Short answer questions

Question 1

What constitutes “services of the Crown” for the purposes of the Crown use provisions?

Answer 1

Section 56(2) defines ‘services of the Crown’ as including:

• the supply of anything for foreign defence purposes (further defined in section 56(3));
• the production or supply of specified drugs or medicines (further defined in section 56(4)); and
• certain purposes relating to the production and use of atomic energy or research into matters therewith as the Secretary of State thinks necessary or expedient.

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.

Question 2

Explain how “absolute novelty” is different from “relative novelty” and “local novelty”.

Answer 2

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.

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).

Question 3

What are the categories of subject matter excluded from patentability under section 1(2) of the Patents Act 1977?

Answer 3

Section 1(2) of the 1977 Act (equivalent to Art 52(2) EPC) includes the following non-exhaustive list of creations deemed not to be inventions:
(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;
to the extent that a patent or application for a patent relates to that thing as such.

Question 4

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?

Answer 4

According to section 48A, a compulsory license (i.e. a license granted against the patentee’s will) may be granted where:

(i) demand in the UK for a patented product is not being met on reasonable terms;
(ii) the owner’s failure to license a patent on reasonable terms has a blocking effect on later improvements;
(iii) the owner’s failure to license the patent on reasonable terms unfairly prejudices the establishment or development of commercial or industrial activities in the UK; or
(iv) as a consequence of limitations on the grant of licenses under the patent on the disposal or use of the patented product, or the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of industrial activities in the UK is unfairly prejudiced.

Question 5

What are the four steps in the Pozzoli/Windsurfing approach?

Answer 5

(i) Who is the notional skilled person? This involves identifying the relevant common general knowledge.
(ii) What is 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, 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?

Question 6

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

Answer 6

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: “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.

Question 7

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.

Answer 7

(a) 2 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.

Question 8

9. 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?

Answer 8

Grounds of Revocation
Patents Act 1977: Section 72
In the UK can be brought before the Court or Comptroller. Opinions on validity are available from the patent office.
(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

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.

Question 9

What formalities are needed to assign a European patent (UK) under English law?

Answer 9

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.

Question 10

When will third party rights exist under a patent (identify each of the cases)?

Answer 10

1. Private and non-commercial use
2. Experimental use
3. Medical regulatory use
4. Prior use
5. Exhaustion of biological patents

Question 11

12. 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?

Answer 11

B relates to an invention which may be prejudicial to national security or public safety according to section 22 PA 1977. Therefore the applicant must file the application at the UKIPO at least 6 weeks before filing the international application, or else have written permission from the comptroller in accordance with section 23. Under section 23 Patents Act 1977, no person resident in the UK shall, without written authority granted by the comptroller, file or cause to be filed outside the UK and application for a patent for an invention which (i) contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security or the application contains information which might be prejudicial to the safety of the public, unless an application for a patent for the same invention has been filed in the IPO not less than 6 weeks before the application outside the UK, or no directions have been given under section 22.

Although it is unlikely that the same restrictions would apply to A, the entire specification must be assessed to see whether it discloses information that would be subject to a restriction.

Question 12

What limitations are faced by co-owners of patents but not sole proprietors?

Answer 12

According to section 36 Patents Act 1977, where a patent is granted to two or more persons, each of the proprietors shall not without the consent of the other(s);

• amend the specification of the patent or apply for such an amendment to be made
• apply for revocation
• grant a licence under the patent
• assign
• mortgage a share in the patent

Question 13

When is an employee entitled to an invention as against an employer?

Answer 13

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.

Question 14

What is the period of priority for a patent application under the Paris Convention and how does the Patent Law Treaty affect that period?

Answer 14

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.

Question 15

When might a biotechnology invention be contrary to ordre public under Directive 98/44/EC (Patents Act 1977, Sch A2)?

Answer 15

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.

2. 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.

Question 16

What is a divisional application and when might it be filed?

Answer 16

A divisional patent application is one created when a ‘parent’ application is divided in order to seek protection for subject matter disclosed, but not (or no longer) claimed, in the parent application.

A properly filed divisional retains the filing and priority date of the parent application, but thereafter is treated independently.

A European divisional application is limited to member states designated in the parent application at the time the divisional was filed.

A divisional application may be filed in respect of any pending earlier European patent application.

An application is pending up to (but not including) the date on which the European Patent Bulletin mentions the grant of the European patent or the date on which the application is finally refused, withdrawn or deemed to be withdrawn.

After an application has been refused, a divisional application may be validly filed until the expiry of the appeal period, regardless of whether an appeal has been filed or not.

Question 17

When will the rights in a patent be exhausted within the EU?

Answer 17

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.

Question 18

What is the test for sufficiency?

Answer 18

According to Art 83 EPC, a specification must disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art. To assess sufficiency, we use a two stage test:

1. ask whether the specification would enable the skilled person to put the invention into effect.
2. 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).

Question 19

What is ‘innocent infringement’ under section 62 of the Patents Act 1977?

Answer 19

Section 62 Patents Act 1977 states that a person is an innocent infringer it can be proven that on the date of infringement they were not aware and had no reasonable grounds for supposing that the patent existed.

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).

Question 20

What are the consequences of not registering the assignment of a patent in United Kingdom law?

Answer 20

Whilst the validity of a patent assignment does not depend on whether or not it has been registered, according to section 68 PA 1977, if an assignee fails to register the assignment of a patent within six months of the transaction (except in extenuating circumstances), the assignee will not be awarded costs or expenses in proceedings relating to infringement, where the infringement occurred before the assignment was registered.

Question 21

When is an application published under the EPC? And when will the rights conferred by publication come into being in the United Kingdom?

Answer 21

Applications will be published and made available for public inspection 18 months from the date of filing (or as soon as possible thereafter). If an application proceeds to grant, the date of publication is the date from which the patentee is able to sue for infringement of the patent. This is on the condition that the act would have infringed both the patent as granted and the claims in the form in which they were published. In these circumstances, the patentee is only entitled to damages for infringement in the period between publication and grant.

If the publication is not in English, a translation of the claims must be filed at the IPO (or provided to the infringer) before the rights come into being.

Question 22

When does an international application enter into the national phase: (a) in the United Kingdom; and (b) in Luxembourg.

Answer 22

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.

Luxemburg 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 Luxemburg within 31 months from the priority date, regardless of whether the applicants chose to follow the Chapter I or Chapter II route.

Question 23

What is a ‘licence of right’ and why might an inventor want to make such licences available?

Answer 23

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 be used to show that the proprietor is not acting anti-competitively. Licenses of right halve the renewal fees payable.

Question 24

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.

Answer 24

(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.

Question 25

Explain in summary the stages of the “problem-and-solution” approach at the European Patent Office?

Answer 25

1. Determining the “closest prior art”
   The closest prior art will, in a single reference, disclose the combination of features which constitutes the most promising starting point for a development leading to the invention. This document must be assessed from the skilled person’s point of view on the day before the filing or priority date valid for the claimed invention.
2. Establishing the “objective technical problem” to be solved
   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
3. Considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

Question 26

What checks are performed by the receiving Office under the Patent Cooperation Treaty?

Answer 26

1. In a prescribed language
2. 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
3. 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
4. An abstract, drawings, sequence listing or biological deposits (if necessary)

Question 27

What is required to establish a date of filing under the Patents Act 1977?

Answer 27

1. documents to indicate that a patent is sought
2. documents to identify the person applying for the patent (or information sufficient to enable that person to be contacted by the patent office)
3. documents contain either:
   a. something that appears to be a description of the invention for which a patent is sought (not necessarily in English); or
   b. a reference, complying with the relevant requirements of rules, to an earlier application made by the applicant or his predecessor.

Question 28

What are the remedies available to a claimant in infringement proceedings (a) before the Patents County Court; and (b) before the comptroller?

Answer 28

Court: injunction, damages, account of profits, declaration, or delivery up
Comptroller: damages or declaration

Question 29

When will an international application for a patent enter the national phase in the United Kingdom? And when would translations be required?

Answer 29

• Under the Paris Convention (Article 4C), the application must enter into the UK national phase within 31 months from priority date
• (although the applicant can elect to enter the phase 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).

Question 30

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)?

Answer 30

• Distinct
• Uniform
• Stable
• New

Question 31

What does Article 6 of Directive 98/44 on the legal protection of biotechnology provide?

Answer 31

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.
2. 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.

Question 32

What is the term of a patent under the Patents Act 1977? And from what day is that term calculated?

Answer 32

• 20 years from the date of filing (NOT priority).
• This is dependent on the payment of annual renewal fees.
• Duration can be increased by a maximum of 5 years for medicinal products and agrochemicals with marketing authorisation.
• A further 6 months paediatric extension may also be gained.

Question 33

What acts constitute the direct infringement of a patented product?

Answer 33

Direct infringement of a product patent (section 60(1)(a)):

1. make
2. dispose of
3. offer to dispose of
4. use
5. import
6. keep, whether for disposal or otherwise
7. while the patent is in force
8. without the consent of the proprietor
9. supplies or offers to supply
10. in the United Kingdom

Question 34

What acts constitute the direct infringement of a patented process?

Answer 34

Direct infringement of a process patent (section 60(1)(b)(c):
1. uses the process
2. or offers it for use
3. in the United Kingdom
4. when he knows, or it is obvious to a reasonable person in the circumstances,
5. that its use without the consent of the proprietor would be an infringement of the patent
or he:
6. disposes of,
7. offers to dispose of,
8. uses or
9. imports
10. any product obtained directly by means of that process or
11. keeps any such product whether for disposal or otherwise

Question 35

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

Answer 35

• 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

Question 36

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

Answer 36

• 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.

Question 37

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

Answer 37

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).

Question 38

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

Answer 38

1. Application filed at a competent receiving office by a resident/national of a PCT contracting state or using a strawman
2. Assigned a filing date
3. Receiving Office transmits a record of the application to the IB
4. The ISA conducts a search (only for written disclosure, not use)
5. ISA writes compiles a search report and written opinion, which becomes the IPRP (Chapter 1), unless a chapter 2 report is given.
6. Optional: can request a supplementary international search within 9 months of priority date
7. Publication takes place 18 months after the priority date.
8. 10 languages: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish
9. In the optional Chapter 2, the applicant can file a Demand for the International Preliminary Examination Authority to conduct a International Preliminary Examination
10. Ends when it enters the national/regional phase (typically 30 months from priority, 31 months for UK and EPO)

Question 39

What defences to patent infringement were introduced in the United Kingdom to give effect to the Biotech Directive (98/44/EC)?

Answer 39

• Art 10 Biotech Directive (exhaustion of biological patents)
  o 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.
• Art 11(1)-(2) Biotech Directive (farmer’s privilege)
  o 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.
  • 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.
  • 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; it does not include ‘sale within the framework, or for the purposes of a commercial reproductive activity.’

Question 40

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

Answer 40

• 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.

Question 41

What things are deemed not to be inventions under s. 1(2) of the Patents Act 1977?

Answer 41

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.

Question 42

What is the difference between German utility model protection and that for German patents?

Answer 42

• 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.

Question 43

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?

Answer 43

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.

Question 44

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?

Answer 44

• the requirements of section 20A are met
  o i.e. the applicant requests reinstatement; the request complies with the relevant requirements of rules; and the Comptroller is satisfied that the failure to comply was unintentional; and
• the requirements of rule 32 are met
  o the relevant period is twelve months beginning immediately after the date on which the application was terminated, the applicant must file evidence in support of that request.

Of note, if the compliance period was, for example, for responding to an examination report, and the application is reinstated, the application cannot be amended. The compliance period itself does not extend.

Question 45

What is the difference between an exclusive licence, a sole licence and a non-exclusive patent licence?

Answer 45

An Exclusive Licence means that no person or company other than the named licensee can exploit the relevant intellectual property rights. Importantly, the licensor 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.
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)

Question 46

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

Answer 46

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.

Question 47

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

Answer 47

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.

Question 48

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

Answer 48

1. Disclosure not to be taken into consideration in determining novelty and inventive step if it occurred within six months before the filing date:
   (a) against the will of the person having the right to obtain a patent; or
   (b) as a result of an act of the person having the right to obtain a patent (excluding the case in which it has been disclosed through the publication in the bulletin pertaining to inventions, utility models, designs or trademarks).
2. 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

Question 49

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

Answer 49

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

Question 50

What is the ‘library principle’?

Answer 50

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)

Question 51

When can a patent’s term be extended under Japanese law?

Answer 51

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.

Question 52

16. What formalities are required to assign
    (a) a European patent (UK);
    (b) a European patent application?

Answer 52

UK

• the assignment must be in writing and signed on behalf of the assignor
• no requirement for registration
• Registration of an assignment is not mandatory. However:
• if the registered proprietor enters into a later, inconsistent 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).

Question 53

What is the “problem and solution” approach before the European Patent Office?

Answer 53

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

Question 54

When is commercial success relevant to inventive step?

Answer 54

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.

Question 55

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?

Answer 55

• The opinion service allows anyone to ask the Intellectual Property Office for an opinion on an issue of validity or infringement of a granted patent or SPC.
• Designed to give parties who are involved in a dispute access to an impartial and affordable authoritative assessment of the main issues in contention.
• 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.

Question 56

What are the four steps of the Aerotel/Macrossan [2006] EWCA Civ 1371 test relating to the patentability of computer programs?

Answer 56

1. construe the claim
2. identify the contribution
3. Does the contribution fall within one of the excluded categories?
4. check to see whether the invention is technical

Question 57

What is the “trinity” applied for determining equivalents for the purposes of US claim construction.

Answer 57

Does the element of the accused invention perform:
1. substantially the same function
2. in substantially the same way
3. to achieve substantially the same result
This assessment takes place at the time of infringement (so can include future developed technologies)

Question 58

What are the four requirements for a patent to be granted according to Article 52 of the EPC?

Answer 58

Granted for any:
1. inventions, in all fields of technology, provided that they are
2. new,
3. involve an inventive step and
4. are susceptible of industrial application.
This necessarily excludes, in particular, the categories stated in Art 52(2) as such.

I.e.

a. discoveries, scientific theories and mathematical methods;
b. aesthetic creations;
c. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
d. presentations of information.

Question 59

What is meant by “prior use” under section 64 of the Patents Act 1977

Answer 59

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.

Question 60

When, and one what grounds, can a patent be revoked in the United Kingdom by (a) the court; (b) by the European Patent Office?

Answer 60

Court/Comptroller
Section 72 1977 PA

When: Any time after granted

1. The invention is not a patentable invention;
2. The patent was granted to someone who was not entitled to it;
3. The specification does not disclose the invention sufficiently;
4. There is added matter which extends the scope of protection improperly;
5. 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.

1. The subject matter is not a patentable;
2. The specification does not disclose the invention sufficiently;
3. There is added matter which extends the scope of protection improperly.

Question 61

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

Answer 61

Section 39 provides a ‘complete code’ for determining entitlement. In particular, an invention will belong to an employer if:

(c) 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
(d) 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.

Question 62

What is the three stage test for establishing breach of confidence set out in Coco v Clark [1969] RPC 41?

Answer 62

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

1. the information is capable of being protected
2. • the defendant owes that claimant an obligation to keep the information confidential
3. the defendant used the information in a way that breached that duty
   * Possibly superseded by the ‘reasonable recipient’ test

Question 63

When, and on what grounds, can a patent be revoked by the comptroller of his or her own motion?

Answer 63

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.

Question 64

When is a continuation application filed at the US Patents and Trademarks Office?

Answer 64

• 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.

Question 65

What is excluded from patentability under art 53 of the European Patent Convention?

Answer 65

(a) inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
(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.