FD4 notes

Question 1

comprising

Answer 1

comprising = having the following features but may include others (Virgin) [only once]

Question 2

consisting of

Answer 2

consisting of = only the following features, no others (Virgin) [only once]

Question 3

characterised in that

Answer 3

characterised in that = wherein (Virgin) [only once, note that pre-characterising portion refers to the prior art, but only if closest prior art is mentioned in the patent)

Answer 4

look for functional definitions
items /methods are within claim scope, they don’t per se infringe
drawings can be relied upon for relative dimensions, but not absolute

Question 5

rounding errors (90-135 = 89.5 - 135.5)

Answer 5

Smith & Nephew vs Convatec

Question 6

Application of pozzoli for FD4

Answer 6

• who is the person skilled in the art, what is their relevant CGK?
  Skilled person is … Because []
  Relevant CGK includes … because []
• what is the inventive concept in the claim?
  Inventive concept is … because []
  Achieved by … because []
• what are the differences between cited state of the art and the inventive concept?
  State of the art is … because []
  Differences are that (does not achieve inventive concept) because does not include (features of claim), instead includes (alternative features) because []
• would the differences have been obvious to the skilled person?
  Would have to replace (alternatives) with (features of claim)

Question 7

Enforcement

Answer 7

• Act ASAP
• Patent in force, may commence litigation immediately
• Sue immediately with application to amend (s75)
• Notice to infringer, threats
• Test Purchase
• Interim Injunction
• Damages from publication

Question 8

Amendments

Answer 8

• S75 (may take immediate action but less flexible)
• S27
• EPO central limitation / S27 / S75
• Licensee Impact

Question 9

Defence to infringement

Answer 9

• Secret Prior Use
• Opposition, IPO Opinion (provides leverage for negotiation)
• Prior art search
• Declaration non-infringement

Question 10

Negotiation

Answer 10

• Appropriate?
• Likelihood of success
• Cross-license
• Product / Field Split

Question 11

Sections of Conclusion

Answer 11

• Summary
• Amendment to avoid partial invalidity
• Sufficiency
• Address Letter
• Enforcement and Defence
• Negotiation
• Other

Question 12

Other Issues

Answer 12

• Renewals
• Family Members
• New Applications
• Licence Recorded
• Contracts in writing, request copies
• Priority Claims