UK Patents As Property And Infringement Flashcards
What is the nature of a patent/ application and what transactions can be granted
Patent is personal property
Rights can be assigned, mortgaged
Licence can be granted and can allow sub-licensing
(if all co-owners consent and if in writing and signed by or on behalf of the assignor or under seal of body corporate)
What can confer the right to bring infringement proceedings for earlier acts
Assignment, a share or an exclusive licence of a patent
What transactions occur in Scotland
Same as England but must conform to Scottish requirements for property transactions
When must a transaction be documented in the register and how
Within 6 months or as soon as practicable
Using form and paying fee, with evidence
What is the effect of delaying the recording of a transaction or not recording a transaction (re infringement)
Costs of expenses for infringement proceedings will not be awarded to the assignees or exclusive licensees unless transaction registered within 6 months of occurring or as soon as practicable thereafter
What is the effect of registering a transaction or event
A later transaction or event has entitlement over earlier transaction or event if earlier transaction or event was not registered
OR
Comptroller was not notified
AND IN EITHER CASE
The later transacting party did not know about the earlier transaction
With regards to
Assignment, mortgage, licence, sub-licence, transfer of interest following death or fourth order transferring rights or changing name of proprietoe
When can a licence of right be advertised and by who? Who is informed?
By the proprietor any time after grant
The comptroller informs the current rights holders of the change and ensures no contractual obligations prohibiting licensing and will advertise it in the OJ
What is the consequence of a licence as of rights being advertised
Any person is entitled to a licence on agreed terms or on comptroller terms
Comptroller can exchange current licences with licences of right
Renewal fee is halved
Effect of infringement taking a licence as of right
Infringement will only pay damages up to 2 x a retrospective licence. Can occur at any time during proceedings without the infringement admitting liability
When can a licence as of right be cancelled?
At any time after licence was registered using a form and by paying balance of all discounted renewal fees and any licenses must consent to the cancellation
When can a license as of right cancellation be opposed?
Within 2 months of application being filed (and published)
Infringing acts for a product
MODUIK
Make, offer to dispose, dispose, use, import or keep the product
Infirnging acts for a process
Use it or offer to use it in the UK when it is known it would infringe to do so
Or
Offer to dispose, dispose, use, import or keep any products directly obtained by the process
Secondary infringement
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 that it would be obvious that those means are suitable for an intended for putting the invention into effect in the UK
Primary infringement exemptions
Private non-commercial use
Experimental purposes
Medicine prepared in a pharmacy relating to a prescription
Use for or in a ship, aircraft or vehicle registered outside of rhe UK and temporarily in UK waters, airspace, territory
Certain aircraft lawfully in UK and parts and accessories
Farm use: propagating or breeding on own holding
Human and veterinary health trials for market authorisation
Secondary infringement exemptions
Means is a staple product and is not used to induce infringement
Persons supplying prior inventors or pre-restoration/reinstatement rights holders are excused
Who is the proof of infringement with
The patentee except in the case of a process producing and new product and then reverse burden of proof because the existence of the product assumes infringement of the process
Remedies for infringement
Injunction
Order to deliver up or destroy infringing products
Damages or account of profit (up to 6 years ago)
Declaration of validity and infringement
When are damages/account of profit not awarded
When a defendant can prove they were unaware and had no reasonable grounds to suppose that a patent existed and was in force at the time of infringement
Damages awarded during renewal grace period are discretionary
What happens if validity is contested and patent found partially invalid
Relief may still be granted for valid and infringed part, taking into account
Whether infringement knew or would reasonably suspect they were infringing
Whether patent was framed in good faith and with reasonable skill and knowledge
Whether infringement proceedings were brought in good faith
When does a person have the right to continue a use begun before the priority date?
A person in the UK who, before the priority date, in good faith did an act that would infringe the patent if it had been in force or made serious and effective preparations to do so, may continue to do the act but cannot license to others
If done in business, can authorise partners in business and assign or bequeathed as part of business
What is a certificate of contested validity? And what is the consequence of having one?
A certificate awarded after patent is contested and is found to be wholly or partially valid
For any subsequent proceedings that unsuccessfully contest validity the proprietor is entitled to costs
Effect of co-owners with regards to infringement proceedings
Each co-owner can initiate proceedings for infringement, the other co-owner must be made parry to the proceedings but is only liable for costs if they actively take part
Can an exclusive licensee bring infringement proceedings?
Yes, and they have the same rights as a proprietor after the date of the licence. Damages/relief take into account the exclusive licensee’s losses. Proprietor made party to proceedings but only liable for costs if they take part
What are the infringement rights conferred by publication of the application
Same right to bring infringement proceedings for acts between publication and grant that would infringe the eventual patent providing the proceedings are begun after the patent has granted and the act would infringe the claims as published and as granted, the court will consider whether it would have been reasonable to expect just infringement would eventually occur given the published contents of the application
Who can file 3rd party observations and when, and what do they contain
Any party at any time between publication and grant, to question patentability
What happens when 3rd party obs are filed
Copy sent to applicants (unless damaging or offensive) and to the examiner unless s18(4) already issued
Filing obs does not make you party to proceedings
Who can apply for revocation
Any person
What are the grounds for revocation
Lack of patentabiliry
Lack of entitlement (must be made by a person with proprietary interest within 2 years of grant unless can be shown proprietor knew they weren’t entitled to grant)
Insufficiently enabling description
Added matter
Amendment extending protection after grant
When can a comptroller revoke a patent
After grant, when a novelty destroying s2(3) prior art is determined
After validity proceedings and after period for requesting a review has elapsed
When an EP(GB) notice of grant is given (After opposition period has ended)
When can validity be questioned
As a defence for infringing rights
In respect of actionable threats
Declaration of non-infringement
Revocation
Disputed crown use
(Proceedings may be stayed if parallel opposition proceedings at the EPO)
Who can request an opinion and on what?
Any person
Infringing acts
Patentability of patent
Whether patent provides sufficiently enabling disclosure, added subject matter, broadened claims
Whether SPC is invalid
Who can review an opinion and who can appeal an opinion
Patentee or exclusive licensee can review and person requesting the opinion can appeal (within 3 months from date of opinion issue)
What is the extent of protection defined by?
The claims as interpreted by the description and drawings
When does a communication contain and threat of infringement proceedings
If a recipient would reasonably understand that a patent or published application exists and someone intends to bring proceedings in respect of an act done or which would be done in the UK
When is a threat not actionable
If in respect of an act making or importing a product for disposal or using a process or intending to perform such an act
Or the threat is made to a person who has performed or intends to perform such an act, in respect of any act relating to such products or processes
Or
The threat is not an express threat and is contained in a permitted communication
What is a permitted communication
A communication containing information related to the threat for a permitted purpose (I.e. giving notice a patent exists, silvering whether or by whom an infringing act has been done, giving notice when third party’s awareness of the patent may be relevant for future proceedings) or the information is necessary for that person and the person making the communication reasonably believes it is true
What is not a permitted communication
Requesting a person ceases commercial activities
Requesting a person destroys or delivers up a product
Requesting a person gives an undertaking relating to a product or process
Proceedings for actionable threat may be brought against the threatener and the remedies may be…?
What is a defence?
Declaration threat was unjustified
Injunction against continued threats
Damages in respect of any loss sustained by aggrieved person as consequence of threat
A defence is that the act does or would be if done, constitute infringement or that reasonable steps were taken a the threatened person was notified of these steps before or when the threat was made
When can a declaration of non-infringemenr be ordered by the court
When the person seeking the declaration has written to the proprietor requesting acknowledgement and providing full details fo activities and proprietor has refused or failed to acknowledge
What happens if person falsely claims a product he sells is patented or patent pending? What does it include? And what is the defence?
Liable for a fine. Include falsely labeling or marketing a product but allows for a reasonable period to respond to lapse/revocation/expiry
Defence is due diligence to avoid the claim
