U.K. Patent Law

Question 1

How can a valid patent in the U.K. be obtained?

Answer 1

1) by applying to the U.K. IPO
2) by applying to the EPO under the EPC (this gives a bundle of national patents, not an EU-wide patent)
3) via an international patent under the Patent Co-operation Treaty 1970 (PCT)

Question 2

Who is usually the person entitled to apply for a patent?

Answer 2

The inventor (s.7(2)(a) Patents Act 1977)

Question 3

Who is usually the person eligible to register the invention when more than one party has contributed?

Answer 3

The party who contributed to the main concept of the invention.

(Henry Bros Ltd v MoD)

Question 4

Who is the person entitled to register an invention when an employee makes the invention in the course of his duties?

What is the relevant test?

Answer 4

If an employee makes an invention in the course of his duties then it will belong to his employer (s.39 PA 1977) but only if:

1) The invention might reasonably be expected to result from his duties, or
2) The employee had a special duty to further his employer’s interests.

Question 5

Can an employee contract out of the provisions of s.39 - an employer’s entitlement to register an invention?

Answer 5

No (s.42 PA 1977).

Question 6

Which four criteria must be satisfied in order to register a patent?

Answer 6

1) The invention must be new (s.1(1)(a) PA 1977)
2) It must involve an inventive step (s.1(1)(b) PA 1977)
3) It must be capable of industrial application (s.1(1)(c) PA 1977)
4) It must not be excluded by ss.1(2) or (3) PA 1977 (s.1(1)(d) PA 1977).

Question 7

What is the definition of a new invention?

2 part answer

Answer 7

An invention is new if it does not form part of the state of the art (s.2(1) PA 1977).

If another patent would allow a skilled person to create the supposedly new product/process then it is not new (Synthon v SmithKiline).

Question 8

What is the definition of ‘state of the art’?

Answer 8

It is all matter that is available to the public before the invention’s priority date (s.2(2) PA 1977).

Question 9

What is the ‘priority date’ of a patent?

Answer 9

This is the date that the application for the patent to be registered was filed (s.5(1) PA 1977).

Question 10

What does s.5(2) of the PA 1977 provide for?

Answer 10

It allows for an application to the claim the priority date of an earlier application (filed within the proceeding 12 months), so long as the latter application is supported by matter disclosed in the earlier application.

Question 11

What does an ‘outline application’ enable an inventor to do?

2 part answer

Answer 11

It allows the inventor to file a less detailed application at an early stage in order to secure an earlier priority date (s.15 PA 1977).

The inventor must file a full application within 12 months.

Question 12

What is the test for an ‘inventive step’?

Answer 12

An invention involves an inventive step if it is not obvious to a person skilled in the art (s.3 PA 1977).

Question 13

What is the definition of a person skilled in the art?

Answer 13

The experienced but not unimaginative technician.

Question 14

What is the test for obviousness (i.e., inventive step)?

Answer 14

This was set out in Pozzoli (aka the windsurfing case):

1) Identify the notional person skilled in the art,
2) Identify what common knowledge that person would have at the priority date,
3) Identify the inventive concept of the product or process,
4) Identify the differences between this invention and the state of the art,
5) Ask whether those differences are obvious to the person skilled in the art.

Question 15

Can the use of established techniques to make/perform something new, satisfy the requirement for an inventive step?

Answer 15

Yes (Biogen v Madeva).

Anything done for the first time which is the result of adding a new idea to the existing stock of knowledge is sufficient.

Question 16

What is the test for determining whether an invention is capable of industrial application?

Answer 16

Can the invention be made or used in any kind of industry (s.4 PA 1977).

Question 17

What type of inventions are excluded by s.1(2) PA 1977?

Answer 17

1) Scientific discoveries - i.e., discoveries of natural phenomena.
2) LDMA works

Question 18

Are computer programs excluded under s.1(2) PA 1977?

Answer 18

In theory computer programs are excluded under s.1(2)(c) PA 1977.

However, if the computer program brings about some effect or consequence that, itself, as distinct from the computer program, is new and shows an inventive step, then that is sufficient (Vicom’s Application).

Question 19

What type of inventions are excluded under s.1(3) PA 1977?

Answer 19

Inventions contrary to public policy or morality.

Question 20

What is meant by “sufficiency”?

Answer 20

The applicant must disclose sufficient information to allow a third party to use the invention once the patent has expired.

Question 21

What remedies are available if there is a lack of sufficiency?

Answer 21

1) The patent application can be refused (s.14(3) PA 1977).

2) An existing patent can be revoked under s.72(1)(c) PA 1977.

Question 22

What is meant by “added material” for patent applications?

Answer 22

This is where the matter that is disclosed in the specification extends beyond that disclosed in the filed application - I.e., the drip feeding the information to the registry. (S.72(1)(d) PA 1977).

Question 23

What is manufacturing ‘know-how’?

Answer 23

This is the extra tricks of the trade that help to make a process run with greater efficiency.

Question 24

What are the components of a patent application?

Answer 24

1) An abstract
2) The description
3) The drawings (not all patents will include these)
4) The claims

Question 25

What do patent claims seek to achieve?

2 part answer

Answer 25

They aim to describe the invention’s distinctive technical features - I.e., what distinguishes the invention seeking registration from existing inventions.

They aim to cover all possible alternatives of the invention, to help mitigate work arounds.

Question 26

When a patent application is approved, does the inventor gain protection against the invention as a whole or against the registered claims?

Answer 26

The registered owner gains protection for each of the registered claims.

Claims may be independent of, or dependent on, other claims.

Question 27

What are the grounds for the IPO/Court revoking a patent?

Answer 27

Under s.72(1) PA 1977, the IPO/Court may revoke a patent if:

(a) the invention is not patentable (I.e., it doesn’t satisfy the requirements of ss.1(1)(a) - (d)
(b) the owner was not entitled to apply
(c) the specification is unclear
(d) the patent was amended without permission.

Question 28

What are the five steps for making a patent infringement claim?

Answer 28

1) Is the patent valid and who is the registered owner?
2) has the patent been infringed?
3) compare the construction of the claims.
4) is there a valid defence?
4) what remedies should be sought?

Question 29

What is the maximum period of protection for a valid patent?

Answer 29

20 years from the date of filing (s.25(1) PA 1977)

Question 30

What is the initial period of protection for a valid patent? How often must a patent be renewed?

Answer 30

A patent is valid for an initial period of 5 years, from the date of applying for registration.

After the initial period of protection (5 years) a patent must be renewed on an annual basis.

Question 31

What is direct infringement (product)?

Answer 31

For a Product: this occurs when a party makes, disposes of, offers to dispose of, uses, imports the products or keeps it (s.60(1)(a) PA 1977).

Question 32

What is direct infringement (process)?

Answer 32

A person infringes a patent is they use the process or offer it for use when they know, or a reasonable person would have known, that doing so without the owner’s consent would be an infringement (s.60(1)(b) PA 1977).

Question 33

What is direct infringement (product produced using a process)?

Answer 33

This occurs if a party makes, disposes of, offers to dispose of, uses, imports the products or keeps it in relation to a product that is produced by a patented process (s.60(1)(c) PA 1977).

Question 34

What type of knowledge is required for the direct infringement of a patented product or product of a patented process?

Answer 34

Actual knowledge

Question 35

What type of knowledge is required for the direct infringement of a patented process?

Answer 35

Actual or imputed knowledge (I.e., the facts in issue are open to discovery and it is that person’s duty to be aware of that information).

Question 36

What are the main exceptions to direct infringement?

Answer 36

1) an act done privately for non-commercial purpose (s.60(5)(a) PA 1977)
2) an act done for experimental purposes or relating to the subject matter of the invention (s.60(5)(b) PA 1977)

Question 37

Where do the acts have to take place in order to infringe a valid patent in the U.K.?

Answer 37

The acts have to take place in the U.K. for there to be an infringement of a U.K. patent.

Question 38

If a patent was invalidly granted, can a person still infringe the patent?

Answer 38

If a registered patent exists for that invention and someone has performed the acts in ss.60(1)(a) to (c), there is a prima facie infringement. The infringer simply has a defence.

Question 39

How can a person indirectly infringe a patent?

Answer 39

A person can indirectly infringe a patent if they supply the means for another person to put the invention into effect (s.60(2) PA 1977 and Menashe v William Hill).

Question 40

Are patent claims constructed objectively or subjectively for infringement claims?

Answer 40

Objectively.

The test is concerned with what a skilled person would understand the author to be using the words to mean.

Question 41

What relevant European legislation governs how patents should be interpreted for infringement claims?

Answer 41

Article 69 of the European Patent Convention.

The scope of the patent protection for an invention should be determined by the patent claims, as interpreted by the description and any drawings.

Question 42

Which relevant U.K. legislation gives effect to European legislation on interpreting patents for infringement claims?

Answer 42

S.125(1) PA 1977 gives effect to Article 69 of the European Patent Convention.

Question 43

What starting point will the skilled person use to interpret patent claims?

2 parts

Answer 43

The courts will look at the literal meaning of the words used in the claims.

If they have obvious or deliberate meaning (or limitation to the scope which is intentional), to a skilled person, there is no need to interpret further.

Question 44

If the skilled person cannot interpret patent claims using a literal method of construction, what steps will they take next?

Answer 44

If the words of the claims are ambiguous to a skilled person, they should be construed in a purposive way.

I.e., what did the patentee intend the words of the claim to mean?

This must strike a fair balance between fair protection for a patentee and not reading meaning into the words so as to cause uncertainty in the future interpretation of patent claims.

Question 45

What is the leading case and test of whether a new invention infringes an existing and valid patent?

Answer 45

Activas v Eli Lilly (SC):

1) Does the variant achieve substantially the same result in substantially the same way as the patented invention?
2) Would the substantially same result in substantially the same way be obvious to a person skilled in the art, reading the patent at the priority date?
3) Would the person skilled in the art nevertheless have concluded that the patentee intended that strict compliance with the literal meaning of the claims of the patent was an essential requirement of the invention?

Question 46

What common methods method might be used to defend a patent infringement claim?

Answer 46

1) The use began before the priority date (s.64 PA 1977).
2) D’s actions are outside the scope of the patent (this could include s.60 PA 1977 exclusions).
3) The acts were done privately, for non-commercial purposes, and so do not infringe (s.60(5) PA 1977).
4) The patent was granted in error, which is therefore invalid and should be revoked under s.72 PA 1977.

Question 47

What are the grounds for revoking a registered patent?

Answer 47

The grounds for revoking a registered patent can be found at s.72(1) PA 1977:

(a) the patent is not a patentable invention,
(b) the patent was granted to a person who was not entitled to that patent,
(c) the specification of the patent did not disclose the invention clearly enough
(d) the matter disclosed in the specification extends beyond that disclosed in the patent application (added matter)
(e) the protection conferred by the patent has been extended by an amendment which should not have been allowed.

Question 48

What remedies can the owner of an infringed patent seek?

Answer 48

The remedies available are laid out in s.61(1)(a) - (e):

1) An injunction
2) Account for Profits
3) Damages
4) An order to deliver up or destroy
5) A statutory declaration that the patent is valid and has been infringed.

NOTE: neither damages nor account for profits can be awarded where D did not know and had no reason to believe that the patent was registered (s.62 PA 1977).