to be in a particular place, the law does not speculate about who did or did not see the thing. Assuming no obligations as to confidentiality have been imposed, the law will consider that whatever could be seen there has become part of the state of the art. This principle is therefore important in terms of defining the state of the art. (Lux Traffic Controls Ltd)
In Lux Traffic Controls Ltd v. Pike Signals Ltd [1993] RPC 107, 132-135 prototype traffic lights were given field trials. It was not proved that any member of the public – much less an expert in traffic lights – stopped to deduce the novel modus operandi. Even so it was held that the new idea was made available to the public. The principle is the same as the obscure book on the shelves of a public library that nobody consulted in fact. The law must draw the line somewhere, as I have said, and it does so by adopting the rule that inasmuch as the public had a right to be there, they are deemed to have had the right to access the information.
When can a patent’s term be extended under Japanese law?
Art 67 (JPA) Where there is a period during which the patented invention is unable to be worked because approvals (e.g. safety approvals) are required by law before the invention can be worked, the duration of the patent right may be extended, upon the filing of a request for the registration of extension of the duration, by a period not exceeding 5 years.
Typically the duration of a Japanese patent is 20-years from the date of filing. However, the effective patent term is frequently less than 20 years in the field of pharmaceuticals and agrochemicals due to the time it takes to get marketing approval.
To encourage inventions in these fields, the patent life is extended to compensate patent holders for marketing time lost while developing the product and awaiting government approval.
The patent term can be extended by a maximum of 5 years.
The extended patent term corresponds to the “period which the patented invention could not be worked” due to the requirements that pharmaceutical products receive government approval before marketing.
The period starts on the day when the clinical trial is started* or the day when the patent is registered**, whichever is later, and ends on the day just before the day when the regulatory approval is mailed to the applicant of the regulatory approval.
For agrochemicals, the period starts on the day when the field trial by an authorized agency* is started or the day when the patent is registered, whichever is later, and ends on the day just before the day when the regulatory approval is mailed to the applicant of the regulatory approval.
- What formalities are required to assign
(a) a European patent (UK);
(b) a European patent application?
(x3)
UK
S 30(6) - An assignment of a patent or application is void unless it is in writing and signed on behalf of the assignor.
Baxter v Nederlands Produktielboratorium [1998] – an assigmnent not complying with these requirements may still be effective in equity.
- registration of an assignment is not mandatory.
However:
- if the registered proprietor enters into a later, conflicting transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33).
Registration is therefore advisable; and
- failure to register an assignment within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).
EPO
Art 72 EPC: “an assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”.
- Must be registered for it to be recognised by the EPO.
- Historically, the EPO’s approach to recording assignments was that they required evidence that both parties agreed to the transfer. An acceptable approach was for the assignor to have signed the assignment document and the assignee (or their attorneys) to have requested the recordal of that assignment.
- On 1 November 2016, new guidelines came into force, requiring that:
i) the “signatures of the parties (i.e. assignor and assignee) appear on the documents submitted as evidence of the transfer”; and
ii) a signatory, if signing on behalf of a corporate owner, must give their precise job title (i.e. “authorised representative” or “authorised signatory” is not sufficient).
What is the “problem and solution” approach before the European Patent Office? (4)
In the problem-and-solution approach, there are three main stages:
(i) determining the “closest prior art”,
The closest prior art is that which in one single reference discloses the combination of features which constitutes the most promising starting point for a development leading to the invention. In selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention.
(ii) establishing the “objective technical problem” to be solved
To do this one studies the application (or the patent), the closest prior art and the difference (also called “the distinguishing feature(s)” of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the closest prior art, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem.
Features which cannot be seen to make any contribution, either independently or in combination with other features, to the technical character of an invention cannot support the presence of an inventive step
(iii) 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.
In the third stage the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves
When is commercial success relevant to inventive step? (1)
Commercial success can be used as secondary evidence of inventive step if:
- it can be shown that there is evidence of a previous need for a solution to the particular problem
- the relevant prior art had been published for some time
- the commercial success was attributable to the technical features of the invention (an not, for example, advertising, marketing, distribution or business acumen).
- It has also been suggested that the ability to rely on commercial success depends on being able to isolate what it is that led to the commercial success.
- As such, it has been suggested that commercial success can only be relied on for simple invention.
“The commercial success of an invention can, in rare instances, be indicative of inventiveness.“ - Samuel Parkes v Cocker Bros (1929)
“a route may still be an obvious one to try even if it is not possible to be sure that taking it will produce success, or sufficient success to make it commercially worthwhile” - Brugger v Medic-Aid [1996]
“The fact that an invention is copied by a competitor does not suggest the patent is inventive, but it may be relevant to the issue of commercial success.” - Haberman v Jackel Intl.
“Small company without sales team more likely to suggest inventiveness than huge company.” - T 106/84 Packing Machine/MICHAELSEN [1985]
“Success in a short period of time in a number of countries might suggest inventiveness.” T 626/96 Commercial success/WATER TAP
On what issues in relation to a patent is it possible to get an Intellectual Property Opinion? What are the consequences of getting an opinion?
A patent proprietor or anyone else can get an opinion on:
- Whether a certain act would infringe
- Whether the patent fails to meet criteria for novelty / inventive step.
- Whether the patent application is a sufficiently enabling disclosure.
- Whether the patent application contains added matter.
- Whether a claim in a granted patent has been broadened.
- Whether an SPC is invalid
- An opinion is not binding but rather is designed to help parties focus on the key issues in a dispute and test the strength of their arguments, without committing them to a subsequent course of action. It is intended to help them to resolve actual or potential disputes over validity or infringement before positions become too entrenched.
- Ultimately, the process does not avoid the need for litigation. It will not stop commercial heavyweights using the legal process to grind down those with less resources, but it may bring smaller scale disputes to a swift conclusion where the parties have no appetite for a protracted legal battle.
- The new IPO patent process is not confidential or without prejudice. The decision of the examiner will appear on a public register for all the world to see. In practice, that decision is unlikely to be kept from the judge in subsequent litigation. As such, the decision of the examiner may set an expectation of how the litigation will ultimately turn out.
What are the four steps of the Aerotel/Macrossan [2006] EWCA Civ 1371 test relating to the patentability of computer programs? (x1)
Step 1) properly construe the claim;
Step 2) identify the actual contribution;
Step 3) ask whether it falls solely within the excluded subject matter;
Step 4) check whether the actual or alleged contribution is actually technical in nature.
What is the “trinity” applied for determining equivalents for the purposes of US claim construction. (x1)
Does the element of the accused invention perform:
- substantially the same function
- in substantially the same way
- to achieve substantially the same result
This assessment takes place at the time of infringement (so can include future developed technologies)
What are the four requirements for a patent to be granted according to Article 52 of the EPC?
Granted for any:
- inventions, in all fields of technology, provided that they are:
- new,
- involve an inventive step
- are susceptible of industrial application.
- are not excluded under s1(2) [AS SUCH], s1(3) or s4A.
I.e.
a. discoveries, scientific theories and mathematical methods;
b. LDMA & other aesthetic creations;
c. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
d. presentations of information.
What is meant by “prior use” under section 64 of the Patents Act 1977
Section 61(1) provides a defence for third parties who in the United Kingdom (or possibly the EEA) 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.
When, and one what grounds, can a patent be revoked in the United Kingdom by (a) the court; (b) by the European Patent Office?
Court/Comptroller
Section 72 1977 PA
When: Any time after granted
- The invention is not a patentable invention;
- The patent was granted to someone who was not entitled to it;
- The specification does not disclose the invention sufficiently;
- There is added matter which extends the scope of protection improperly;
- There was an improper amendment extending the scope of protection.
Double patenting?
European Patent Office
Article 100 EPC
When: Up to 9 months after the grant of a patent (during Opposition Proceedings). After this time, the patent must be individually revoked in the member states.
- The subject matter is not a patentable;
- The specification does not disclose the invention sufficiently;
- There is added matter which extends the scope of protection improperly.
When is an employee entitled to an invention as against his or her employer? (x5)
s7(4) - Presumption that applicant is the person entitled to the patent. [BUT]
Section 39 provides a ‘complete code’ for determining entitlement:
s39(1) - Notwithstanding any rule of law, belongs to employer if -
(a) made in the course of the normal/specifically assigned duties of the employee and circumstances such that an invention might reasonably be expected to result, or
(b) made in the course of the duties of the employee and, at the time of the invention, because of the nature of his duties and the particular responsibilities arising from that nature he had a special obligation to further the interests of the employer’s undertaking.
s39(2) - In all other cases, the invention belongs to the employee.
Employee inventions that fall outside these categories will belong to the employee.
What is the three stage test for establishing breach of confidence set out in Coco v Clark [1969] RPC 41?
Breach of confidence test required to establish a claim:
- information must have the “necessary quality of confidence”
- disclosed in a confidential relationship
- must be an unauthorised use of info that is detrimental to the one who disclosed it
[- Ocular Sciences (owner must be able to accurately define the secret!)]
Possibly superseded by the ‘reasonable recipient’ test for equitable obligation: if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this would suffice to impose upon him the equitable obligation of confidence.
When, and on what grounds, can a patent be revoked by the comptroller of his or her own motion?
Section 73
(1) If an invention of a granted patent formed part of the state of the art, the Comptroller may, on his own initiative, revoke the patent, but must give the patent proprietor an opportunity to make observations and to amend the specification so as to exclude any matter which formed part of the state of the art.
(2) If there is a double patenting issue (i.e. a UK patent and a EP(UK) patent have been granted for the same invention having the same priority date, and that the applications were filed by the same applicant or his successor in title), the comptroller must give the patent proprietor an opportunity to make observations and to amend the specification. If the proprietor fails to satisfy the comptroller, the patent shall be revoked.
(3) The comptroller shall not take the action above before—
(a) the end of the EP opposition period, or
(b) the date on which opposition proceedings are finally disposed of;
The comptroller shall not take action if:
- the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention.
When is a continuation application filed at the US Patents and Trademarks Office?
- filed before the earlier application is issued or abandoned
o provided that the:
• earlier application is a non-provisional application
• two applications have at least one inventor in common
• is no added matter issues
• continuation application references the earlier application
• patent application complied with the disclosure requirements.
What is excluded from patentability under art 53 of the European Patent Convention? (x3)
(a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; [BUT ]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; [BUT] this provision shall not apply to microbiological processes or the products thereof;
(c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; [BUT ]this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
What is secret prior use under s64 of the Patents Act 1977? (1)
(1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention—
(a) does in good faith an act which would constitute an infringement of the patent if it were in force, or
(b) makes in good faith effective and serious preparations to do such an act,
has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act.
(2) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may—
(a) authorise the doing of that act by any partners of his for the time being in that business, and
(b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.
What is the ‘on sale’ bar in the US? (1)
Allows a patented product to be sold/marketed before a patent is applied for, as long as application is made no later than 1 year after would-be infringing activity.
What does Article 4 of the Biotech Directive (98/44) deem to be unpatentable? (1)
- The following shall not be patentable:
(a) plant and animal varieties;
(b) essentially biological processes for the production of plants or animals. - Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.
- Paragraph 1(b) shall be without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process.
When will a patent be refused on the grounds that it is contrary to public policy? (1)
UK: s1(3) - a patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
This provision should only be invoked in the clearest cases, any genuine doubt should be exercised in favour of the applicant (Masterman’s Design)
UKIPO no longer grants patents for landmines (following 1998 Landmines Act)
EPO - Art 53(a) EPC, inventions contrary to ‘order public’ or morality.
Relevant case - Onco-Mouse in which the concept of a balancing act was introduced: weighing up suffering of animals and possible risks to environment and the usefulness of the invention to mankind (though think this is probably more of a morality example)
2018 What is the definition of a diagnostic method under the European Patent Convention? (1)
(c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
Diagnostic methods likewise do not cover all methods related to diagnosis. To determine whether a claim is directed to a diagnostic method within the meaning of Art. 53(c), it must first be established whether all of the necessary phases are included in the claim.
The claim must include method steps relating to all of the following phases:
(i) the examination phase, involving the collection of data,
(ii) the comparison of these data with standard values,
(iii) the finding of any significant deviation, i.e. a symptom, during the comparison,
(iv) the attribution of the deviation to a particular clinical picture, i.e. the deductive medical or veterinary decision phase (diagnosis for curative purposes stricto sensu).
Must be ON the human or animal body (so diagnostic methods applied to blood or tissue samples etc as separate from the body are not included)
Also, EQUIPMENT for diagnosis is usually patentable.
What has changed under EPC 2000 in relation to second medical use claims? (x1)
Prior to EPC 2000, methods of medical and veterinary treatment were excluded on the basis that they were not capable of industrial application. Under EPC 2000, methods of treatment are now directly excluded under Art 53(c) EPC 2000 (s4A(1) PA).
Pre-EPC2000
(Medical use = use in a method falling under s4A(1))
s4A(3) - allows for the first medical use of a known substance [Art54(5) EPC1973, Art54(4) EPC2000]
- interpreted to also allow second medical uses provided Swiss claim form used (Eisai allowed to claim a product for the manufacture of a medicament for a specified new, and inventive use. Applied in UK in Wyeth’s Application)
Post-EPC2000:
4A(4) explicitly allows for second medical uses which are novel and inventive [Art54(5) EPC2000]. Following G2/08 Swiss claims no longer allowed at the EPO
What are the requirements for a claim under section 14 of the Patents Act 1977? (x1)
The claim or claims shall—
(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.
A claim for infringement of a French patent was filed before the High Court. Can the court hear the claim? If not, why not? (x1)
Cannot hear on validity but can provide interim injunction.
EPC Art. 24 - Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State;
CJJA s25(2) - “(2) On an application for any interim relief under subsection (1) the court may refuse to grant that relief if, in the opinion of the court, the fact that the court has no jurisdiction apart from this section in relation to the subject matter of the proceedings in question makes it inexpedient for the court to grant it.”
The Court of Justice of the European Union has held in Solvay S.A. v Honeywell Fluorine Products Europe BV and Ors (Case C-616/10) that the exclusive jurisdiction rule (invoked when the validity of the patent is in question) does not preclude a court from invoking provisional measures ordering a defendant to stop infringing a patent on a pan-European basis (even if validity is challenged). Thus one national court may have jurisdiction in relation to provisional measures even where another national court would have jurisdiction as to the substance of the matter.
What is meant by honest prior use under section 64 of the Patents Act? (x1)
64.-(1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention - 52 (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.
What is the test for equivalents set out in Eli Lilly v Actavis [2017] UKSC 48? (x1)
(i) Does the variant infringe any of the claims as a matter of normal interpretation? (the same purposive construction test as Kirin Amgen - “what would the person skilled in the art have understood the author to mean?”)
(ii) If not, does the variant nonetheless infringe because it varies from the invention in a way which is immaterial?
(a) Does variant achieve “substantially the same result in substantially the same way”, i.e. the inventive concept of the patent?
(b) Is it obvious to the skilled person, at the priority date, knowing that substantially the same result is achieved, that it is achieved in substantially the same way?
(c) Would they have concluded that the patentee intended that “strict compliance with the literal meaning” of the claim was essential?
Generics v Yeda - DOES NOT APPLY TO NOVELTY ASSESSMENT DURING PROSECUTION.
When is a patent infringed by a product? (x1)
If the patent is a product patent:
(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;
If the patent is a process 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.
BUT note narrow reading of “keep“ (being a custodian without control over disposal is not enought [HArbottle v SKB]).
If the product has been ‘materially changed’ by means of a patented process, this will likely infringe the process patent.
Note exhaustion.
What are the three methods of assessing damages for patent infringement used by the English courts? (x1)
Lost sales: here the claimant makes and sells a product, the damages should be assessed on the basis of the profits lost by the claimant as a result of the infringement.
Lost license: where the claimant grants licenses to others to exploit his invention, damages should be calculated on the basis of the royalties the defendant would have paid, had he acted legally.
User principle: where it is not possible to prove either of the above damages will be assessed by considering what price could the claimant reasonably have been charged for permission to carry out the infringing acts, taking into account their bargaining positions (32 Red case). In other words a hypothetical negotiation takes place between the parties which results in them entering a hypothetical licencing agreement. The hypothetical licence fee will be the amount of damages awarded.
What is the purpose of a “choice of court” term and a “choice of law” term in a patent licence? (x1)
Via choice of law clause inserted into the general terms of business or a licensing agreement, a UK content provider may stipulate English law as the governing law. Such a choice of law would lead to a situation in which a foreign court would need to apply English law.
A choice of court clause allows the parties to agree that any disputes relating to that contract will be resolved in a specific forum.
What formalities are needed to mortgage a European patent (UK) under English law? (x1)
s30(6) - mortgage of a patent is void unless in writing and signed by the mortgagor
s36(3) - for joint ownership, person wishing to mortgage his share must get consent from other owners
When can proceedings be brought for a groundless threat of patent infringement? (x1)
s70(1) - when a person is aggrieved by a threat of proceedings for infringement
- that person doesn’t have to be the one threatened
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
When does a communication contain a “threat of infringement proceedings” within the meaning of section 70(1) of the Patents Act 1977? (x1)
A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—
(a) a patent exists, and
(b) a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the patent by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United Kingdom.
When is an employee entitled to compensation for developing an invention? (x1)
i. s40(1) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that -
i. s40(1)(a) the employee has made an invention belonging to the employer for which a patent has been granted,
ii. s40(1)(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
iii. s40(1)(c) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer,
the court or the comptroller may award him such compensation of an amount determined under section 41 below.
j. s40(2) - similar to s40(1), employee compensation if the benefit derived by the employee from the contract of assignment, assignation or grant or any ancillary contract is inadequate in relation to the benefit derived by the employer from the invention or patent for it.
Explain the differences between “first to file” and “first to invent” (x1)
First to file (UK) - first to file is entitled to patent
First to invent (old US) - first to invent (and “reduce to practice”) is entitled.
USA change to first-inventor-to-file (FITF) The America Invents Act signed on 16 September 2011, switched U.S. right to the patent from the previous “first-to-invent” system to a “first-inventor-to-file” system for patent applications filed on or after 16 March 2013.
What is needed to establish a claim of priority? (x1)
File within 12 months of the filing date of the application from which priority is claimed (+ PLT period - 2 month grace period (or more) if missed - unintentional/all due care )
- Priority application must have been filed in WTO or Paris Convention country
- Must be first filing
- Person claiming priority must be applicant for earlier application, or be successor in title:
- Must have assigned priority application before filing following applications
- Must have rights in priority application (not merely the invention)
- All applicants (if multiple) must consent to filing new application
- Must be same invention
Rule 6 - file a declaration of priority under s5(2) either on filing or, provided early publication has not been requested, before the expiry of 16 months from priority date - must specify date of filing and country of the earlier application
Rule 8 - must also furnish the Comptroller with the application number within 16 months from priority
An applicant who files a second application and wants to use it for priority purposes must therefore ensure that the first application has not been published or used to form the basis of a priority claim. He must also ensure that, at the time of filing the second application, the first application has been withdrawn, abandoned or refused “without leaving any rights outstanding”. On an application that has been refused by a decision of the comptroller, an outstanding right may be the right to appeal that decision, or the right to request reinstatement of the application under section 20A
SECTION 5(2A) RULE 6(2)(B) RULE 108 SCHEDULE 4
If the applicant has not made a request under section 16(1) to publish the application, priority can be claimed up to sixteen months from the earliest priority date. This period cannot be extended.
What is the period of priority under the Paris Convention and how does the Patent Law Treaty affect that period? (x2)
12 months beginning immediately after the date of first filing (inclusive rule). BUT ENDING ON A NON WORKING DAY BUMPS THE END OVER TO THE NEXT MONDAY. PLT gives at least 2 months (depends on implementation) if you can show that it was unintentional (IPO) or due care was taken (EPO).
PLT extends this by two months (provided preparations for publication have not been completed) if reasons are filed - member states can decide whether to make the test “in spite of due care required by the circumstances” (EPO) or “unintentional” (UK). Priority MUST be claimed at the time of application if using the PLT period.
What is needed to “renew” a priority date? (x1)
The specific conditions which must be met in order for the application in suit to use the second (or subsequent) earlier application as the basis for a priority claim are derived directly from Article 4C(4) Paris Convention, and are as follows:
(a) the second application was filed in or for the same country as the first application, and
(b) at the date of filing of the second application, the first application had been unconditionally withdrawn, or abandoned or refused, had not been published, and did not leave “any rights outstanding”, and
(c) at the date of filing of the second application, the first application had not been used for priority purposes for any other application.
In order to regenerate the priority date successfully, the applicant therefore needs to ensure that any such outstanding rights on the first application have explicitly been given up at or before the date of filing of the second application. For example, the applicant may make an explicit statement, on withdrawing the first application, that the withdrawal is done “without leaving any rights outstanding”. Making such a statement leaves open the possibility of filing a second application later and using it as the priority application. However, the statement would also seem to rule out the possibility of later making a request to correct the withdrawal of the first application. Another example may be where the first application has been treated as withdrawn. If the applicant wishes to regenerate the priority date, he will need to make clear (at or before filing the second application) that no rights are being left outstanding on the first application. Again, such a statement would seem to rule out the possibility of later making a request to reinstate the first application.
To what extent (if any) can the grant of a patent be opposed under (a) the Patents Act 1977 and (b) the European Patent Convention? (x3)
(a) S72(1) PA – The court or comptroller may revoke a patent on the application of any person.
Grounds:
a) not a patentable invention; PATENTABILITY
b) granted to a person who was not entitled to be granted that patent; ENTITLEMENT
c) the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art; SUFFICIENCY
d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent or, in certain cases, in the earlier application, as filed; ADDED MATTER
e) the protection conferred by the patent has been extended by an amendment which should not have been allowed. AMENDMENT ADDED MATTER
(b) A99 - EPO central opposition by any person within nine months of grant.
A100 - Grounds:
a) not a patentable invention; PATENTABILITY
b) the patent does not disclose the invention clearly and completely enough for it to be carried out by a person skilled in the art; SUFFICIENCY
c) the subject-matter of the patent extends beyond the content of the application as filed, or if the patent was granted on a divisional or replacement application, beyond the content of the earlier application as filed. ADDED MATTER
What types of search are available under the Patent Cooperation Treaty? (x1)
Art 15 PCT - ISA will establish a Search Report and preliminary non-binding written opinion within 3 months of receiving the search copy or 9 months from priority
Rule 45bis - may request one or more supplementary international searches, which are carried out by an ISA other than the ISA which carried out the first international search
Who can hear patent infringement cases? (x1)
High Court (Patents Court and IPEC within the High Court!) - remedies are damages, declarations of infringement, account of profits, delivery up, injunctions.
Comptroller cannot award the equitable remedies, hence only damages and declarations.
If identical patent applications are filed under EPC and UKIPO, what options does an applicant have in case of grant?
Not possible to have both an EP(UK) and UK patent for the same subject matter.
It is not possible to withdraw the UK designation after grant of the European patent. Nor does s.73(2) allow the comptroller discretion instead to revoke the European patent (UK).
One way envisaged by s.73(2) to avoid revocation of the UK patent is to amend the specification of the UK patent to remove the conflict, but this can only be done before grant.
If the EP(GB) has not yet granted but the UK has, then the EP(GB) can be surrendered (remove the UK designation).
What is international preliminary examination under the PCT?
The provision of a preliminary and non-binding opinion [by the IPEA] on whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable as defined in Article 33 PCT
Happens on request from inventor via filing of a demand (thus optional – part of Chapter II).
Results in an international preliminary report on patentability (IPER)
The prior art for the examination uses search against published PCT minimum. There is NO search against disclosure by use. The IPER does not need to be accepted by elected offices.
List two conditions under UK law where a public disclosure will not defeat novelty
s2(4)
The disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person.
The disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.
What do you understand by priority date
Date of filing of the application, or date of filing of earlier relevant application.
The date at which novelty and inventiveness of the application are assessed.
Defines various timelines (e.g. publication at 18 months).
Means you can file a first (priority application) in a Paris Convention or WTO state, and file a subsequent application for the same subject matter in another Paris Convention or WTO state, using the date of filing of the priority application as the effective date of filing in the second application
Under US law, what is prosecution file wrapper estoppel?
File wrapper estoppel essentially means that when an inventor during prosecution narrows down his/her invention to escape prior art by some amendment, s/he cannot claim that someone else infringed his/her patent under the doctrine of equivalence. The doctrine of file wrapper estoppel was developed in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 128 S. Ct. 2903 (U.S. 2008).
What is the effect of the London Agreement in (a) the United Kingdom; (b) Finland; (c) Iceland?
UK – no translation requirements for EP(GB) to enter into force.
Finland – claims in Finnish, but no requirement to translate rest of patent if in English.
Iceland - claims in Icelandic, but no requirement to translate rest of patent if in English.
The London Agreement distinguishes between (1) states having an official language in common with one of the official languages of the EPO (English, French and German) and (2) states having no official language in common with one of the official languages of the EPO.
- States having an official language in common with one of the official languages of the EPO dispense with translation requirements under Article 65(1) EPC (Article 1(1) of the London Agreement): France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland, United Kingdom.
- States which do not have an official language in common with one of the official languages of the EPO may require that a translation of the claims into one of their official languages be supplied (Article 1(3) of the London Agreement). These dispense with further translation requirements if the European patent has been granted in an official language of the EPO prescribed by them, or translated into that language and supplied under the conditions provided for in Article 65(1) EPC (Article 1(2) of the London Agreement): Albania (Albanian), Croatia (Croatian), Denmark (Danish), Finland (Finnish), Hungary (Hungarian), Iceland (Icelandic), Netherlands (Dutch), Norway (Norwegian), Sweden (Swedish).
What is the difference in scope between the ground of opposition for sufficiency under Art 100 of the EPC and revocation on the same grounds under section 72 of the Patents Act 1977?
EPC:
(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 manner 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 the earlier application as filed.
UK adds lack of entitlement to grant of the patent.
What occurs during formal examination and what happens during substantive examination?
After filing, the first stage of examination is the preliminary or formalities exam. Here the application is assessed to see whether it complies with certain formal requirements. These include that the application contains a request for grant, a description of the invention, one or more claims, any drawings referred to in the specification and an abstract.
Once the requirements of the preliminary exam have been satisfied, the next stage is the substantive examination. The purpose of the substantive examination is to ascertain whether it consists of excluded subject matter, is novel, has an inventive step and is industrially applicable. The substantive exam also checks whether the invention is sufficiently disclosed and that claims are concise and supported by the description.
2012 In what circumstances can a reference be made to the Enlarged Board of Appeal at the
European Patent Office by a Technical Board of Appeal?
(1) In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:
(a) the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision;
(b) the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.
(2) In the cases referred to in paragraph 1(a) the parties to the appeal proceedings shall be parties to the proceedings before the Enlarged Board of Appeal.
(3) The decision of the Enlarged Board of Appeal referred to in paragraph 1(a) shall be binding on the Board of Appeal in respect of the appeal in question.
A patent application is terminated on 6 th January 2012 for failing to pay the search fee. What
is the time limit for the applicant to apply for reinstatement? And what must the applicant
establish to get the application reinstated before the UK Intellectual Property Office?
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.
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.
(2) For this purpose the relevant period is—
(a) two months beginning immediately after the date on which the removal of the cause of non-compliance occurred; or
(b) if it expires earlier, the period of twelve months beginning immediately after the date on which the application was terminated.
s20A(2) - the Comptroller shall reinstate the application if, and only if,
a) the applicant requests him to do so;
b) the request complies with the relevant requirements of rules; and
c) he is satisfied that the failure to comply referred to in subsection (1) above was unintentional.
When is an application published under the EPC? And when will the rights conferred by publication come into being in the United Kingdom?
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.
At what stage in the prosecution of an application does a patent applicant get rights in relation to the invention?
S69 - At publication (18m), but can’t exercise them until after grant [s69(2)(a)]
- from publication until grant, applicant has same right as he would have had if the patent had been granted at the date of publication to bring proceedings for damages (so long as the act falls within the claims both as published and as granted - s69(2)(b))
- in considering the amount of damages, the court may consider whether or not it would have been reasonable to expect from a consideration of the application as published that the granted patent would cover that act – s69(3)
Limitation period (6 years) will run from when infringing act occurs and not from publication (Sevcon v Lucas)
What is the significance of publication of a patent application and when does publication occur?
s16 - As soon as possible after 18 months. Confers rights under s69 (damages) provided that the matter is contained in both the patent as granted and the patent as published.
What is required to obtain a date of filing under the European Patent Convention? (x2)
(1) The date of filing of a European patent application shall be the date on which the documents filed by the applicant contain:
(a) an indication that a European patent is sought;
(b) information identifying the applicant or allowing the applicant to be contacted; and
(c) a description or reference to a previously filed application.
(2) A reference to a previously filed application under paragraph 1(c) shall state the filing date and number of that application and the Office with which it was filed. Such reference shall indicate that it replaces the description and any drawings.
(3) Where the application contains a reference under paragraph 2, a certified copy of the previously filed application shall be filed within two months of filing the application. Where the previously filed application is not in an official language of the European Patent Office, a translation thereof in one of these languages shall be filed within the same period. Rule 53, paragraph 2, shall apply mutatis mutandis.
What is required to establish a date of filing under the Patent Co-operation Treaty?
(1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.
Identify three languages of publication under the Patent Cooperation Treaty which are
NOT also official languages of the European Patent Office.
PCT languages: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish
EPO languages: French, English, German
In an entitlement dispute, what is required for somebody to be considered an inventor?
Not enough just to look at who contributed to the claims. They must have contributed to the inventive concept (Rhone Poulenc v Yeda)
When can a patent application be reinstated?
s20A(2) - the Comptroller shall reinstate the application if, and only if,
a) the applicant requests him to do so;
b) the request complies with the relevant requirements of rules; and
c) he is satisfied that the failure to comply referred to in subsection (1) above was unintentional.
When is the end of the period for entering the national phase in: (a) the United Kingdom; (b) Luxembourg; (c) Canada; and (d) what is the minimum period permitted under the Patent Cooperation Treaty (absent a derogation by a Contracting State)?
The UK allows 31 months from the priority date for international applications to enter the national phase.
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.
Canada at 30 months unless a fee is paid enabling late entry up to 42 months.
The minimum period is 30 months except for states which have derogated due to incompatibility with national law (e.g. Luxembourg).
Where the applicant makes an express request for early processing of the international application (see paragraphs 2.006 and 3.004) before the communication of the international application has taken place, he must either furnish a copy of the international application, and of any amendment filed under Article 19 with the International Bureau, at the same time as he makes the express request for early processing to the designated Office or request the International Bureau to transmit a copy of his international application to the designated Office in accordance with Article 13(2)(b). The other acts prescribed for entering the national phase must naturally also be complied with.
What happens during… the “national phase” of an international application?
“National phase” begins either when the applicant expressly request it (section 89A(3)(b)) or at the end of the prescribed period (31 months from declared priority date in UK / EPO).
The UKIPO then republish the application and it then proceeds under the UK Act to an optional search (section 17) and substantive examination (section 18).
An application for a patent was filed in Australia on 11 th January 2008. Can priority be
claimed from that application at the UK IPO on: (a) Thursday 18 th December 2008; (b) Monday 12th January 2009; (c) Wednesday 4 th January 2009.
s5(2A)(a) Priority can be claimed within the period of twelve months immediately following the date of filing of the earlier specified relevant application (or if there is more than one, of the earliest of them)
s5(2B) The applicant may make a request to the comptroller for permission to make a late declaration.
Rule 6(2)(b) Any late declaration must be made before the end of the period of sixteen months beginning immediately following the date of filing of the earlier relevant application (or if there is more than one, the earliest of them).
Art. 4 C (3) Paris Convention - If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
(a) Yes, within 12 months immediately following the date of filing of the earlier application – s5(2A)(a)
(b) If the national office was closed on the final day, then payment may be made on the working day following. Even if this is not the case in this instance, the applicant may make a request to make a late declaration of priority under s5(2B) within 14 months provided that the failure to file a declaration within the 12 month period was unintentional. PRIORITY MUST BE DECLARED ALONG WITH THE APPLICATION WHEN USING THE PLT LATE PERIOD.
(a) Yes, within 12 months immediately following the date of filing of the earlier application – s5(2A)(a)
Where an employer has filed a patent application for his or her employee’s invention, when is he entitled to be granted the patent (and when is the employee entitled)?
s7(4) - Presumption that applicant is the person entitled to the patent
s39(1) - Notwithstanding any rule of law, belongs to employer if -
(a) made in the course of the normal/specifically assigned duties of the employee and circumstances such that an invention might reasonably be expected to result, or
(b) made in the course of the duties of the employee and, at the time of the invention, because of the nature of his duties and the particular responsibilities arising from that nature he had a special obligation to further the interests of the employer’s undertaking.
s39(2) - In all other cases, the invention belongs to the employee.
Where a patent is invalid, what defences are there to a claim of unjustified threats under section 70 of the Patents Act 1977?
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
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
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.
What are the provisions of Article 5 of the Biotech Directive (98/44) ?
- The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions.
- An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.
- The industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application.
What are the four requirements for a patent to be granted according to section 1 of the Patents Act 1977?
(a) Novel
(b) Inventive
(c) Capable of industrial application
(d) Not excluded under s1(2), (3) or s4A
Under the European Patent Convention, what constitutes the “state of the art”?
s2(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
s2(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 and which were published on or after that date, shall be considered as comprised in the state of the art.
In relation to an international application for a patent, what are the following: ‘international preliminary examination’, ‘international phase’, ‘regional phase’ and ‘national phase’?
“International preliminary examination” - Chapter II of PCT provides a non-binding substantive examination of the patent against prior-art. This is optional and must be elected by the applicant (where it is not requested the application ends the international phase after the issue of the international search report).
“International phase” - the 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. During this phase the formalities are examined and then an international search report is produced (now with an additional opinion). The applicant is given a chance to amend the application after which it is published.
“Regional phase” - this is the same as the national phase, but relates to applications made which designate regional offices: e.g. the EPO, Euroasian PO (mainly former Soviet bloc), Gulf Co-operation Council (Middle East), OAPI (African)
- “National phase” this begins either when the applicant expressly request it (section 89A(3)(b)) or at the end of the prescribed period (31 months from declared priority date). The UK PO then republished the application and it then proceeds under the UK Act to search (section 17) and substantive examination (section 18).
