UK Patent Law Flashcards
What are the exclusions for biological inventions?
- The human body and gene sequences discovered in it (although an isolated gene may be patented in conjunction with an industrial application of it)
- Cloning humans
- Modifying the human germ line
- Industrial or commercial exploitation of human embryos including stem cells when harvested from embryos
- Genetic modifications of animals likely to cause suffering without giving rise to significant medical benefits, and patenting the resulting animals themselves
- Plant and animal varieties
What is excluded as patentable inventions s1(2)?
a) discovery, scientific theory or mathematical method
b) literature, drama, music, art or any other aesthetic creation
c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program; or
d) the presentation of information…
…AS SUCH
A patent won’t be granted where the commercial exploitation of the invention would be…
Immoral or contradict public policy
- does not equate with illegal
What is the test for determining whether a claim is related to an excluded category?
Aerotel/Macrossan
- Properly construe the claim (decide what the monopoly is)
- Identify the actual contribution
- Ask if this falls solely within the excluded subject matter
- Check whether actual or alleged contribution is technical in nature
CC-AC-SE-TIN
How long is the grace period for filing a patent application after a disclosure to the public in breach of confidence or officially recognised international exhibition?
Six months preceding the filing date
Under what scenarios does the grace period for a disclosure to the public apply?
- The disclosure resulted from the invention being obtained by anyone unlawfully or in breach of confidence
- The disclosure occurred at an officially recognised international exhibition, and this is stated on filing the application with confirmatory evidence supplied within 4 months of filing or within 2 months of entering the national phase for PCT applications
What is required to establish a breach of confidence?
- An air of confidence at the time the information is imparted or acquired that causes the recipient to understand that the information is confidential
- e.g. marked “confidential”
- Attempt to get proof e.g. signed NDA or affidavit
Is an abstract part of the state of the art for novelty-only prior art?
No
What type of applications form part of the state of the art for novelty-only prior art?
- GB
- EP
- PCT validly entering GB phase
- PCT(EP) where filing fee is paid (and translation filed where PCT is in non-EPO language)
For a matter to be made available to the public, what type of disclosure must it have been?
Enabling disclosure
What is the test for an enabling disclosure?
Whether enough information is revealed to enable a person in the relevant field to replicate the invention
A document having its own URL is available to the public if?
- It can be found using a public search engine using keywords related to the essence of the content of the document
- It remains online long enough for a member of the public to have direct and unambiguous access
Exam note: good practice to obtain proof of claimed date of disclosure for web based disclosures
What should you suggest to a client when there has been a partial or non-enabling disclosure?
- Request document is returned and no further applications are made
- File application ASAP
- Warn client that grant may not be possible depending on facts
If there was no air of confidence regarding a disclosure to the public, what should you suggest to your client?
- The inventor is unlikely to get a patent in EP/UK
- But may use 12 month grace period for UK/EP designs
- Or try to obtain patent protection in other jurisdictions with a patent grace period e.g. US and JP
What should you do it you think someone will breach a confidence?
- File application ASAP
- In principle you will have a 6 month grace period but this is less safe and may complicate overseas filings
- Monitor the person who may breach (as they may be likely to file their own application or work the invention) and
- In time, consider infringement proceedings
What are the steps of the Pozzoli / Windsurfing test?
1a) Identify notional PSA
1b) Identify CGK of PSA
2) Identify or construe the inventive concept in the claim
3) Identify what, if any, differences there are between the material forming the state of the art and the invention as identified or construed
4) Decide, without any knowledge of the proposed invention as claimed, whether those differences required any degree of invention
What are some secondary indica of inventiveness?
- Long felt need
- Commercial success (not attributed to factors other than the invention e.g. marketing)
- Prejudice in the art against an approach
NB these cannot generally be used as evidence of inventiveness
Define industrial applicability
Physical activity of technical character belonging to useful or practical arts.
Excluded: aesthetic arts
What is excluded from patentability under s4A?
- A method of treatment of the human or animal body by surgery or therapy
- A method of diagnosis practiced on the human or animal body
Define treatment of the human or animal body by therapy
- Achieves a therapeutic effect
- Covers curative and preventative treatments as well as treatments that alleviates a cause of symptom of a medical condition
- Excludes purely cosmetic treatments; but any incidental potential therapeutic effect in a cosmetic treatment can cause the method to fall under an exclusion
- Pest control is a therapy for the pest’s victims (e.g. killing tapeworms or ticks)
- Requires there to be a medical condition (e.g. snoring prevention not therapy)
Define treatment of the human or animal body by surgery
- Non-insignificant physical intervention
- Not necessarily of an invasive nature e.g. application of butterfly stitches
- Encompasses both cosmetic and therapeutic surgery
- Removal of body hair for purely cosmetic purposes is not a “treatment by surgery”
Define method of diagnosis practiced on the human or animal body
According to EBoA:
(I) examination and collection of data
(ii) comparison with normal values
(iii) recording any deviation from the norm
(iv) attributing the deviation to a particular clinical picture
To be a diagnostic step, it must include (iv)
Requires all method steps of a technical nature to be practiced on the body
Assumes a medical condition (e.g. pregnancy tests are not diagnoses)
What is the normal priority period?
12 months from earliest claimed priority
Can the 12m priority be extended? How?
- Yes, with the permission of the Comptroller this can be extended by 2 months
- Must file request on relevant form and pay late fee
- Must provide evidence that failure to file the application within 12 months was unintentional
- if no evidence submitted on filing the request, the Formalities Examiner should request the evidence within a specified period (usually 2m)
When must priority be declared for an application filed within the normal priority deadline (12m)?
- Either at time of filing; or
- Within 16 months of earliest priority date, using relevant form and paying £40 declaration fee
- Declaration must include the country, date of filing and application number(s)
When must priority be declared for an application filed in 2 month extension period?
- At the time of filing the request for the extension, with a late filing fee £150 and the £40 declaration fee; or
- if the request is in relation to a PCT(GB) application, the late declaration must be made within 1 month of entering the national phase
Conditions:
- No early publication can be requested; or
- A request for early publication was made but withdrawn in time to prevent publication
When can a second application, disclosing the same matter as an earlier filed application, be used as basis for priority?
- When the first application is withdrawn or refused
- with loss of all rights prior to the publication, and
- was never used as a basis for priority itself,
- on or before the day the second application was filed
- in the same country as the first
What are the requirements for filing priority documents?
- A certified copy of the priority document must be filed within the 16 month period unless a copy is already available to the Comptroller
- e.g. if it is a PCT(GB) and the priority docs were previously submitted to WIPO
What are the requirements for filing foreign priority documents?
- Certified copy(s) must be provided within 16m (or later if a request for an extension is filed R108(2), and
- optionally a further request is filed under 108(3) furnished with evidence supporting the grounds)
What happens if the priority document is in a language other than English or Welsh?
- a Patent Examiner may request a translation or a declaration that the new application is a complete translation of the priority document
- Only if the validity of the priority claimed from the earlier application is relevant for the patentability of the application
Who can file a priority claiming application?
- Applicant(s) - if more than one in earlier application, then they must all be named or assigned priority rights prior to filing; or
- Successor(s) in title
Who is the onus of proof on to show that the priority application exists?
The applicant
If priority is contested, who is the onus of proof on to show that the priority document is insufficient?
The objector
If an application is lost (e.g. abandoned, lapsed, refused) before filing a priority claiming application, what is advisable?
Explicitly reserve the right to claim priority from it to avoid it being interpreted as desiring a full loss of rights
When can a declaration of priority be withdrawn?
- For a PCT(UK), before the national phase begins
- For any other UK application, before preparations for publication are complete
What are the three drawbacks to late declarations of priority (i.e. within 16m)?
- Higher cost (£40 declaration fee)
- Less time to correct errors in priority (deadline 16m from priority)
- Prevents the option to file missing matter without redating
Who may apply for a patent?
- Any person (natural or legal)
- Excludes unincorporated partnerships
Who may a patent be granted to?
- The inventor(s); or
- in preference, a person entitled by agreement, law or treaty (e.g. an employer); or
- a successor in title to either of the above
Who is an inventor?
- A person who made an inventive contribution
- A person who contributed materially to what was thought to be the invention at the time of its devising, regardless of how small that contribution was or ended up being in the claims
- A person who merely gives advice or assistance is not a co-inventor
What are the three options for changing application details?
- Correction: file a request under R49 (correction of name and address) or R50 (correction of error in register) with written reasons; or under R105 (correction of error in application) if clerical/translation error
- Amendment: file a request under R31 (amendment of application) is statement of inventorship not filed
- Transaction: file a request under PF1 if registering a transaction
Can an applicant be entitled to an invention via an assignment that diminishes an employees rights?
No - unenforceable assignment
Lack of entitlement is a ground for revocation of a patent for how long?
- Two years from grant
- Unless the applicant was knowingly fraudulent
After grant, who can raise an entitlement issue?
- The potentially entitled person only
Onus of proof is on whom to prove a lack of entitlement?
- The party raising the entitlement issue,
- except possibly under s39(2) for employer-employee cases
s8: Before grant, who can refer a question of entitlement to the Comptroller?
Any party
For a pending application, what actions can the Comptroller take under s8 to address a lack of entitlement?
- Replace some or all applicant names with the new party(s)
- Refuse to grant a patent, or amend to excise contested elements of it
- Order a license or transfer of right in the application to the new party(s)
Under s8 proceedings, if the Comptroller refuses to grant a patent, or amend to excise contested elements of it, what can the new party do?
The Comptroller may order that the new party can file a new application for those elements within a prescribed period of 3 months from the decision or end of appeal, which is treated as having been filed on the date of the earlier application.
If an order to licence or transfer a right in the applicant is ignored by the ordered party, the comptroller can permit the other party to implement the order if it has been ignored for how long?
14 days
Can Comptroller pass s8 entitlement issues to courts?
Yes
Can trustees or representatives of deceased parties pursue s8 entitlement proceedings?
Yes
For new applications arising from entitlement disputes or divisionals, what actions must be taken in terms of inventorship and priority, and by when?
By the later of 2 months from filing or 16 months from priority:
- declare inventorship; and
- file priority documents
BUT if the new application is filed within 6 months of the compliance period, the documents must be supplied at filing
For new applications arising from entitlement disputes or divisionals, when must information regarding biological deposits be supplied?
The later of:
- The filing date; or
- 16 months from priority
What articles are relevant for entitlement proceedings for:
- UK applications
- Foreign applications
- UK patents
- s8
- s12
- s37
Are there any UK provisions to deal with entitlement proceedings of foreign patents?
No. But where a foreign application grants during s12 proceedings, then the proceedings can continue
Innovia Films v Frito-Lay [2012]
Advice to consider for entitlement disputes during the exam?
- Consider an amicable agreement e.g. assignment or comfort letter, if suitable
- Be seen to check agreements and facts of case
- Attempt early settlement where the other party is clearly wrong - point out that they could bear the costs in court if they reject such an offer
- Consider accelerated prosecution due to likely infringement of other party
Is the publication or prosecution of the application in the UK delayed by entitlement proceedings?
No. But corresponding EP case can be suspended pending the outcome.
Under s10, if joint applicants disagree on how to prosecute a case, what can be done?
Comptroller can be asked by any of the parties to:
- arbitrate;
- direct how to proceed; and/or
- alter the number of applicants (can use s8 in parallel if one party is not entitled)
If joint applicants which you have been representing split, what should you do?
There may be a conflict of interest.
- Select which applicant to continue to represent
- Advise other applicant to seek a new representative
What can/cannot a joint applicant do without permission from the other applicant?
- Can: work invention
- Cannot: assign, license, revoke
Following transfer of application in s8 or s10 proceedings, what happens to extant rights (e.g. a licence)?
- If one or more of the original applicants remain - extant rights are normally allowed to continue
- If none of the original applicants remain - extant rights lapse upon registration of new applicant
If any of the original applicants or parties granted extant rights were making serious and effective preparations to work the invention in good faith in the UK prior to a reference under s8, what are they entitled to, and by when?
- Entitled to be granted a licence on reasonable terms by the new proprietor or the new applicant made from excised matter
- The license should be requested within 2 months of the order of transfer
Under s12, before grant of an overseas patent, who may refer a question of entitlement to the Comptroller?
- Any person (e.g. a non-applicant); or
- one or more co-applicants can approach Comptroller regarding transfer to any other person
Are decisions on entitlement of foreign applications under s12 binding overseas?
No. Only provides guidance.
Under s12, if the question of entitlement is referred for an EP application, what action can be taken?
- Request suspension of EP proceedings - requires proof that entitlement proceedings have begun in the UK
- If successful, a UK decision can be used to transfer rights of an EP application - A61 EPC
When can you file a new application following s12 entitlement proceedings:
- For an EP application with its GB designation withdrawn before question is referred under s12;
- For an EP application refused by request of the entitled person after proceedings under s12; or
- For a PCT(GB) application with its GB designation withdrawn or refused during prosecution before or after any question is referred under s12
New party can file new application within
3 months
What right does the inventor(s) have, and can this be waived?
- The right to be mentioned in the granted patent (and if possible the published application)
- This right can be waived - inventor must provide reasons for not wanting to be mentioned, but no reason required for wanting address to be mentioned
What must the applicant provide the UKIPO with re the inventors, and by when?
- The identity of the inventor(s); and
- A derivation of rights if the applicant(s) is not the inventor(s)
Must be filed within:
- 16 months from priority; or
- for PCT(GB), the later of 16 months from priority and 2 months from NPE
Failure to do so → application deemed withdrawn
If the inventor is not mentioned in the published application or patent, what must happen? Who can apply for this?
- What: They must be mentioned in a subsequent addendum or erratum
- Who: anyone can apply
How is inventorship declared, and by when must this be done?
How:
- Form PF1 names the applicants and asks if they are also (all) the inventors;
- If not filled out on PF1, must file PF7 to specify the inventors and/or the applicant’s derivation of rights (e.g. by virtue of employment)
By when:
- 16 months from priority
- Or if PCT(GB) entering the national phase, the later of 16 months from priority or 2 months from NPE
If not done on time:
- Application deemed withdrawn
Remedies for failure to mention inventor by due date?
- Two month extension as of right (form + fee) - R108(2)
- If failure to comply within the two month extension is unintentional, can potentially use R108(3) or s20A for further extension - form, fee, evidence of unintentional
Does the inventor’s nationality need to be declared?
No
How can an inventor name be added/changed?
- Within 16m from priority - send a replacement PF7 with a note saying it supersedes any previous PF7
- Or use s117 to correct clerical errors
Is an actual assignment document/contract with a date and signature etc needed to designate the inventor on PF7?
No
What form is needed to file a patent application?
PF1
When is the application fee due? How do you minimise costs for application fee?
- No priority claim - 12 months from filing
- Priority claim - the later of 12 months from priority or 2 months from filing
- Cheaper to pay on filing (£60 vs £75)
What must an application comprise?
- Request for a grant of a patent (PF1)
- A spec comprising - a description; one or more claims (optional at filing); drawings if referred to;
- An abstract (optional at filing)
Can a withdrawal of a patent application be reversed by the applicant?
No, but the Comptroller may correct any error or mistake in the withdrawal of the application (so effectively yes)
Does the abstract form part of the state of the art?
No
If the applicant’s name and address are not provided in the request for grant, they will be requested by the Comptroller with how long to comply?
- 2 months from the request;
- Failure to comply - application deemed withdrawn
Can the claims rely on references to technical features disclosed in the description or figures?
- No;
- UNLESS - these cannot be clearly and precisely defined in writing or using a mathematical method or chemical formula
If application documents are filed in a foreign language and no translation is provided, they will be requested by the Comptroller with how long to comply?
2 months
An application referring to a sequence must include a sequence listing. If not included, what happens?
- Comptroller will request it and set a time limit for responding;
- If not provided, the application may be refused;
- A late filed sequence listing must be accompanied by a declaration that it does not add matter
What format must sequence listing be file in?
From 1 July 2022: XML file format required in all WIPO states for:
- any nucleic acid sequences (DNA, RNA) having 10 or more fully defined residues; and
- any peptide sequences (including cyclic peptides) having four or more fully defined residue
Are black and white photographs permitted? Is shading permitted?
- Yes
- Yes - where this assists in representing a shape and does not obscure elements of the drawing
What is ex post facto non-unity?
Where prior art is found that renders the existing unifying characteristic known
What is a lack of enablement?
Description does not provide enough information for the PSA to work the invention over the full scope of the claim
How may enablement be interpreted differently for medical use claims?
The disclosure should at least make the claim scope plausible
What is sufficiency?
Whether the full scope of the invention is clearly and completely disclosed by the description
What is support?
Pre-grant question of whether there is enough technical information in the application to support the text of the claims
When are two or more inventions considered to have unity?
When they share a technical relationship based on matching or complementary special technical features that, when considered together as a whole, define a contribution over the prior art (e.g. a plug and socket)
Can an application be amended to overcome a lack of enablement?
The description can’t, but the claims may be limited
What is required to obtain a filing date?
- Indication that a patent is sought;
- Identify applicant or enable contact with them;
AND:
- Something that appears to be a description; OR
- a reference to an earlier application of the applicant or their predecessor (incl date of filing, app. no. and country of filing)
What happens if an application is insufficient to obtain a filing date?
- The Comptroller will alert the applicant to what needs fixing;
From notification, applicant will then have:
- 2 months to comply with the identification of the applicant or file a verified translation of text; or
- 4 months to provide a certified copy of the earlier referenced application and translation if needed
What is the time limit for filing missing parts?
- Any time between filing and preliminary examination; OR
- 2 months from notification by preliminary examiner
Under what circumstances will filing missing parts lead to an unchanged filing date?
- The missing parts are contained in a priority application; and
- A request is made to not redate - the request must be in writing and must contain enough info to identify the source material in the priority document
Under what circumstances would a request to not redate following filing of missing parts fail?
- The priority document referred to is missing any of the added material
- The certified priority document is not filed within the earlier of the normal 16 months period or four months from the date of the request to keep the priority date
Where an application has a date of filing, what 5 things would lead to the application being treated as withdrawn?
No priority: within 12 months from filing; Priority: the later of 12 months from priority or 2 months from filing:
- No claims/abstract filed
- No description filed (if an earlier application is referenced)
- No application fee paid
- No request and fee for search
Within 4 months from filing:
- No certified copy filed (and translation if needed) if earlier application is referenced
When is a divisional unable to be filed?
- If the parent has granted, terminated or withdrawn
- Within the last 3 months of the compliance period (later of 4yr 3m from priority or 9m from first exam report)
When can a new application following a dispute be filed?
- Within 3 months of Comptroller’s orders or the end of any appeal of that order
- The Comptroller can give notice to shorten this period
Divisionals and new applications following a dispute have how long to comply with the designation of inventor and filing of priority document requirements?
- The later of 2 months from filing or the usual deadline (16m from priority)
- UNLESS - filing within the last 6 months of compliance period, in which case they must comply on filing
Do Welsh texts require a translation?
No - they will be translated by the Comptroller
For a PCT(GB) entering the national phase, when is the search fee payable?
- 12m from priority or
- 2m from NPE
For a PCT(GB) entering the national phase, when is the national fee (which replaced the application fee) payable?
On entry to national phase
When filing a divisional late in the compliance period, what should you advise?
Mark as urgent
What are the conditions for getting a preliminary examination?
- The application has a filing date
- The application has not been withdrawn or treated as such
- The application fee has been paid
What is the period for fixing issues found by the preliminary examination?
Period specified by Comptroller (usually 2m)
What is the time limit for correcting an erroneous priority date in the declaration?
2 months from notification from preliminary examination
When are pending applications published?
- ASAP after 18 months from priority; or
- earlier if requested
Applications are published after withdrawn after preparations to publish are complete - when is this?
- Typically 5 weeks prior to publication
- In this case, the application would not count as s2(3) prior art for other applications
What time period does the publicised date in the OJ start?
- The 6 month period to request substantive examination
Why may early publication be desirable?
- Extends the period before grant during which damages may accrue
What are the 5 conditions (17(1)a)-e)) that must be met for a search to be performed?
- A preliminary examination has been performed
- The application has not been refused, withdrawn or deemed as such
- Search is requested before the later of 12m from the PD or 2 months from filing, using the relevant form and paying the fee
- The application includes a description and one or more claims
- The description and claims comply with the rules of language
What happens to the search if the examiner considers the claims to lack unity?
- Only the first invention will be searched
What is the deadline for paying further search fee to search for further inventions in a single application?
- 3 months before the end of the compliance period
What are the difference search fees?
- Basic search fee
- Slightly higher search fee if RfS filed on paper
- Excess claims fees for each claim over 25 to be paid together with search fee
- Additional search fee if examiner determined non-unity
When are search and substantive examination combined?
- When search and exam request forms are submitted together (unless you specify you don’t want combined search/exam)
Why may it be advisable to request second search (in case of non-unity objection) in advance of 3 months before the compliance date?
As it will be too late to file divisional if left to the deadline
When may the search fee be refunded?
- For an application withdrawn after the search fee is paid but before a search starts
- For a divisional application if a search fee was paid for claims in a parent that was then divided out
When are voluntary amendments possible?
After the search report
Can you request accelerated/early search?
Yes, but must include a reason (e.g. you wish to see results before foreign filing)
How do you request substantive examianation?
- Request examination, file form and pay fee within 6 months of publication (if not done already)
- Excess pages fees must be paid with exam fee for each page above 35
When would a supplementary search be required?
- Examiner finds non-unity; or
- due to amendment following the search
What must an applicant do if the examiner requires a supplementary search?
- pay search fee;
- amend to render the search unnecessary;
- or successfully argue otherwise
If under a secrecy order (i.e. no publication), when does examination need to be requested by?
2 years from priority
For divisionals or applications filed following a dispute, when does examination need to be requested by?
- The later of the usual date for the parent application i.e. within 6 months of publication; or
- 2 months from filing UNLESS within 6 months of compliance date, in which case it must be requested at filing
How many opportunities to comply with any defects or argue against them is the applicant entitled to following an exam report?
One
Excess claims fees are due for every page in excess of ___?
When are these fees due?
- Each additional page over 35
- Due with examination fee (usually due within 6 months of publication)
How long is the compliance period for normal filings?
The later of:
- 4.5 years from priority; or
- 12 months from the first examination report
How long is the compliance period for new applications following a dispute?
The later of:
- 4.5 years from priority
- 12 months from the first exam report; or
- 18 months from filing date of new applicaiton
How long is the compliance period for divisionals?
Same as parent i.e. the later of
- 4.5 years from priority
- 12 months from first exam report
NB - must file divisionals before 3 months from the end of the compliance period
For the specific case in which the examiner uses TPOs for an examination report within the last 3 months of the compliance period, how long does the applicant have to respond?
3 months
If, during examination, claims have increased in number over 25 and/or the description has increased in length over 35 pages, what must be paid and by when?
- Excess claims fees for each claim over 25
- Excess pages fees for each page over 35
- WITH the grant fee (i.e. the grant fee encompasses the excess claims and page fees)
- within 2 months of the notification of intent to grant
Can the due date for requesting examination be extended?
- Yes - can be extended as of right by 2 months - file form, pay fee
- Can be further extended under comptroller discretion, if good reason is provided as to why failure was out of applicant and agent’s control - use form then if allowed, pay further fee
- If all else fails, can reinstate using s20A is loss was unintentional
Can compliance period be extended?
- Yes - can be extended as of right by 2 months - file form, pay fee
- Can be further extended under comptroller discretion, if good reason is provided as to why failure was out of applicant and agent’s control - use form then if allowed, pay further fee
At end of compliance period, if appeal is pending/time to bring an appeal has not expired:
- If an appeal is pending, the court determines an extended compliance period
- If no appeal is pending, the compliance period is the end of 28 days from refusal
Does an application have to grant by compliance date?
No, must be in order for grant
For PCT(GB) entering the national phase, when must examination be requested and exam fee paid?
Later of:
- 33 months (i.e. 31 +2 months) from priority; or
- 2 months from entry to the national phase
How does UK and EP due date for requesting examination differ?
- UK - 6 months from publication of application
- EP - 6 months from publication of search report
If there are no further objections from the examiner prior to publication, can the patent proceed directly to grant?
NO:
- Patent is not granted until at least 3 months after publication, to allow TPOs to be filed
- In this case, it may be advisable to request early publication (nothing this impacts late priority filing provisions)
Can you obtain a refund of the examination fee?
Maybe - if withdrawn before examination commences
Are divisionals and voluntary amendments allows in the limbo period between the administrative grant date (grant date provided in notification of intention to grant letter) and notification of grant in the OJ?
No
UKIPO provides how long between issue date of intention to grant letter and the administrative grant date provided in this letter?
- At least a 1 month window…; or
- where first communication is an intention to grant letter, at least a 2 month window…
…in which to file divisionals or make voluntary amendments while the application is still pending
After grant of a GB patent, what 4 options are there to address double patenting with EP(GB)?
- Amend cases to distinguish
- withdrawn GB designation before grant of EP(GB)
- Apply to surrender EP(GB) before GB grants
- Keep EP(GB) and let it supplant the GB (in this case, will need to reagree existing licences etc)
If EP(GB) case claiming priority to a corresponding GB case grants before the GB case, what will happen?
GB will likely be revoked, usually after end of EP opposition period/proceedings in case a successful opposition removes the patent ab initio
When can you register a HK patent based on a GB, EP(GB) or CN patent?
- First stage - within 6 months of publication
- Second stage - within 6 months of grant
If the first examination report is issued more than 3.5 years from priority, what is the effect on the time limit for response?
- Time limit to respond is only 2 months instead of 4
- Only extendable to 4 months instead of 6
Can you request accelerated prosecution?
Yes - if you can demonstrate hardship (e.g. likely infringement), need to secure investment, or green innovation
Can the comptroller amend of their own volition?
Yes - to add registered trademarks
What are the conditions of voluntary amendment before grant?
- Request is made in writing (identify amendment and reasoning)
- Wait until notice of search report (unless PCT(GB) that has received an ISR) but can then keep on amending until the first substantive examination report issued
AFTER then…
- if the first report is an intention to grant, one voluntary amendment within 2 months
- If the first report is an exam report issued after publication, one voluntary amendment is allowed if it is part of a reply to the report; or
- if the first report is an exam report issued before publication, can keep on voluntarily amending before actually replying to the report
Above doesn’t apply if examiner consents to amendment or the amendment concerns the request to grant (PF1)
Is the request for grant part of the application that may be voluntarily amended?
Yes
Can you amend PF1 before the issue of the search report?
Yes - with reasons e.g. change of applicant
When may an extended compliance period be determined by the courts?
- If an appeal is pending; or
- the time to bring an appeal (typically 28 days from refusal) has not expired by the end of the compliance period
What is the time limit for appealing?
- 28 days from refusal; or
- 14 days if it is a point of procedure
Can an applicant extend the compliance period?
- Yes - up to 2 months as of right (form + fee)
- Further extension with discretion (form + fee + evidence of why it should be extended)
How does appeals extension to compliance period and as of right extension interact?
Run concurrently (i.e. total extension no more than 2 months)
What is advisable close to the compliance date?
- Mark correspondence as urgent (particularly divisionals and PCT(GB) cases where the application number is not indicative of age)
When does reinstatement apply?
Application has been refused or treated as withdrawn due to missing a deadline set by either the Comptroller or the Act itself
Under what conditions can an application be reinstated?
- The applicant requests reinstatement
- Failure to meet deadline was unintentional
- An extension is still not available
- The missed deadline is not due to:
- Proceedings before the Comptroller
- late declaration of priority with late filing
- reinstatement itself, or a requested extension
Can reinstatement be requested by one of joint applicants?
Yes, with comptroller permission
If reinstated, what is the time limit for remedying the failure (i.e. the action required by the missed deadline)?
- Time limit set by the Comprtoller;
- Will be at least 2 months
What does the request for reinstatement need to include?
- Form and fee
- Evidence that failure was unintentional - if this is not supplied with request, Comptroller will specify a period to provide it
What is the time limit for requesting reinstatement?
- 12 months beginning immediately after the date of termination of the applicaiton
What happens if reinstatement is refused?
- Applicant is notified
- They then have one month to request a hearing
Will a request for reinstatement be published in the OJ?
- Only for published applications;
- If request is published in OJ, decision to reinstate is also published in OJ
Examples of “unintentional”?
- Anything outside the applicant’s control that conspired to prevent the applicant carrying out the omitted act;
- E.g. discovery of isolated mistake, external circumstances such as sudden illness, uncharacteristically long postal delivery times, or lack or money due to circumstances outside the applicant’s control (e.g. court order restricting access to finances)
- it does NOT include making a bad decision then changing one’s mind
Are actions done with or to an application between the loss of rights and reinstatement treated as valid?
Yes
For actions after publication which occur between termination and notice of a request for reinstatement, who can continue otherwise infringing acts?
When does this right become exercisable?
- Those who in good faith begin to effectively infringe;
- Those who make serious and effective preparations to do so
- Right becomes exercisable after any period in which an as of right extension could have been requested for a deadline
For actions after publication which occur between termination and notice of a request for reinstatement, who can be sued for infringement?
- Those who in bad faith, carried out infringing acts during a potential extension period; or
- Those who in bad faith, continued/repeated an earlier infringement
Can rights to continue otherwise infringing acts done in good faith between loss of rights and reinstatement be transferred/licensed?
- The right applies to partners in a business; but
- It can only be transferred as part of the business itself
Do third party rights accrued between termination and restoration extend from the original infringing act to other acts?
- No - especially if it is a significant expansion or divergence from the original act
Why should you request reinstatement ASAP?
- To stop third party rights accruing
- (but no need if not published)
If an application is refused after the normal compliance period, what happens on reinstatement?
Both missed deadline and compliance period are extended
When can third party observations be made?
Between publication and grant
Does filing observations make you a party to proceedings?
No
When are TPOs NOT sent to the examiner?
When the examiner has issued an intention to grant
When are TPOs NOT sent to an applicant?
When the TPOs are:
- Offensively disparaging/libellous; or
- likely to incited cause offence, immoral or antisocial behaviour
Can TPOs challenge entitlement?
- No - can only challenge patentability of application
- Use s8 for entitlement proceedings
If observations are made in the last 3 months of the compliance period and result in an exam report, how long does the applicant have to put the application in order?
3 months
Which applications are subject to UKIPO national security/public safety review?
- UK, EP or PCT applications first filed in UK
If an application is deemed prejudicial to security/public safety, what can the Comptroller do?
- Prevent/restrict dissemination of the invention for up to 3 months from due date for publication (i.e. up to 21 months from priority); and
- Notify Secretary of State
What happens whilst the prevention of publication of an application due to national security/public safety is in force?
- Application is not published but can still prosecute up to readiness to grant;
- If it’s an EP application, it is not sent to the EPO
- If it’s a PCT application, it is not sent to the IB or ISA
After application deemed prejudicial security is notified to Secretary of State, what do they do?
- Determines is publication of application or invention would prejudice security/public safety
- if so, instructs the Comptroller to extend the period of the prevention of publication until instructed otherwise
- review the decision within 9 months of filing and every 12 months thereafter
- If no longer appears prejudicial, SoS informs the Comptroller who can lift restrictions, noyify applicant and provide any necessary extensions of time to complete prosecution
If an invention in an application prejudicial to nat. security/pub. safety relates to atomic energy, the Secretary of State can…?
- Insect the application and any accompanying documents; or
- authorise a competent body to do this
If an invention in an application prejudicial to nat. security/pub. safety relates to anything other than atomic energy, the Secretary of State can…?
- Inspect the application after the due date for publication i.e. after 18 months from priority; or
- before with the applicant’s permission
If the government uses an invention prejudicial to security/safety whilst prevention from publication is in force, if an application is in order for grant, then…?
- Sections 55-59 apply - as if arranged under s55 (Crown Use); as if published; as if granted; and
- If hardship due to the restriction is shown, the government may make a hardship payment
What happens to renewal fees whilst an application is prevented from being published due to being prejudicial to national security/public safety?
Waived
What are the consequences for breaching the prevention of publication of an invention/application prejudicial to nat. security/public safety?
- liable to an unlimited fine; and
- up to 2 years in prison, if convicted
When an application is finally released after its publication was prohibited due to nat security/pub safety, does it count as prior art during the time it was prevented from being published?
Yes - acts like normal s2(3) novelty only prior art
For EP/PCT applications, what happens if an application which is prejudicial to nat security/pub safety is not received by the EPO of IB within 14 months?
- It may be possible to be converted to national applications
To maximise damages for when an application prejudicial to nat security/public safety is released, what should be done?
The applicant may seek discretion to disclose to specified persons
What else, beyond patent matters, should be considered by an applicant of an application prejudicial to nat security/pub safety?
Invention is likely to also be covered by official secrets act and/or the export of goods control act, hence this may affect the use of the invention regardless of its patent status
Is it possible to file application prejudicial to nat security/pub safety in any other countries?
- Possibly some scope for foreign-file secret applications within NATO countries;
- Need permission from UKIPO first - request this in plenty time before end of priority period
How should fees be paid for applications prejudicial to nat security/pub safety?
Separately to other applications to protect secrecy
Can a secret application (prejudicial to nat sec/pub safety) be cross-referenced in a second application?
No, otherwise second application will become secret too
Is an employee likely to be able to obtain compensation (s40) for a hardship payment made to an employer by the government due to application being secret (prejudicial to nat sec/pub safety)?
No, as s40 requires grant of the application first
To what subject matter of application do restrictions on overseas filings apply?
- The application relates to military technology or may prejudice national security; or
- the information therein may prejudice public safety
When do restrictions on overseas filings due to subject-matter (military tech, nat-sec, pub safety) not apply?
- When the application was filed in the UK 6 or more weeks ago; AND
- there is no prevention order under s22; or
- a non-UK resident previously filed the application overseas
If an applicant breaches the restriction on overseas filings due to subject matter (military tehc, nat sec, pub safety), what are they liable for?
If convicted:
- An unlimited fine; and/or
- up to 2 years in prison
BUT only if:
- they knew the filing would contravene s23 (restrictions on overseas filings); or
- they were reckless with the possibility that it would
When should you request foreign filing clearance from the UKIPO?
- If you suspect the invention falls under the restricted subject matter (military technology or prejudicial to national security/public safety)
When is notice of grant given in the OJ?
As soon as practical after grant
When is the grant certificate sent?
As soon as practical after the notice of grant is given
What is published along with the notice of grant?
- B-spec
- inventor details (unless waived); and
- applicant details
What does “pre-grant” refer to?
- Before administrative grant date i.e. the date provided by the notice of grant;
- Pre-grant procedures (i.e. s1-23) end on this date
What does “post-grant” refer to?
- After notice of grant in OJ
- This is the date the monopoly rights are activated and post-grant procedures can begin
What cannot be performed during the period between administrative grant and notice of grant in the OJ?
Amendment
From when can a divisional no longer be filed?
From Administrative grant date (date given on notice of grant letter)
How long is a patent term?
- 20 years from filing date
- Expires midnight at the end of the day preceding the 20th anniversary of the filing date
When does a patent cease to have effect if a renewal payment is not made by the end of the renewal period?
- At the end of the renewal date (i.e. the anniversary of filing, not the end of the month)
UNLESS:
- Form + renewal fee + additional fee is paid within the 6 months grace period to the end of the calendar month after the last month of the renewal period
- Fee increases month to month
What are the legal consequences if the additional fee is duly paid in the grace period following a missed renewal?
- Patent is treated as never having lapsed
- i.e. anything done with or to the patent during the grace period is valid, intervening infringements are still infringements, intervening Crown Use is still Crown Use
Is the proprietor reminded if a renewal fee is not paid?
Yes, Comptroller must remind proprietor
When is the reminder for renewal fees sent by the Comptroller following a missed renewal payment?
Sent within 6 weeks after the renewal period (i.e. the last day of the month in which the filing anniversary falls) ends
When is the first renewal fee due?
The 4th anniversary of filing (i.e. the start of the 5th year)
If a patent grants before the first renewal is due (and the two full months preceding that month), what is the renewal period for paying the first renewal?
- During the three calendar months preceding and including the fourth anniversary of filing
- i.e. the start of 46th to end of 48th calendar month, with the renewal date falling within the 48th calendar month
When is the due date for the first renewal fee if a GB patent grants within the 3 months period preceding the 4th anniversary of filing, or later?
- The renewal date is 3 months after the grant date; and
- the renewal period is until the end of the calendar month in which that modified renewal date falls
When is the due date for the first renewal fee if a EP(GB) patent grants WITHIN the 3 months period preceding the 4th anniversary of filing?
- The renewal date is 3 months after the grant date; and
- the renewal period is until the end of the calendar month in which that modified renewal date falls
When is the due date for the first renewal fee if a EP(GB) patent grants LATER THAN the 3 months period preceding the 4th anniversary of filing?
- The renewal date is the next anniversary of filing; and
- the renewal period is 3 calendar months preceding and including the next anniversary of the mention of the grant
What is the renewal date for paying subsequent renewals (i.e. after the first)?
- The second renewal date is the next anniversary of filing to occur after the first renewal date; and
- Each subsequent renewal date is the anniversary of the preceding renewal date
What is the renewal period for paying subsequent renewals (after the first)?
3 calendar months leading up to and including the renewal date in the third month
What does the Comptroller do if the renewal and late fees are not paid by the end of the 6 month grace period?
The Comptroller sends a notice to that effect within 6 weeks and points out the possibility of restoration
Do SPCs extend the patent term?
No - they act as a supplement which gives similar protection to a patent
What is the renewal period for a case wherein the EPO revokes and then restores a EP(UK) patent and in the intervening period a UK renewal would have been due?
- 2 months after restoration
If a GB patent grants after second or subsequent renewal, what renewal fees are due?
All outstanding renewal fees
Can renewal fees be paid up front for additional years?
No
How can renewal fees be discounted by 50%?
Licences of right confer a 50% reduction, but cancellation of the right means you have to pay all the discounts back again
How can a licensee check if all renewals have been paid?
- Filing a form (PF49 “caveat”); or
- Check register
Can the renewal period be extended by R108 (as of right extension)?
No - as there is a grace period instead
Can grace period be extended by R108 (extension as of right)?
No
What happens if the Comptroller fails to send a payment reminder following a missed grace period renewal payment?
This could be interpreted as a procedural irregularity under R107, allowing for the possibility of additional time to pay the fees
Can a granted patent be objected to on grounds of unity (both as the claims currently stand or as proposed to be amended)?
- No
- NB scope of a granted patent cannot be extended, so there is no risk of importing additional inventions from the description post-grant
When are post-grant amendments not allowed?
- When the amendment adds matter/broadens claims
- When proceedings are pending that may question validity
When are post-grant amendments considered as having been made?
They are retroactive to the date of grant
When may the Comptroller amend a patent (post-grant) of their own volition?
To acknowledge a registered trademark
A third party can oppose a request for post-grant amendment under what grounds?
- Amendment adds matter or broadens scope
- Amendment would still leave the patent invalid
What is the process for a proprietor to amend a patent post-grant?
- Request the amendment in writing
- Identify the proposed amendment; and
- give reasons for it
For EP(GB) patents originally published in another language, in addition…
- provide a translation of the original and amended portions of text (NB Comptroller may give subsequent directions if they see fit e.g. ask for full translation)
How may a third party find out about post-grant amendment?
Request to amend is posted in OJ
Can you amend an EP(GB) post-grant at the EPO?
- Yes, can perform central post grant amendment under Art 105a
- This may be more cost-effective
Can you amend an EP(GB) post-grant at the EPO?
- Yes, can perform central post grant amendment under Art 105a
- This may be more cost-effective
Are post-grant amendments generally allowed?
- Yes, whilst discretionary, amendment will generally be allowed to echo EPO position that amendment should be allowed if it enables a patent to persist in a restricted form
When is post-grant amendment most often used?
- New art is cited against a corresponding case; or
- An infringer/third party cites art against a patent and the patentee wants to strengthen their patent prior to bringing infringement action likely to result in a countering revocation action*
- *NB in this case, the infringer may infringe the patent to different extents between publication → grant vs after grant, since s27 amendments are only retroactive to the grant date
When and how can a patent be restored after failure to pay a renewal fee?
- When: Before the end of 13 calendar months from the end of the 6 month grace period
- How: Form + fee; evidence that failure was unintentional (if not supplied, Comptroller will specify a period to provide it)
Who may apply to restore a patent?
- Proprietor;
- a person who would otherwise be the proprietor; or
- with Comptroller’s permission, one of several joint proprietors
If request for restoration for missed renewal fee is accepted, when is the patent restored?
- Upton filing of form and payment of fee (and additional fee if failure to pay was in grace period)
- Time limit for these actions: typically 2 months
Can restoration be conditional?
- Yes - e.g. on sorting out registration by a new proprietor or securing rights of third parties
What are the possible actions if the Comprtoller issues a negative decision on restoration following a missed renewal?
- Can request hearing within one month of notice (otherwise patent is lost)
Can SPCs be restored?
No
What should always be considered in the exam when advising on restoration?
third party rights accruing
What are third party rights between end of 6m grace period and publication of application for restoration?
- If, after the grace period has expired and before the notice of application to restore was published, an otherwise infringing act or serious and effective preparation to do so is begun in good faith by a third party, they may continue to do so
- “continue” does not allow for significant expansion or divergence from original act
Can a person allowed to work the invention between grace period and pub. of application extend this right to others?
- They can allow partners within their business to have third party rights; BUT
- They cannot assign or bequeath the third party rights to another unless it is with part of the business itself
When do third party rights between end of 6m grace period and pub. of application for restoration NOT accrue?
- If the act was a continuation or repetition of an earlier infringement
In view of third party rights, what should you advise a client with a lapsed patent following missed renewal?
Request restoration ASAP to prevent third party rights accruing
Can a proprietor offer to surrender a patent?
Yes - at any time
Can a third party oppose the surrender of a patent?
Yes
How can a proprietor request surrender of a patent?
- File form and provide:
- Statement that no pending action for revocation or infringement (e.g. likely to question validity, which can result in retroactive loss of patent); or
- Where an action is pending, full details of the action
If a patent is surrendered, from when does this have effect?
- The date of notification of surrender in the OK
- NB you cannot sue afterwards for prior infringement
An assignment or mortgage of a patent right must be signed on behalf of…?
The assignor or mortgagor
If the proprietor is overseas, what is required to transfer rights of a patent?
A UK representative
When should transactions be entered into the register?
- Within 6 months; or
- As soon as practicably possible
Can an assignment, share or an exclusive license of a patent confer the right to bring infringement proceedings for earlier acts?
Yes
Is consideration required in an assignment?
No, unless assignment includes any other terms
What are the consequences of not registering an assignment/exclusive license of a patent?
- Costs of expenses for infringement proceedings will not be awarded to the assignees or exclusive licensees
Is a signature required to assign a patent?
Yes - personal ones require a witness, corporate ones require a seal
How can public obtain certified/uncertified copies of register entries of documents?
- Form and fee
- NB “certified” means by the Comptroller with the UKIPO seal
How is a transaction (e.g. assignment) registered?
- Form + fee
- evidence establishing the transaction (at least grantor of transaction’s signature)
Where must address for service be?
- UK, EEA or Channel Islands
How is a correction in the Register rectified?
- Request for correction relating to registration must be made in writing, and may be made by anyone
- Sufficient information must be provided to identify the error and the correction
- Comptroller may require an explanation if they have doubts
What must an entry in the Register include?
- Name and address of applicant, and the address for service;
- name and address of the inventor (can be omitted if requested)
- title, filing date, application no, date of publication; and
- where claiming priority, the date, application no, and country of each priority document
How is a correction of name or address (due to error or change in circumstance) done?
- Anyone can request (in writing) correction of their name, their address or their address for service;
- Proof may be required if the Comptroller has doubts
How long is the wait for any document filed at the UKIPO to be put on the register?
14 days
Does UKIPO maintain register for pending EP(GB) cases?
No, so assignments of such cases must use EPO register
Can you register an assignment/license of a PCT application?
- The PCT does not have a register as such, so a license cannot be registered;
- However, assignments and licenses can be notified to the IB during the international phase
What is the time limit for assigning a EP patent?
- End of opposition period (9m from grant)
- BUT cannot assign if opposition proceedings are pending
How do you register yourself as an agent for a new client’s applicaiton?
- In writing; or
- Using form if the agent is appointed by a person already in proceedings
If no address for service is provided for a new application (but applicant or representative is still contactable) what is the consequence?
- Comptroller allows two months to provide address
- Two month extension of this period possible
- Otherwise application is deemed withdrawn
Is an unregistered transaction enforceable against a subsequent bona fide transaction conducted in good faith by a later party?
No
When is a transaction invalid?
If it is not done with the correct owner. If incorrect, advise correction by the actual owner then re-assign.
When does a later transaction or event have priority over an earlier transaction?
- If the earlier transaction or event was not registered; or
- If notification was not given to the Comptroller (if the transaction or event occurred before publication); and
- In either case, the later (subsequent) transacting party did not know about the earlier transaction
When is the effective date of registration of a transaction?
The date of the application to register
What is rectification of the register?
A court order (on behalf of an aggreived party) for Comptroller to rectify register. Court can decide what needs rectifying
Where is an application for rectification of the register made?
Patents court, with copies send to other parties and the Comptroller
What is the default agreement for co-ownership?
- Equal, undivided share
- Each party is entitled to work the invention independently without it being classed as infringing each others’ rights (subject to agreement to the contrary)
Co-owners of patents and applications must agree in order to…?
- Amend the patent (ore request amendment)
- Apply to revoke the patent
- License, assign or mortgage
NB - this can be altered by an agreement
Would a third party supplying a co-owner with essential means to work the patent be classed as a secondary infringer?
No
Can one co-owner of a patent sue for infringement without asking permission from the others?
- Yes
- However - the other parties are automatically brought into these proceedings - they are only liable for costs if they take an active part in them
What happens to patent rights upon death or dissolution of a co-owner?
- The property passes to their successor in title
- It does not aggregate with the surviving co-owners
For a capital investor, why might co-ownership be unsuitable?
- Does not allow them to freely deal in the patent
- Consider an explicit agreement allowing the investor to freely deal in the patent, or have part-ownership of the company that owns the patent
What might be advisable for a co-owner with no interest in exploiting the patent?
Agree to allow the other parties to deal with the application without their further consent
What is a possible solution for joint ownership arising from an employee moving jobs whilst developing an invention (resulting in two employers being joint-applicants)?
- Reach an agreement to allow free dealing in the patent by one or more of the parties;
- assignment; or
- attempt to get application under s8 (entitlement) or s72 (revocation)
If an employee improves upon an invention made earlier with a previous employer, what would be advisable?
- Obtain patent
- Cross-license with previous employer to avoid infringement
Under s37, who may initiate proceedings to a right to a patent after grant?
Anyone having or claiming a proprietary interest
Under s37, after grant, anyone having or claiming a proprietary interest in a patent may ask the Comptroller…?
- Who is/are the true proprietor(s) of the patent
- Should the patent have been granted to the grantee(s)
- Should any right be granted or transferred to other person(s)
Under s37 entitlement proceedings, the Comptroller may issue an order (e.g. a transfer) to a person and they must comply by when?
- Within 14 days
- If not, the claimant may apply to the Comptroller to do it themselves
Following s37 entitlement proceedings (after grant), where the result was revocation due to ownership by an incorrect grantee, what can the claimant do?
Apply for a patent in:
- the whole matter of the spec if revocation was unconditional; or
- whatever matter was excluded if a revocation was conditional;
Within 3 months from the decision or end of appeal.
The new application will keep the same filing date.
When is a transfer of a patent under s37 entitlement proceedings not actionable?
- If more than 2 years after grant
- UNLESS one of the grantees knew they were not entitled at the time of grant
What is the difference between s37 and s8 entitlement proceedings?
- s8 - before grant; s37 - after grant with 2 year window unless the proprietor knew they weren’t entitled at the time of grant
- s8 - anyone can initiate proceedings; s37 - anyone with a proprietary interest may initiate proceedings
- s8 is for GB patent applications only; s37 is for GB and EP(GB) patents
Following s37 entitlement proceedings (after grant), are licenses considered to be issued by the updated proprietors?
- Yes
- UNLESS the transfer is to entirely new parties (since in this case there is no continuity of licensors, and thus no continuity of licences)
After a transfer of ownership of a patent to a new party following s37 proceedings, or following revocation and the filing of a new application by the new party, what happens to rights of old proprietors/existing licensees?
- Old proprietors and licensees are entitled to a license to continue working the invention, or to start if serious preparations had been made;
- if they were acting in good faith in the UK
- must request a license within 2 months of order to transfer
When does an invention belonging to an employee belong to their employer?
a) it was made in the course of normal duties of the employee OR in the course of additional specifically assigned duties, AND an invention might reasonably be expected to arise from them; or
b) it was made in the course of normal duties and implicit in these duties is a special obligation to further the interests of the employer;
Any other invention belongs to the employee.
If an invention belongs to an employee, what happens to overlapping rights?
If an invention belongs to an employee;
- a patent can be applied for; and
- the invention can be worked
without infringing any copyright or design right that may belong to the employer as a consequence of the employee making the invention
NB - no immunity for registered designs, but registered designs exclude any design dictated by technical function, so should not overlap
To which employees does s39 apply (right to employees inventions)?
- Employees normally resident in UK; and
- Normally employed in UK
Does s39 override agreements between an employee and employer?
In principle, yes since an agreement should not diminish employee’s rights
Can s39 result in joint ownership between an employee and employer?
No
Who has the burden of proof to show that an employer/employee has rights in an invention?
Employer, as default ownership is employee (inventor)
Does “normal duties” in s39 preclude employees WFH, or outside normal working hours, or using their own equipment?
No - Prosyscor v Netsweeper [2019]
Is a person who merely assists or advises the inventor a co-inventor?
No
For non-employee inventors (e.g. contractors, PhD students, shareholders), what is advisable?
- Check exact employment status
- Check whether there is a contract or funding/grant agreement that deals with ownership- request a copy to inspect it. If not, draw one up ASAP with clear IP ownership clause
When can an employee apply for compensation? Can this period be extended?
- While patent is in force,
- within 1 year of lapse; or
- for a lapsed patent that has failed to be restored - the later of 1 year from lapse of 6 months from refusal to restore
This can be extended at Comptroller’s discretion under R108(1)
How can an employee find out when a patent lapses?
- File a caveat (form + fee)
What are the conditions under which an employee may be awarded compensation for a granted patent belonging to the EMPLOYER?
- A patent has been granted for an invention made by the employee and beloning to the employer; and
- the invention and/or patent is of outstanding benefit to the employer (factoring in the size/nature of the company); and so
- It is just that the employer compensates the employee
What are the conditions under which an employee may be awarded compensation for a granted patent belonging to the EMPLOYEE?
- A patent has been granted for an invention made by and belonging to the employee; and
- it is assigned or exclusively licensed to the employer; and
- the benefit to the employee is inadequate in relation to the benefit to the employer of the invention and/or patent; and so
- It is just that the employer (further) compensates the employee
NB - this overrides any contract or agreement relating to the invention
When can an employee not be awarded compensation under s39?
When the employee is in a trade union that has negotiated a pay settlement regarding their invention
Define “outstanding benefit” from s39 (employee compensation)?
- Not merely substantial, but out of the ordinary
- Future benefit is not included, but foreign rights can be taken into account
- Must factor in contributions of adverts, other features etc in sales
- The benefit is the actual, not theoretical, benefit
- Onus is on the applicant for compensation (the employee) to prove it is outstanding
- For an undertaking formed of a groups or divisions, its effective size should at least encompass the extent of the groups alleged to have benefitted from the invention, and reflect the economic realities of the invention
- An employer may be a subsidiary group, and the outstanding benefit is assessed relative to the subsidiary - Shanks v Uniliver [2019]
Define “inadequate” benefit to the employee (patent belonging to employee - s39)?
- When benefit to employer diverges significantly from that understood at the time the employee → employer patent agreement was made
Other factors that contribute to it being “just” for the Comptroller to award employee compensation under s39?
- If the employer played dirty (equity requires clean hands); or
- Where the balance of power forced an unjust compensation level
The amount of employee compensation should be…? Whilst taking into account…?
A fair share of the benefit to the employer from the invention, the patent/application and/or the assignment of, or any rights in, the invention or the patent/application whilst taking into account:
- The employee’s duties and existing pay
- The effort and skill in inventing
- Any co-inventor contribution (esp other employees) and
- the employer’s contribution
Employee compensation may be paid as…?
- A lump sum; or
- periodic payments
What terms in a contract relating to inventions made by an employee are unenforceable?
- Any term diminishing the employee’s rights
- This does NOT extend to any duty of confidentiality (e.g. a MOD inventor)
What type of employees is s39-42 limited to?
- Those mainly employed in the UK (otherwise consult overseas associated);
- If unclear where mainly employed, then if they are attached to a UK place of business.
Can an employee claim compensation under s39-42 for the benefit to the employer ensuing from overseas patents and other protections (e.g. SPCs) arising from the invention?
Yes
Does the calculated benefit (money or money’s worth) extend beyond the period that the patent is in force?
No
Can employee compensation be pursued by an employee’s inheritors?
Yes
How is a license of right registered?
After grant:
- Apply using form
- Declare that no registered agreements exists that preclude licensing of right
- Comptroller will inform any current right holders of the change and ensure there are no contractual obligations prohibiting licencing (and advertise in OJ)
What are the consequences of registering a license as of right?
- Any person is entitled to a license on agreed terms, or if no agreement, on terms of Comptroller
- Comptroller may exchange current license with licenses of right (if these have more favourable terms)
- Any infringer who take a license may then only pay damages up to 2x a retrospective license - avoids injunction (this can occur at any time during proceedings w/o the infringer admitting liability; exception = importation from outside EEA)
- Renewal fee is halved after registration
A licensee of right may (unless license expressly says otherwise) request the proprietor to defend against infringement. If the proprietor does not, what can be done and by when?
- After 2 months from such a request, the licensee can act themselves; and
- the proprietor is drawn in as a co-claimant that is not liable to costs unless they actively participate
When must license of right be registered to get renewal fee reduction?
- Up to and including the renewal date (i.e. anniversary of filing)
- But in practice - at least 10 days before fee is due
How can a proprietor cancel a license of right?
- Form
- Pay balance of all discounted renewal fees
- All licensees must consent to cancellation
How and when can a third party cancel a license of right?
- Form
- Supporting material showing that they have existing agreement that precludes licenses of right
- Within 2 months of entry of license of right
If a license of right is cancelled by a third party, does the proprietor still have to balance all discounted renewal fees?
Yes
If a license of right is cancelled, are the proprietor’s rights and liabilities as if the entry was never made?
Yes
Can an application for cancellation of license of right be opposed?
Yes - within 2 months (e.g. by non-licensees such as potential infringer, or by the proprietor themselves if applied for by a third party)
When does a person directly infringe a patent claiming a product (s60(1))?
A person infringes a patent, if, while it is in force, they do any of the following in the UK without the proprietor’s consent:
- Make
- Offer to dispose of
- Dispose of
- Use
- Import; or
- Keep the product
*MODUIK
When does a person directly infringe a patent claiming a process (s60(1))?
A person infringes a patent to a process, if, while it is in force, they do any of the following in the UK without the proprietor’s consent:
- Use it; or
- Offer it for use
*UO
…in the UK when it is known or would be obvious that it would infringe to do so; or
- Offer to dispose
- Dispose
- Use
- Import; or
- Keep…
*ODUIK
…any product obtained directly by the process.
When does a person indirectly infringe a patent (s60(2))?
If they:
- Supply; or
- Offer to supply
- In the UK
- an Unauthorised party with any
- Means relating to an Essential Element of the invention,
- If the person Knows or
- it is Obvious
- that those means are Suitable For
- and Intended for putting the invention into effect
- in the UK
SO-UK-UMEE-KOSFI-UK
What are the exemptions to infringement?
- Private, non-commercial acts
- Experimental purposes
- A medicine prepared in a pharmacy in response to an individual’s prescription
- Use for ship/aircraft/vehicle temporarily in UK waters/territory/airspace
- Certain exempt aircraft lawfully in UK and their parts and accessories
- Farm use: propagating the product of a harvest on on holding
- Farm use: breeding livestock (for farmer’s agricultural activity but NOT for commercial reproductive activity)
- Human and vet health trials for market authorisation
Do exemptions to infringement for private non-commercial acts, experimental purposes, and medicine prepared in pharmacy in response to a person’s prescription excuse acts of indirect infringement s60(2)?
- No
- Except persons supplying the crown or prior inventors; or
- pre-restoration/reinstatement rights holders
When does a person supplying/offering to supply means relating to an essential element of an invention not indirectly infringe (s60(3))?
- If the means is a staple commercial product; and
- is not used to induce infringement under s60(1)
Where must ships/aircraft be registered to gain temporary entry exemption to infringement?
Outside the UK
Under what circumstances does the onus of proof shift from the patent owner to the alleged infringer?
- In the case of a process producing a new product, where the existence of the product causes a presumption of infringement
When does a product lose its identity as a direct product of a patented process?
When a subsequent process has materially altered the testable property such that it loses its identity as a direct product
What 3 things are considered as patented products?
- a patented product;
- a direct result of a patented process; or
- a product to which a relevant patented process has been applied
Is disposal equivalent to selling?
No - it is broader e.g. encompasses giving a product away in a promotion or as a sample
Is listing or stocking a product an offer to dispose?
- No - it is an invitation to treat i.e. willingness to sell if a reasonable price offered, so falls outside of scope of s60(1)
- Injunction could be obtained to prevent actual sale
- Could advise actually purchasing the item to provide evidence of infringement
When does infringement of importation not apply?
- When there has been an exhaustion of rights (i.e. the imported product has already been sold with the proprietor’s consent in another EEA country)
What is the contributory (indirect) infringement test?
- Are the supply and recipient in the UK? (double territorial requirement); or
- Is the offer to supply in the UK (offer is unilateral) to an unauthorised party?
- Do the means relate to an essential element of the invention?
- Is it known or obvious that the means are suitable for and are intended for putting the invention into effect in the UK?
If satisfied, contributory infringement may have occurred, UNLESS…
- Means are a staple commercial product;
UNLESS…
- They are used to induce infringement
SO-UK-UMEE- KOSFI-UK..SCP/I
Is providing someone with info about a product an offer to supply?
No - must have flavour of negotiation
Does supply of coffee pods, ink toner etc for use in patented products constitute contributory infringement?
- No
- Items may be considered means relating to an essential element;
- HOWEVER - purchasers of coffee machines/printers are NOT unauthorised parties as they have implied license to use machines as they wish
- Nestec v Duralit [2013] - Nespresso Pods
Define staple commercial product?
Has at least one other use
Can experiments with a commercial purpose in terms of improving a business fall under an exemption to infringement?
- Yes, if they have a scientific or technical goal;
- BUT experiments for sale or marketing (e.g. comparison experiments) are not exempt
Can vehicles which are not registered anywhere meet the temporary entry exclusion?
No
What is the territorial scope of s60 (infringement)?
- UK, Isle of Man and territorial waters;
- NOT channel islands
For importation, what are the key considerations in working out who has potentially infringed?
- Where the transfer of title of ownership occurred - overseas or in the UK?
- Person paying the transport costs is most likely to be responsible at point of entry into the UK, and is therefore the infringer.
- However, other parties may be joint torfeasors
When does double territorial requirement apply?
- For s60(2) - indirect infringement
- Both supply/offer to supply AND receipt must be in the UK
- Supply of essential means for export is therefore NOT covered by s60(2) - check whether recipient is overseas
What does it mean if an offer to supply under s60(2) is unilateral?
- No specific recipient in the UK needs to be identified in order for the offer to be infringing
- The offer (e.g. an advert targeting the UK marker) can therefore be unilateral and an injunction to prevent subsequent supply from happening can be obtained
Can consent and/or an implied license from a proprietor be used as a defence to infringement?
Yes
What can implied consent lead to?
- An estoppel (i.e. preventing claims to a lack of consent)
- e.g. due to undue delay in bringing actions
Who has burden of proof in establishing implied consent/license?
Defendant
When does an implied license to use or resell a product arise?
During an ordinary sale of a product
What is the test for deciding whether the repair or remanufacture consists of making the product?
- Is the part replaced a subsidiary part?
- Does the replaced part have significantly lower life expectancy than the retained part?
- Does the replaced part include any aspect of the inventive concept/core element of the patent?
If your client is concerned with infringing unspecified patent(s), what might you suggest?
FTO search
If your client is concerned with infringing a specific patent, what might you suggest?
Obtain declaration of non-infringement
What remedies may be requested during civil proceedings brought by a patent proprietor?
- Injunction or interdict restraining the defendant from committing the infringing act
- Order to deliver up or destroy any product that infringes
- Damages (recover losses to patentee)
- Account of profits (recover benefits from infringer) and/or
- a declaration of validity and infringement
- (costs)
II-DUD-DAD-C
Can a patent proprietor be awarded damages and an account of profits?
No - the two are mutually exclusive
If the parties allow the Comptroller to decide on infringement (saving court costs), what remedies are available?
- Damages; or
- Declaration of infringement and validity
What does the Limitations Act state re infringement proceedings?
- One can only claim damages up to 6 years ago in England, Wales and NI; or
- up to 5 years ago in Scotland
What are some examples of amicable solutions to infringement proceedings?
- Offer a license (possibly on preferable terms if infringer might bring revocation proceedings)
- Offer to sell the relevant product or provide the relevant service
- Cross-license in the event the infringer has refined your invention or developed a complimentary invention
How are proceedings expedited in the UK to achieve a swift grant?
- Request combined search and examination by filing two forms simultaneously;
- Request accelerated prosecution and give a reason e.g. infringement; and
- Request early publication to obtain s69 rights (conferred by pub) ASAP
How are proceedings expedited at the EPO to achieve a swift grant?
- Use PACE (accelerated prosecution);
- Request early publication;
- Pay exam and designation fees early and waive right to confirm proceeding with with examination;
- Prepare translations early and send to EPO and desired designated states (some states only confer protection once claims are published in their own language)
How are PCT proceedings expedited?
- Request early publication;
- Request early entry into national phases
If you send a copy of an application to an infringer to ensure no defence of ignorance, what should be noted to the client?
- Risks inviting observations before grant; or
- Opposition/revocation proceedings after grant
What else might you advise to further accelerate exam process in EP and UK to obtain quick grant to enforce rights against an infringer?
- Amend application to a narrow claim directed towards the particular infringement;
- file a divisional application to the remaining broader material
For small clients/infringements under £10k, what may be advisable?
Use small claims track in IPEC to save costs
What is the test for an interim injunction?
- Is there a serious case to be tried?
- Can the potential harm not be adequately compensated for by eventual damages?*
- Is there a balance of convenience?**
SC-PHACD-BoC
- *if you have licensee, unlikely to be able to get interim injunction as model exists for calculating damages
- *damages are unlikely to be adequate if your exclusive market position will be irreparably damaged by entry of a competitor
- **court takes into account other relevant details e.g. avoiding imposition of possible hardship such as bankruptcy by granting/non-granting of interim injunction
What may be required if an interim injunction is granted?
- A financial cross-undertaking to compensate the other side if the injunction was wrongly granted
- NB - ability to pay may be a factor in the balance of convenience assessment
Where evidence and funds are likely to be ‘misplaced’ by the infringer, what further relief may be available?
- Search order (Anton Piller order) to search for evidence
- Freezing injunction to freeze assets
- Only used in exceptional cases
Can an infringer view an unpublished patent?
Yes
Other than patent rights, what else should you consider if someone is passing off goods of your client as their own?
- Other rights e.g. TMs, designs, copyright
- Possible to infringe a registered design right by exporting (not available for patents)
If client is infringer, what should you consider?
- Identify the parties e.g. all possible infringers, direct and indirect
- Amicable/pragmatic solutions - in return for not bringing infringement proceedings
- Defensive actions - check patent in force; note alleged infringer can view unpub patent; consider request for declaration of non-infringement from proprietor then from Comptroller/court; consider settlement; offer to indemnify commercial clients etc if situ threatens business - could be costly if you lose
- Offensive actions - prior art search against patent, file observations (NB patentee has more scope to amend before grant), revocation/opposition proceedings after grant
- Risk assessment - consider what amendments that patentee could make which would still read onto your client’s activities; can patentee affect any current/future activities in other jurisdictions?
Why might telling your (infringing) client to offer a settlement be advisable?
- Save court costs (if they’re in a weak position); and
- If a claimant recovers less than what was offered prior to proceedings, then they pay full costs
When are damages/account of profits NOT awarded against a defendant?
- When they can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement
- “Innocent infringer”
Is the word “patented” on a product enough to confer awareness to an otherwise innocent infringer?
- No
- UNLESS - in conjunction with patent number or weblink
Does the burden of proof for innocent infringement change depending on the size of the company?
- Yes - for larger companies, there is often a presumption that it is reasonable for them to have been aware
- e.g. if they have in-house patent attorneys
Can damages be awarded for infringement during a renewal fee grace period?
- Yes, but they are discretionary
If a patent has been amended to make a claim valid prior to enforcement, what are the consequences for damages?
Damages are awarded based on the following factors:
- Whether the defendant knew or had reasonable grounds to know that they were infringing;
- Whether the patent as published was prepared in good faith (e.g. didn’t ignore art); and
- whether the current proceedings are brought in good faith
- whether the infringement fell within the scope of the claim in each form (pre- and post- amendment)
What is advisable if a client wants to enforce a patent that may be invalid?
- Amend ASAP
How does the existence of a license of right limit damages?
- Limits damages to 2x retrospective license fee
How are costs limited by registration of transactions?
- Cannot claim costs/expenses for proceedings relating to infringements occurring prior to registration of a transaction IF
- the registration was more than 6 months after the transaction or ASAP otherwise
If validify is contested during infringement proceedings and the patent is found to be only partially valid, what will be taken into account when awarding damages?
- Whether the infringer knew or would reasonably suspect they were infringing
- Whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant art); and
- whether infringement proceedings were brought in good faith (did the proprietor believe in the validity of the patent themselves?)
If validify is contested during infringement proceedings and the patent is found to be only partially valid, what will be taken into account when awarding damages?
- Whether the infringer knew or would reasonably suspect they were infringing
- Whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant art); and
- whether infringement proceedings were brought in good faith (did the proprietor believe in the validity of the patent themselves?)
Can damages be conditional on amending under s75 to recover partial validity?
Yes
Define prior use?
A person in the UK who, before the priority date
- in good faith did an act that would infringe the patent had it been in force, or
- in good faith made serious and effective preparations to do so
may continue to do so.. but CANNOT license others to do so
If prior use occurred in the course of business, what happens to the right to continue?
- It may be used to authorise partners in the business; and
- it may be assigned or bequeathed as part of the business
Can the resulting products of prior use rights be dealt in freely?
Yes
Does “continuing” prior user rights encompass significant expansion or diversion from the original otherwise infringing act?
No
If your client has prior user rights, what should you consider?
- Whether their prior use could also act as prior art (i.e. if not secret prior use)
- Consider whether any preparations are ongoing - a pause in or shelving of preparations may suggest they are no longer serious/effective
If during court/Comptroller proceedings, a contested patent is found to be wholly or partially valid, what (other than remedies) can be awarded?
A certificate of contested validity
What are the consequences if someone contests a patent with an existing certificate of contested validity?
- If validity is unsuccessfully contested, the proprietor is entitled to costs from the other party on an indemnity basis instead of a standard basis
- i.e. the reasonable legal costs of the proprietor must be paid
Can a co-owner initiate proceedings for infringement?
- Yes
- but the other co-owner must be made party to proceedings
- they aren’t liable for costs unless they actively take part
Can a holder of an exclusive license bring infringement proceedings?
- Yes - they have the same rights as the proprietor to bring proceedings for any act that occurs after the date of the license
Does damages/relief take account of an exclusive licensee’s losses?
Yes
Is a proprietor party to proceedings if an exclusive licensee brings proceedings?
Yes, but they are not liable for costs unless they actively take part
Can a sole licensee bring infringement proceedings?
No - they cannot bring proceedings by themselves w/o proprietor
What is the effect of non-registration of a transaction on subsequent infringement proceedings?
Where a transaction occurred and the patent is then infringed before the transaction is registered:
- Costs or expenses relating to the proceedings will not be awarded
- UNLESS The transaction was registered within 6 months or if it can be proved it was registered as soon as practicable thereafter
What are the conditions for bringing infringement against an act occurring between publication and grant that would infringe the (eventual) patent?
- Proceedings must begin after the patent has granted; and
- the infringing act must infringe the claims as originally published as well as in the final granted patent
What is taken into account when assessing damages for infringing acts between publication and grant?
- Whether it would have been reasonable to expect that infringement would eventually occur given the published contents of the application
What is the relevant publication date for a PCT(GB) or EP(GB) patent originally published in another language, to initiate rights conferred by publication?
- The publication date in English
- For PCT(GB) - usually NPE publication date
- For EP(GB) - when translated claims are published - this is usually at grant but a certified copy can be published earlier; or
- the date a proprietor sends a translation of such a publication to an infringer
From when can damages be awarded for infringement between publication and grant prior to publication of an English translation?
When proprietor sends a translation to the infringer
When is a communication considered to contain a threat of infringement proceedings?
If its recipient would reasonably understand that:
- A patent (or published application) exists; and
- someone intends to bring proceedings (anywhere) in respect of an act done/which would be done in the UK
RRU-PE-IP-UK
Under what circumstances is a threat of infringement proceedings actionable?
Actionable by a person aggrieved by the threat; UNLESS:
- the threat is in respect of an act of making or importing a product for disposal, or using a process; or
- the threat is in respect of intending to perform such an act;
- the threat was made to a person who has performed or intends to perform any such act; or
- the threat is not an express threat and is contained in a permitted communication
PA-U-MIPD-UP-I-P-NETPC
When is a communication considered a permitted communication?
- The information in it that relates to the threat is for a permitted purpose, and
- That information is necessary for that purpose, and
- the person making the communication reasonably believes it is true
What are permitted purposes for sending a permitted communication?
- Giving notice that a patent (or published application) exists;
- Discovering whether, or by whom, a patent or published application has been infringed by an act from s70A(2) i.e. making or importing a product for disposal or using a process (MIPD-UP)
- Giving notice that a person has a right in or under a patent/published app, when a third party’s awareness might be relevant to future proceedings
- The court can treat any purpose as a permitted purpose if it is just to do so
What are NOT permitted purposes for sending a communication with a threat?
- Requesting a person ceases commercial activities in relation to a product or process;
- Requesting a person delivers up or destroys a product; or
- Requesting a person gives an undertaking relating to a product or process
CCA-DUD-GA
What can necessary information (wrt permitted communications) include?
- Statement that a patent is in force or an application has been filed
- Details of a patent or published application or a right in or under it that are accurate and do not mislead
- Identification of a product or process relating to an alleged infringement relegating to an act from s70A(2) (making or importing a product for disposal, or using a process - MIPD-UP)
What remedies can be sought for an actionable threat against the threatener?
- A declaration that the threat was unjustified
- An injunction against continued threats
- Damages in respect of any loss sustained by the aggrieved person as a consequence of the threat
What is a defence for a a person who has sent an actionable threat?
- Show that the action for which proceedings were threatened does (or would, if done) constitute an infringement of the patent/published app; or
- Show that despite taking reasonable steps, the threatener failed to identify a person who has committed the relevant act, and notified the recipient of the steps taken before or when making the threat
- (e.g. comm sent to secondary infringer, failed to find primary infringer and you notify secondary infringer of your attempts)
Are professional advisors liable to a threats action?
- Not if the adviser is acting on the instructions of the threatener, and identifies the threatener in the communication
Who is a professional advisor (wrt threats)?
- Provider of legal, trademark or patent services in a professional capacity, and
- is regulated by one or more regulatory bodies e.g. IPReg
Does professional indemnity affect the liability of the person who issued the instructions to make a threat?
No
Who is the burden of proof on to show that the professional advisor was acting on behalf of a threatener’s instructions?
The professional advisor
Is the threat in terms of the recipient or author’s understanding of what has been sent?
The recipient’s
s70A exemptions to actionable threats follow a what/who format…
- WHAT act is alleged (MIPD-UP)
- WHO is threatened (MIPD-UP or someone intending to do those things)
→ In the latter case, the threat can relate to any type of infringement and need not be limited to MIPD-UP e.g. sales can be targeted
What advice would you provide to a party aggrieved by a threat?
- Ensure that proof of the threat is available
- Ask client to prepare submission explaining how/why they are an aggrieved party (e.g. loss of business/clients due to circulation of threat)
- Depending on facts, consider the tort of malicious falsehood as an alternative or additional basis for action if s70 threat remedy is not possible
Under what conditions can a declaration of non-infringement be ordered from a proprietor by the court?
- A person seeking the declaration has already written to the proprietor requesting such a declaration and giving full particulars of their activities; and
- the proprietor has refused or failed to give acknowledgement
Can the Comptroller give a declaration of non-infringement?
- Yes
- NB - this does not bind the court in future infringement proceedings
Does a finding of invalidity by the Comptroller in a declaration of non-infringement assessment automatically lead to revocation of a patent?
- No
- This must be brought under s72
Who can make an application for revocation of a patent?
any person
What are the 5 grounds for revocation of a patent?
- Lack of patentability (s1-4A - new, inventive, industrially applicable, not excluded)
- Lack of entitlement to grant of the patent (s37)
- Insufficiently enabled description (s14(3), 125A(4))
- Added matter (s76(2)), and
- An amendment extending protection after grant (s76(3))
Under what conditions may an application for revocation for lack of entitlement be made?
- only by those with a proprietory interest through s37; or
- by a declaration to be the entitled party referred by the courts
- must be made within 2 years from grant UNLESS
- It can be shown that the current proprietor knew they were not entitled
Where a patent is found to be partially invalid, revocation will occur unless…?
- Suitable amendments are provided (via s75 of EPO central limitation)
- Within a specified period
Do revocation proceedings affect the right to challenge validity during parallel infringement proceedings?
No
If revocation is refused, can a third party make repeated applications for revocation?
No, UNLESS:
- by leave of court
- by way of appeal; or
- in separate parallel infringement proceedings
Can one go to court for revocation proceedings if the Comptroller has yet to make a decision?
Only if:
- The proprietor agrees, or
- The Comptroller certifies that the court is preferable
Are clarity and non-unity grounds for revocation?
No
Can the Comptroller continue revocation proceedings if the original applicant for revocation drops out?
Yes, if it is considered to be in the public interest
What are the different consequences for revocation and surrender under s29?
- Revocation is retroactive, surrender is not
- NB licensees may sue for refund of licences after revocation
If you believe a patent may be partially invalid, what should you note/consider?
- Consider amending under s27 before asserting the patent and inviting a revocation action, as partial validity can affect damages (if you don’t amend, this might be interpreted as bad faith)
- However, balance this against need to act quickly e.g. when seeking an interim injunction or to avoid estoppel
When can the Comptroller revoke a patent after grant?
- When they determine that a prior art document denies novelty by s2(3)
- Proprietor can object and amend if possible, subject to added matter
When can the Comptroller revoke a patent following the issuance of an infringement/validity opinion under s74A?
- When they find the patent to lack novelty or an inventive step
- After the period for requesting a review has elapsed, or
- after a subsequent appeal has occurred
- NB the proprietor can object and amend if possible, subject to added matter
When an EP(GB) notice of grant is given, what happens to a corresponding GB patent? (double patenting)
- It will be revoked by the Comptroller after the opposition period/proceedings UNLESS
- the proprietor can show them to have different claimed matter; or
- one is amended to achieve this
When is a later granted GB patent revoked due to double patenting vis-a-vis an EP(GB patent)?
- After grant, UNLESS
- an application to surrender the EP(GB) patent is received before the date of grant of the GB patent
Can the Comptroller refuse grant of a GB patent on grounds of double patenting with EP(GB)?
No - but failure to differentiate the applications will result in subsequent revocation
Can you argue/amend to overcome double patenting objections?
Yes
Under which 5 types of proceedings may validity be put at issue?
- s61 or s69 - defence for infringing acts in a patent/from publication
- s70A - actionable threats
- s71 - declaration of non-infringement
- s72 - revocation
- s58 - disputed Crown use
If proceedings against the validity of a patent are currently pending in court, when can separate proceedings which can also assess validity before the Comptroller commence?
Following leave of the court
When can estoppel against validity proceedings occur?
- Where the same party has unsuccessfully challenged validity before, either wholly or in considering certain issues; or
- if an agreement to not challenge exists (other than a license agreement) - although this may be considered as an abuse of dominance
When may validity proceedings be stayed?
- If there is parallel opposition proceedings at the EPO
- However, a factor against this is if the opposition proceedings would take significantly longer as this would prevent access to revocation in the UK
What 7 things can a proprietor request an opinion on from the Comptroller?
- Whether an act is/would be an infringement
- Whether a patent falls foul of novelty/inventive step
- Whether the patent provides a sufficiently enabling disclosure
- Whether a patent application contains added matter
- Whether a claim in a granted patent has been broadened
- Whether a medicines SPC is invalid;
- Whether a plant SPC is invalid
Can opinions re validity/infringement from the Comptroller be given for expired or surrendered patents?
Yes
How is an opinion from the Comptroller requested?
- Form + fee
- Statement outlining question, facts and relevant details
Under what circumstances will the Comptroller not provide an opinion?
- Circumstances are excluded by the rules; or
- The Comptroller thinks the request is inappropriate (frivolous or vexatious, or dealt with in other proceedings)
Following the issuance of an opinion, who is entitled to a hearing on the matter?
- Only the person requesting the opinion, if the opinion goes against the requester’s interests; and
- only the person requesting it can appeal the opinion
Is anyone notified following a request for an opinion?
- Yes - the patentee and registered licensees
- Requests are noted in the register
Can others file observations on issues raised in a request for an opinion?
- Yes - anyone can
- within 4 weeks of advertisement in the register
Can the patentee/licensee make observations on a request for an opinion following notification of the request?
Yes - within 2 weeks after 4 week period of advertisement in the register
Can requests for an opinion be withdrawn?
Yes - in which case no opinion is issued
Can revocation proceedings be invoked by the UKIPO following an opinion?
- Yes, but only in clear cut cases; and
- after the patentee has had an opportunity to apply for review of opinion and/or amend the patent
Who can apply for a review of an opinion issued by the Comptroller?
- Proprietors; or
- exclusive licensees
When is the application for a review of an opinion issued by a Comptroller allowed?
- File form
- When requested within 3 months of issuance of opinion
- If no other proceedings have decided the issue under review
What are the grounds for a review of an opinion issued by the Comptroller?
- An opinion wrongly concludes that a patent is wholly or partially invalid;
- an opinion concludes non-infringement based on its construction of the specification
Is amendment of a patent during revocation or infringement proceedings always allowed?
No - only at discretion of court/Comptroller
Is an amendment during revocation/infringement proceedings retroactive?
Yes - to date of grant
Can anyone oppose an amendment during revocation/infringement proceedings?
Yes
What are the steps required to amend a patent (s75 - amendment during revocation/infringement proceedings; and s27 - post-grant amendment)?
- Request the amendment in writing
- Identify the proposed amendment; and
- give the reasons for it
If a request for an amendment is made to the court, what additional step must be taken?
Notify the Comptroller
If not already in revocation or infringement proceedings, what should you advise the client re amendment of granted patent?
- Use more liberal s27; or
- Use EPO central limitation (but this will affect all EP patents)
What is the test for added matter?
- Within the limits of what a PSA would have derived
- directly and unambiguously
- using CGK
- and seen objectively and relative to the date of filing
- from the whole document as filed
What is the London agreement?
- First case: a state has at least one of DE, FR or GB as an official language and does not require a translation of any EP patent;
- Second case: a state does not have an official EPO language as an official state language, but will not require a translation if the patent if published in one of the EPO official languages by the specified date;
- However, the latter states can also require a translation of the claims in an official language of the state, and
- any state can require a translation of the whole patent in the event of a dispute
What is the authentic text for EP applications?
- At the EPO, the text in the language of proceedings; BUT
- for GB domestic purposes, it is the GB translation of an FR or DE text except in revocation proceedings
If a translation error has resulted in narrower GB protection than that of the granted EP patent, what can be done?
- A corrected translation can be supplied and published, BUT
- the now wider protection is NOT retroactive and people in good faith who now infringe the wider coverage can continue working the invention
When can an EP(GB) application be converted to a UK application?
If the application was NOT received by the EPO within 14 months of priority (e.g. due to PCT RO error), provided that:
- The applicant requests conversion within 3 months from notification of loss (non-extendable) directly with UKIPO and pays application fee and if necessary, translates application and any existing amendments into English within 2 months of filing; or
- Such a request is relayed from another patent office of an EP convention country within 20 months from priority, the applicant pays the application fee and if necessary, translates the application and any existing amendments into English within 4 months
When can the court or Comptroller determine jurisdictions as to right to a patent (EP) other than employee/employer disputes?
- if either the applicant has residence or principal place of business in the UK; or
- other party has residence/principal place of business in UK and the applicant does not have res/PoB in any state that is signatory to the Protocol on Recognition; and
- provided the parties have not agreed in writing to submit to the jurisdiction to a different state
When can the court or Comptroller determine jurisdictions as to right to a patent (EP) FOR employee/employer disputes?
- If either the employee is mainly employed in the UK; or
- the employer has a place of business in the UK to which the employee is attached
When are entitlement proceedings under s12 for an EP patent stayed?
If the same issue is already undergoing proceedings abroad (i.e. in a country signed up to EPC Protocol on Recognition), s12 proceedings are stayed until other proceedings conclude
Does the UK accept rulings of competent authorities of other EP states?
Yes - UNLESS it is appealed… BUT may not recognise the ruling if:
- It was uncontested because the applicant was not adequately notified; or
- It was in conflict with a parallel decision elsewhere
When might a PCT application with a withdrawn/deemed withdrawn GB designation be treated as a valid GB application?
- If the GB designation withdrawal was due to an error by a PCT body, or failure of the RO to forward the application to the IB on time; or
- where a corresponding missed deadline could have been extended under R107 or R108
What filing date is a PCT(GB) application given if it is refused a filing date due to an error by a PCT body?
The Comptroller can decide to allow a GB filing with a date as they direct
When does the GB national phase begin?
- When the 31 month period expires and (if needed) an English translation is filed with the UKIPO; or
- When there is a request for early entry into the national phase and (if needed) an English translation is filed with the UKIPO;
- AND the national fee is paid (£30 + £12 for any translation)
- Otherwise, the application is considered withdrawn
If an amendment is filed during the international phase, and the application is in another language, what must be done on entering the GB phase?
- A translation of the amendment into English must be filed within 3 months from notification of Comptroller
- otherwise the amendment is disregarded
When must the national phase be entered in JP and US?
Within 30 months from priority
What deadlines are due 2 months after NPE?
- Filing an exhibition certificate
- filing designation of inventor
- payment of search fee (+excess claim fees)
- payment of examination fee (+excess page fees)
For PCT applications, when are rights conferred by publication?
- When application is published in English, or
- when a translation is given to an infringing party
Can entry into national phase be delayed?
Yes, by 2 months using R108(2)
Is reinstatement possible for applications deemed withdrawn due to unintentional failure to meet requirements of GB NPE?
Yes
What is the principal of reversal of the burden of proof?
- If a patented process creates a new product, then production of the same product by an unauthorised party is prima facie evidence of the same process, unless it can be proved to the contrary;
- NB this does not require the other party to reveal commercial secrets if unreasonable to do so (e.g. it may be done confidentially w/o disclosure to the patent proprietor)
What happens if a person falsely claims that a product they sell is patented/patent pending?
- Liable for a fine (up to £1000)
Following lapse, expiry or revocation of a patent, is a person liable for falsely claiming that a product they sell is patented/patent pending?
- A reasonable period is provided in which to respond to the lapse, expiry or revocation of a patent, without being liable to pay a fine
- Defence? Use of due diligence to avoid the claim (e.g. false marketing done without the person’s consent, or an inability to control another’s sale of existing marked stock after a reasonable period)
If a person gifts a product falsely labelled with “patented/patent pending”, are they liable for a fine?
No - only applies to disposal for value
What errors can be corrected under s117?
Errors in:
- Translation
- copying
- other clerical errors or mistakes
In a patent specification or any associated documents and forms
NB does NOT apply to names and addresses - use R49(s2)
Can a requested correction under s117 be opposed?
Yes
Can an erroneous withdrawal of an application be corrected under s117?
- Yes
- NB - Where the application has been published; and
- withdrawal was published;
- →The Comptroller will also publish the request for correction
How do you request a correction under s117?
- Request in writing
- clearly specify the correction(s) to be made
What is the test for the correction of an error in a patent specification?
- Must be immediately evidence that nothing else could have been intended;
- UNLESS the error is due to corruption during electronic transmission
Can the Comptroller correct any irregularities of procedure?
- Yes - under their discretion
- e.g. any length extension of due date where irregularity leading to missed due date was UKIPO’s fault
What are the effects on the actions of third parties for an application that is resuscitated following a corrected error of withdrawal?
- Same as for reinstatement
- Actions/serious and effective preparations in good faith - can continue use, authorise their business partners, and assign/bequeath right as part of the business
- Actions in bad faith - continuation/repetition of an infringing act will be treated as infringement
- Therefore, should resuscitate ASAP to prevent third party rights accruing
Describe as of right extension to time limits specified by the Comptroller s117B?
- As of right 2 month extension (or prescribed period under s20 - compliance period or an extension thereof for appeal)
- will be granted if applicant requests it in writing within 2 months of expiry of the missed time limit
- No form of fee
Does reinstatement apply to errors in s117B process (extension of time limits specified by Comptroller)?
- No, as application is not withdrawn if time limit is set by comptroller (and extension period) is missed, but instead is dormant
- Have to rely on discretionary extension
Rule 108 provides for extensions to what deadlines?
- Some statutory deadlines (as opposed to those set by the Comptroller)
- E.g. procedural steps of prosecution e.g. time limits for submitting documents/requests
How long is the as of right R108(2) extension?
- 2 months
- Must be requested by end of extended 2 month period
- Form + fee
How do you obtain a further discretionary extension R108(3) to the as of right 2 month extension R108(2)?
- Form (+ fee if request is granted)
- Evidence why extension should be granted
- Usually needs to be requested within 2 months of missed due date (i.e. if you foresee you will need more time), but extension may be allowed even after the 2 month deadline to extend has expired
- Usually if you miss the as of right 2 month extension you will not get a discretionary extension
When are documents available before publication without the consent of the applicant?
- providing relevant info to EPO
- Sharing info needed for inter-office work sharing schemes to commence prior to publication
- providing bibliographic info about the application
- allowing the Secretary of State to review an application under a secrecy order, BUT
- this only relates to requests under agreed patent office workshare schemes, and the provided info must be kept confidential
If a person is notified that they will infringe an as yet unpublished application, what rights do they have?
They can request info/inspect documents as if the application was published
If a first unpublished application is replaced by a second application (re-filing), what can be done when the second application publishes?
A person can request to inspect the first application
How long after a document is filed can it be inspected?
14 days
What happens on closed and interrupted days at the UKIPO?
- If an act is performed on a closed day, the act is deemed to have taken place the following day
- If a deadline falls on a close or interrupted date, it is extended to the next open day
When can the Comptroller certify a day as an interrupted day? How can you find out about this?
- When there is an interruption to normal operation at the UKIPO;
- When there is an interruption of postal services in the UK
- Certification will appear in OJ
If failure to meet a deadline was due to a delay or failure in a communication service (post, email, courier external to the applicant), what should you advise?
- Request Comptroller extends time limit under R111
- Good practice to use registered post as proof
How is the extend of protection defined?
By the claims as they are interpreted by the description and drawings
When can one use the contents of the prosecution file to interpret the extent of the invention?
- If they resolve a clear ambiguity; or
- if it would be contrary to public interest for the contents of the file to be ignored
- Actavis v Eli Lilly [2017]
What is the test for equivalence in the assessment of extend of protection - Actavis v Eli Lilly [2017]?
- Does the variant achieve substantially the same result in substantially the same way as the invention (i.e. the inventive concept)?
- Would it be obvious to the PSA, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way?
- Would such a reader have concluded that the patentee intended that strict compliance with the literal meaning of the claims was an essential requirement of the invention?
SSR-SSW? O-PD-KSSR-SSW? PISC-LM-ER?
What is an SPC?
- A separate right that provides protection for medical and plant protection products that are subject to regulatory approval and may take an appreciable proportion of a patent’s life to complete
How do you apply for an SPC?
Apply within the later of 6 months from:
- receiving valid marketing authorisation to put the product on the market; or
- within grant
Application fee and renewal fee due in advance of SPC coming into effect
NB has 6m grace period like patent renewals
What is the term of an SPC?
The lesser of:
- 5 years; and
- (the period between date of filing patent and date of product authorisation) minus 5 years
Are intervening rights with respect to SPCs possible?
- Yes - if SPC is not granted until after the original patent has expired
What are the three positions that can be taken by a defendant in a counter-statement to allegations in proceedings?
- Deny allegation
- Require claimant to prove allegation
- Accept allegation
Must also include - a statement of truth
Lack of comment on allegation → assume that defendant agrees
