UK Law Links

Question 1

Employee inventions

Answer 1

• S40(1) taking into account size and nature of employer’s undertaking (might be hard to determine without numbers eg licence fees)
• Patent must be granted to seek compensation.

Question 2

S2(3) prior art

Answer 2

• Only S2(3) prior art once published.
• Can use undisclosed disclaimers.
• Is there an infringement risk?

Question 3

Filing formalities

Answer 3

• Description plus drawings
• claims / abstract / app fee / search req / search fee
• PF7 (if req) cert. copies of p.d. (if req)

Question 4

Entitlement

Answer 4

• who can bring proceedings

* entitlement and revocation are different actions

Question 5

Form + Fee

Answer 5

• PF1 filing
• PF2 initiate proceedings
• PF3 late priority
• PF7 statement of inventorship
• PF9A search request
• PF10 exam request
• PF12 renewal payments
• PF14 reinstatement
• PF16 restoration
• PF17 request opinion
• PF21 recordal of transfer
• PF51 appoint agent
• PF52 request e.o.t.

Question 6

Renewals late period

Answer 6

• costs increase per month

* discretionary damages!

Question 7

Restoration

Answer 7

• 3rd party rights
• file ASAP to minimise risk of 3rd party rights
• end of grace period to publication of restoration request
• did UKIPO send notification of missed fee

Question 8

Unintentional

Answer 8

• it may be necessary to assess the intention (especially for missed priority filings / NP entries)

Question 9

Meetings

Answer 9

• confidential

* ask for minutes / notes / slides

Question 10

Ownership

Answer 10

• check all contractual obligations and assignments

* check time of inventing vs formation/joining of company

Question 11

UKIPO error

Answer 11

• Extension - 3rd party rights are at Comptroller’s discretion

Question 12

Granted patent

Answer 12

• Immediately enforceable

* Check renewal payments

Question 13

Injunction

Answer 13

• Interim OR Final

Question 14

Groundless threats

Answer 14

• Settle?

* Is there a need to accelerate?

Question 15

Design exclusions

Answer 15

• Functional parts (reg = no; unreg = yes)

* Normal use view (reg = yes; unreg = no)

Question 16

Lack of priority

Answer 16

• Not necessarily catastrophic!

Question 17

Product launch

Answer 17

• FTO??

* interim injunction risk?

Question 18

Divisionals (filing)

Answer 18

• must identify as divisional
• exam request based on parent’s publication
• PF7 always required

Question 19

Third party observations

Answer 19

• You don’t become party to proceedings

Question 20

Certificates

Answer 20

• Grant certificate
• Declaration of validity & infringement
• Cert. of contested validity
• Dec. of unjustified threat
• Dec. of non-infringement
• Cert. of not being an inventor

Question 21

Multiple applications by same owner

Answer 21

Question whether priority claims are valid!!

Question 22

Revocation/surrender

Answer 22

Revocation ex tunc (never existed)

Surrender ex nunc (existed until surrender)