FC1 - UK Patent Law Flashcards
(156 cards)
1
Q
Describe the conditions an invention must satisfy in order to be patentable.
A
It must be new, involve an inventive step, be capable of industrial application and not be an excluded invention under s.1(2), s.4A, or s.76 (Schedule A2) of the PA.
2
Q
Outline what does not count as an invention.
A
- A discovery, scientific theory, or mathematical method.
- Literature, drama, music, art or any other aesthetic creation.
- A scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program.
- The presentation of information.
3
Q
Explain what is meant by novelty and what is meant by state of the art.
A
An invention is novel if it does not form part of the state of the art. The state of the art is all matter made available to the public prior to the priority date of the invention’s application.
4
Q
Explain how applications published after the priority date are treated as prior art.
A
Under s.2(3) of the PA, applications published after the priority date of an invention’s application but having an earlier priority can be used to assess novelty but not inventive-step.
5
Q
Under what circumstances can something disclosed to the public be disregarded as prior art?
A
If it occurs later than the beginning of the sixth month period immediately preceding the filing date and:
a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person from the inventor or from any other person to whom the matter was made available in confidence by the inventor,
b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available,
c) disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states such within 4 months of filing the application.
PA77 s2(4)
6
Q
When is an invention considered inventive?
A
It is inventive if it is not obvious for the skilled person having regard to the state of the art (excluding s.2(3) prior art).
7
Q
When is an invention considered to be capable of industrial application?
A
An invention is capable of industrial application if it can be used in any industry including agriculture.
8
Q
Explain the rules on patentability in relation to treatment/diagnosis.
A
s.4A exclusions:
1. Methods of treatment by surgery or therapy practiced on the human or animal body
2. Methods of diagnosis practiced on the human or animal body
However, the use of a particular composition or substance in any such method is patentable. Even if the substance is already known, a new use is patentable. Further new uses are also patentable.
Treatment and diagnosis implies an underlying pathology. Diagnosis must be performed on the body, not extra-corporeally to be excluded.
9
Q
What does not rule out an invention from being patentable regarding biotech?
A
s.76, Schedule A2: An invention is not unpatentable solely on the grounds:
1. It comprises or consists of biological material
2. A process for producing, processing, or using biological material.
3. The isolation of biological material from its natural environment or produced by means of a technical process isn’t unpatentable even though it may have previously occurred in nature.
10
Q
What are 6 non-patentable biotech inventions?
A
- Human body at various stages of development (including discovery of a gene sequence)
- Industrial or commercial uses of human embryos
- Modifying the human germ line
- Processes for modifying an animal’s genetic identity which may cause the animal suffering without there being substantial medical benefit to the animal or man
- Any plant or animal variety, or essential biological process necessary for producing plants or animals
- Methods for cloning human genes.
11
Q
Define the right to apply for and obtain a patent.
A
Any person may apply for a patent alone or jointly. A patent may only be granted to:
1. the inventor(s)
2. someone entitled by law, treaty, or agreement at the time of invention to the property
3. any successor in title to either of the above.
A person is a natural or legal person, e.g. a company (having appropriate structure).
12
Q
Describe the procedure for naming the inventor(s).
A
If all applicants are inventors, this can be declared on PF1 when filing the application. If an applicant(s) is not one of the inventors, this needs to be indicated to the patent office using PF7 within 16 months of the priority date of the application. PF7 must indicate:
1. the identity of the inventors
2. how the applicant has derived the right to apply for the patent.
13
Q
Describe the implications of co-ownership.
A
Each person has an equal, undivided share in the patent, subject to any agreement to the contrary.
Each person may perform the invention without infringing upon the rights of any of the others. A person may supply the co-owner with the means to perform the invention without being considered a secondary infringer.
Consent of co-owners is required to:
1. amend or revoke the patent
2. license, assign, or mortgage the patent.
14
Q
Describe an inventor’s right to be mentioned.
A
An inventor has a right to be mentioned in any published application or granted patent. If an inventor is not mentioned, they can apply to be mentioned. An inventor can waive the right to have their address mentioned without reason, but must provide a reason for not wishing to be named as an inventor.
15
Q
Under what circumstances would an invention made by an employee be taken to belong to an employer?
A
It belongs to the employer if:
1. the invention was made during the course of normal duties, or in duties specifically assigned to the employee, and in either case the duties were such that the invention may reasonably be expected to result from carrying out the duties.
2. the invention was made during the course of the employee’s duties and the particular responsibilities arising from the nature of the duties meant that the employee had a special obligation to further the interests of the employer.
Otherwise - it belongs to the employee.
16
Q
Describe two acts which do not infringe the design right or copyright of an employer in relation to an employee-owned invention.
A
- Anything done by, or on behalf of, the employee for the purposes of pursuing a patent application.
- Anything done for the purposes of working or performing the invention.
17
Q
Describe the two scenarios where a court may award compensation to an employee in regards to a patent.
A
- Where it appears to the court or comptroller on an application made by an employee that:
a) The employee has made an invention belonging to the employer for which a patent has been granted to the employer.
b) having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent for it is of outstanding benefit to the employer, and
c) by reason of those facts, it is just that the employee should be awarded compensation to be paid by the employer. - Where it appears to the court or comptroller on an application made by an employee that:
a) a patent has been granted for an invention to an employee;
b) his rights in the invention, or in any patent or application, have since been assigned to the employer or an exclusive licence under the patent or application has since been granted to the employer;
c) the benefit derived by the employee from the contract is inadequate in relation to the benefit derived by the employer from the invention or the patent for it;
d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer.
18
Q
When can the employee make an application for compensation?
A
The employee can make an application anytime after grant, and within 1 year of the patent having lapsed.
19
Q
What should be satisfied by the amount of compensation awarded to an employee?
A
Should be 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.
20
Q
When determining a “fair share of the benefit” to be secured for an employee for an invention which has always belonged to the employer, what shall be taken into account?
A
a) the employee’s duties and existing pay;
b) the effort and skill in inventing;
c) any co-inventors contribution (esp. other employees);
d) the employer’s contribution.
21
Q
How may the compensation be ordered to be paid?
A
Lump sum, periodically, or both.
22
Q
Explain the role of contracts with regard to an employee’s rights.
A
Any term in a contract which diminishes the employee’s rights in inventions made by him after the date of the contract, or in patents or patent applications for those inventions, shall be unenforceable against him.
23
Q
What form must be used for filing a patent application, and when is the application fee due?
A
PF1 is used. The fee is due 12 months from filing if no priority date. The fee is due the later of 12m after priority or 2 months after filing if there is priority date.
24
Q
An application for a patent must contain what?
A
1) Request for the grant of a patent,
2) a specification comprising:
- description of the invention
- one or more claims (optional at filing)
- drawings if referred to
3) an abstract (optional at filing)
25
Once documents have been filed at the patent office, describe the next step for the case where a date of filing is established, and the case where a date of filing isn't established.
If a filing date isn't established, the comptroller must notify the applicant what needs to be filed to obtain a filing date. If the filing date is established, the comptroller must notify the applicant of the date of filing and the requirements to be met and the necessary deadlines in order to avoid the application being treated as withdrawn.
26
Describe what the specification must do.
Disclose the invention in a manner that is clear enough and complete enough for a person skilled in the art to perform the invention.
27
Describe four things the claims must satisfy.
The claims must be:
1. clear and concise
2. supported by the description
3. define the matter for which the applicant seeks protection
4. relate to one invention or a group of inventions which are linked to form a single inventive concept.
28
Explain how unity of invention is assessed.
A group of inventions form a single inventive concept when there exists between the inventions a technical relationship which involves one or more of the same corresponding special technical features. Special technical features are the features which define the contribution of the inventions over the prior art.
29
What is the purpose of the abstract?
To give technical information.
30
When can an application be withdrawn, and what are the conditions of withdrawing?
Any time before grant, and withdrawal cannot be revoked.
31
Describe how the filing date of an application is determined.
The filing date is the earliest date on which the following conditions are met:
1. The application documents indicate that a patent is sought.
2. They identify the applicant or enable contact with them.
3. The application documents contain either:
- something appearing to be the description
- or a reference to an earlier relevant application by the applicant or their predecessor in title (including filing date, application no., and country of filing).
32
Describe the requirements and deadlines for filing a divisional application.
The parent application cannot have been terminated, withdrawn, or granted, and it must be at least 3 months prior to the compliance date. Application must be filed by original applicant or successor in title.
33
Once a filing date has been established, describe the procedure for filing a "missing part", and describe the relevant period.
Adding figures and text is done between the date of filing the application and the date of the preliminary examination or within 2 months of notification by the preliminary examiner.
New filing date: The date on which the missing part is filed (in time) will become the new date of filing for the application.
Unchanged filing date: The filing date is not changed if:
1. on or before the filing date, a priority document is declared; and
2. a request to keep the filing date is made in writing; and
3. the relevant matter in the priority document pertaining to the missing parts is identified.
The certified priority document must also be filed within earlier of 16-months from priority or four months from date of request to keep the filing date.
## Footnote
PA77 s.15(5,6,7) and R18.
34
Once a filing date has been given, what can cause the application to be considered withdrawn? Include the relevant deadlines.
Later of 12mfp or 2mff:
1. claims and abstract must be filed
2. application fee must be paid
3. search must be requested and search fee paid
4. if an earlier application is referenced on filing, then a description must be filed - a certified copy of the referenced document must also be filed within 4mff.
## Footnote
16mfp:
1. inventor details (identity of inventors and derivation of rights if the applicant(s) is not the inventor(s).
PA77 s15 and s13
35
When a divisional application is filed, what is the deadline for filing PF7?
The later of 2 months from filing the divisional application.
36
What is the deadline for filing PF7 when a divisional application is filed?
The later of 2 months from filing the divisional application or 16 months from the priority date.
## Footnote
If the application is filed within 6 months of compliance, PF7 must be submitted when filing the divisional.
37
What are three requirements for the comptroller to refer an application for preliminary examination?
Application has a filing date, hasn't been withdrawn or treated as such, application fee has been paid.
38
What are the deadlines for filing an abstract and claims for a divisional application?
If the divisional application is filed more than 6 months prior to compliance deadline: the later of 2 months from filing the divisional or 12 months from priority.
## Footnote
If divisional filed within 6 months of compliance, the deadline is the date on which the divisional is filed.
39
What must be satisfied for the comptroller to refer an application to an examiner for a search?
Preliminary examination completed, application not withdrawn or treated as such, applicant requests search and pays the search fee, application includes a description and at least one claim, description and claims comply with language rules.
40
How is a search requested?
Using PF9A and paying the search fee.
41
What happens if the examiner determines non-unity during a search?
The examiner will only search the first invention in the claims. The remaining claims will only be searched if requested and payment for further searches is made.
42
What must the specification contain and in what order?
A description of the invention, at least one claim, any drawings referenced by the description or claims.
## Footnote
In the above order, unless submitted electronically, then no order necessary.
43
What must a reference to an earlier application include?
The application number, the date of filing, and the country of filing.
44
What are the requirements for a copy of the earlier referenced application?
It must be certified by the authority with which it was filed. If not in English or Welsh, it must be accompanied by an English translation or a declaration that the description filed is an English translation of the earlier application only if requested by the patent office.
45
What is the deadline for requesting examination for divisional applications?
The later of 2 months from filing the divisional or 2 years from the priority date.
## Footnote
If divisional is filed within 6 months of compliance date, request must be made on filing.
46
Are there any excess claims fees payable in the UK?
Yes, there are excess claims fees for claims exceeding 25. These are payable with the search fee.
## Footnote
If claims are introduced after the search, then the fees are payable at grant.
47
Are there any excess page fees payable in the UK?
Yes, there are excess page fees for pages exceeding 35. These are payable with the examination fee.
## Footnote
If pages are introduced after the examination, then the fees are payable at grant.
48
What should the examiner do during a search?
Make an investigation as is, in his opinion, practicable, and necessary to identify the documents he thinks will be needed to decide whether the invention is novel and inventive.
49
What happens when the examiner considers the application to relate to two or more inventions not forming a single inventive concept?
The examiner will only search the first invention in the claims.
## Footnote
The examiner will invite the applicant to pay a further search fee if they wish the second invention to be searched.
50
What is the deadline for requesting further searches?
The deadline for requesting further searches for other inventions is 3 months prior to compliance date.
51
What is the form needed and the deadline for requesting examination?
PF10 and the deadline is 6 months after publication of application.
52
What is the compliance period for putting the application in order for allowance?
The later of 4.5 years from filing/priority or 12 months from receiving the first substantive examination report.
53
When is an application published?
An application is published once it has a filing date. It is published as soon as possible after 18 months from the priority date.
54
What does the examiner do during the substantive examination?
Investigates whether the application complies with the rules and requirements of the Patents Act 1977.
55
What happens if the examiner considers the application to satisfy or not satisfy the requirements and rules of the PA77?
Examiner sends a report to the comptroller.
## Footnote
If the examiner has objections, the comptroller gives the applicant an opportunity within a specified time period to make observations on the report and/or amend the application to comply with the requirements.
56
What extensions are available for responding to s.18 report?
S117B extensions. A 2 month extension is available as of right - request must be made in writing.
## Footnote
Further extensions are discretionary and require an adequate reason.
57
When the comptroller notifies the applicant that the application is in order for allowance, what fees are payable for grant?
Within 2 months of being notified that the application is in order for allowance, fees must be paid (if due).
## Footnote
If claims exceed 25 and are greater than the number of claims that were in the application when the search was requested, claims fees are due.
58
Can you get an extension of time for paying grant fees?
Yes. It is a statutory deadline, therefore R108(2) extension as a right by filing PF52 and paying a fee.
59
What must be done for an application to be reinstated if refused or treated as withdrawn?
Comptroller shall reinstate the application only if requested by the applicant, according to the rules, and the Comptroller is satisfied that the failure was unintentional.
## Footnote
Reinstatement may not occur if an extension is still available.
60
What is the deadline for requesting reinstatement?
Reinstatement must be requested within 12 months beginning immediately after the date of termination of the application using PF14.
61
What happens if reinstatement is refused?
Applicant is notified and they have one month to request a hearing.
62
What is the effect of reinstatement with respect to anything done with or to the application between loss and reinstatement?
Anything done is treated as being valid.
63
What is the effect of reinstatement on actions in bad faith?
If the application is already published, then infringing acts are treated as such if done during a potential extension period or continuing/repeating an earlier infringement.
64
What are the effects of reinstatement on actions in good faith?
If the application is already published, then between termination and a notice of a request for reinstatement, anyone who began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application may continue.
65
What are the UKIPO's hours for filing of new applications not claiming priority?
All days and at all times.
66
What are the UKIPO's hours for filing of new applications which claim priority?
00:00 Monday to 23:59 Friday.
67
What are the UKIPO's hours for renewal of existing IP rights?
00:00 Monday to 23:59 Friday.
68
What are the UKIPO's hours for filing of all other forms and documents?
00:00 Monday to 23:59 Friday.
69
What days is the UKIPO closed on?
Good Friday, Christmas Day, and Bank Holidays (except for new applications not claiming priority).
70
When can an applicant amend an application before grant?
Between receiving the search report and the first substantive examination report.
## Footnote
After receiving a positive examination report, he can amend once in the period of two months starting immediately after the report was sent.
71
What is the procedure for making a post-grant amendment?
Proprietor must request amendment in writing, identify the proposed amendments, and give the reason for it.
## Footnote
The comptroller may require the amendment to be shown in a copy of the specification.
72
What is the effect of an amendment on a granted application?
The amendment is deemed to have had effect from the date of grant of the patent.
73
What are the rules for whether amendments are allowed?
Pre-grant amendments cannot introduce subject-matter extending beyond that in the application as originally filed.
## Footnote
Post-grant amendments cannot extend the protection conferred by the patent.
74
What errors may the Comptroller correct in an application or granted patent?
Any error of translation, transcription, clerical error or mistake in any specification of a patent or application or any document filed in connection with a patent.
75
What test must be satisfied before the Comptroller can correct an error?
The correction must be obvious - immediately evident that nothing else could have been intended in the original specification.
76
What is the difference between an amendment and a correction?
A correction is the alteration of a document to better express the intention of the drafter.
## Footnote
An amendment is an alteration sought due to new facts or changed circumstances.
77
What is the procedure for correcting an error in a patent or patent application?
Correction of a name must be requested on PF20.
## Footnote
Otherwise, a request to correct a document must be made in writing clearly identifying the proposed correction.
78
When may the comptroller restrict publication, and for how long?
When the application contains information whose publication would be prejudicial to national security, the comptroller may restrict publication of that information.
79
When may the comptroller restrict publication?
The comptroller may restrict publication if the application contains information whose publication would be prejudicial to national security or public safety until the end of 21 months after the priority date.
80
What is the effect of filing a priority declaration if it complies with the rules?
The filing date of the application becomes the priority date.
81
What are the relevant procedures for claiming priority?
Priority should be claimed on filing. If not claimed, use PF3 within 16 months of the priority date to make the declaration and pay a fee.
82
What is meant by regenerating the priority date?
Regenerating the priority date involves withdrawing an application and refiling it to get a later priority date, under specific conditions.
83
What is the procedure when a patent is granted?
Notice of grant is given in the OJ, a grant certificate is sent, and the B spec is published along with inventor and applicant details.
84
How long is a patent in effect?
A patent is in effect for 20 years from the date of filing.
85
When are renewal fees due for a UK patent?
Renewal fees are due starting from the 4th anniversary of the filing date.
86
What is a renewal period?
The period in which renewal fees may be paid.
87
What is the renewal period for the first renewal?
The renewal date is the 4th anniversary of the filing date, with specific conditions based on the grant date.
88
How do subsequent renewals work?
Each subsequent renewal date is the anniversary of the preceding renewal date, with a renewal period of 3 months preceding the renewal date.
89
What form is used for renewals?
PF12.
90
What happens if a renewal fee is not paid by the end of the renewal period?
There is a 6-month grace period to pay the renewal fee with a surcharge; otherwise, the patent is treated as lapsed.
91
Explain the process for restoring a lapsed patent.
Apply for restoration using PF16 within 13 months from the end of the grace period, ensuring the failure to pay was unintentional.
92
What are the rules around infringement of a restored patent?
Infringements before the end of the grace period count upon restoration; no infringement occurs between the grace period's end and restoration publication.
93
Describe the procedure for surrendering a patent.
Offer to surrender must be in writing, stating there is no pending action for revocation or infringement.
94
What are the implications of surrendering a patent?
If accepted, the surrender takes effect from the date of notification in the OJ, and prior infringements cannot be sued.
95
What conditions must an assignment satisfy?
Must be in writing and signed by or on behalf of the assignor or mortgagor.
96
How must transactions regarding patents be recorded?
Using PF21, with evidence of the transaction or signed by both parties.
97
What type of transactions may take place with respect to a patent?
Rights may be assigned, mortgaged, or licensed, including sub-licenses.
98
Explain when a transaction is ineffective against a later transaction.
If the earlier transaction was not registered and the later claimant was unaware of it.
99
What is meant by a licence of right?
Any person is entitled to a licence under the patent on terms settled by agreement or by the Comptroller.
100
What does the Comptroller do if the proprietor applies to register that licences are available as of right?
Informs current rights holders and advertises in the OJ.
101
What are the benefits of a licence of right?
Defendants who undertake to take a licence cannot be granted an injunction, and renewal fees may be halved.
102
Explain how a licence of right is cancelled.
The entry can be removed if renewal fees are paid and there is no existing license or all licensees consent.
103
When can the holder of a licence of right bring proceedings for patent infringement?
If the proprietor refuses or neglects to bring proceedings within 2 months of being asked.
104
What is the difference between a sole licence and an exclusive licence?
An exclusive licence excludes the patent proprietor from using the patent, while a sole licence does not.
105
Explain when a new proprietor/exclusive licensee is entitled to payments from an infringement.
Entitled to costs from infringement before registration if registration occurs within 6 months or was not practicable.
106
What events can a person request to be notified of regarding a patent application?
Request made using PF49 for events such as substantive examination requests, application publication, and termination.
107
What acts constitute primary infringement?
Acts include making, offering to dispose, using, importing, or keeping the product without consent.
108
What acts constitute contributory infringement?
Supplying or offering to supply unauthorized parties with means relating to an essential element of the invention.
109
What are the exemptions to acts that would otherwise be infringing?
Exemptions include private acts, experimental purposes, and specific uses related to health or agriculture.
110
What is the law for people who supply means under exemptions?
They still secondary infringe unless supplying the Crown or prior inventors.
111
Who may bring civil proceedings for patents, and what claims can be made?
Civil proceedings may be brought by the proprietor for injunctions, orders to destroy infringing products, damages, and declarations.
112
The court cannot award which two claims for a single infringement?
Both damages and account of profits.
113
When can the Comptroller be asked to decide whether infringement has occurred?
If the proprietor and defendant agree, the Comptroller can only award damages or a declaration of validity.
114
Describe the restrictions on recovery of damages.
Damages will not be awarded if the defendant was unaware of the patent's existence and validity at the date of infringement.
115
Is the word 'patented' enough to constitute reasonable grounds for being aware of a patent?
No, unless accompanied by the patent number or a link to that number.
116
What rights does a person have to continue an act before the priority date?
They may continue acts done in good faith before the priority date but cannot license others.
117
What can happen if acts were done before the priority date in the course of a business?
The authorized person may assign rights to business partners or to anyone acquiring that part of the business.
118
Explain the implication of a UK patent being found partially valid during infringement proceedings.
The court may grant relief for the valid part of the patent that is infringed.
119
Who can authorise business partners to act?
The authorised person may authorise any business partners to do the act.
120
Can the authorised person assign their rights?
The authorised person may assign that right to any person who acquires that part of the business in which the act was done or the preparations were made.
121
What happens if a UK patent is found to be partially valid during infringement proceedings?
The court may still grant relief in respect of that part of the patent that is valid and infringed.
## Footnote
When awarding damages, costs or expenses, or making an order for an account of profits, the court will consider: a) whether the infringer knew or would reasonably suspect that they were infringing, b) whether the patent was framed in good faith and with reasonable skill and knowledge, c) whether the infringement proceedings were brought in good faith.
122
Who can bring proceedings for alleged infringement with multiple proprietors?
A joint proprietor may, without the concurrence of others, bring proceedings in respect of an act alleged to infringe the patent, but must make the others parties to the proceedings.
123
What rights does an exclusive licensee have regarding infringement proceedings?
The holder of an exclusive licence shall have the same right as the proprietor to bring proceedings for any infringement of the patent committed after the date of the licence.
## Footnote
Damages/relief take account of the exclusive licensee's losses.
124
When may a certificate of contested validity be issued?
A certificate may be issued if the patent is contested but found to be wholly or partially valid.
## Footnote
If awarded, the proprietor is entitled to costs from the other party in subsequent proceedings that unsuccessfully contest validity.
125
What rights are conferred by the publication of a patent application?
When an application is published, the applicant has the same rights regarding infringement as if the patent was granted on the date of publication.
## Footnote
The applicant is entitled to bring proceedings for infringement only when the patent is granted and the act would have infringed both the patent and the claims as originally published.
126
What is the burden of proof in proceedings for a product produced by a patented process?
If the invention is a process for obtaining a new product, the existence of the product constitutes proof, and the burden is on the alleged infringer to show that the patented method was not used.
127
When is a communication considered a threat of infringement proceedings?
If the recipient would reasonably understand that a patent exists and someone intends to bring proceedings in respect of an act done or which would be done in the UK.
128
When is a threat of infringement proceedings not actionable?
If the threat is: 1. in respect of making or importing a product for disposal, or using a process, 2. intending to perform such an act, 3. made to a person who has performed or intends to perform such an act, or 4. not an express threat and contained within a permitted communication.
129
What is a permitted communication?
A communication is permitted if the information relating to the threat is for a permitted purpose, necessary for that purpose, and the person making the communication reasonably believes it is true.
130
What are the permitted purposes under permitted communication?
a) Giving notice that a patent exists, b) discovering whether a patent has been infringed, c) giving notice that a person has a right in or under a patent when a third party's awareness may be relevant.
131
What are not permitted purposes under permitted communications?
a) Requesting a person ceases commercial activities, b) requesting a person delivers up or destroys a product, c) requesting a person gives an undertaking relating to a product.
132
What remedies are available for a groundless threat?
Proceedings for an actionable threat may be brought against the threatener for: a) a declaration that a threat was unjustified, b) an injunction against continued threats, and/or c) damages for any loss sustained.
133
What can be used as a defense by the person making a threat?
It is a defense to show that the action threatened constitutes an infringement of the patent or that the threatener failed to identify who committed the relevant act.
134
What conditions must be met for actionable threat proceedings not to be allowed against a professional advisor?
The professional advisor must be acting on the instructions of the threatener and identify the threatener in the communication.
135
When may a declaration of non-infringement be sought?
May be ordered by the court if the person seeking it has already written to the proprietor requesting such a declaration and the proprietor has refused or failed to acknowledge.
136
What is the effect of a declaration of non-infringement?
Creates an estoppel against the patentee contending that the acts set out in the declaration constitute an infringement of the patent.
137
What happens if a person falsely represents a product as patented?
He shall be liable on conviction to a fine of up to level 3 on the standard scale (£1000).
## Footnote
This does not apply where the representation is made for a product where the patent has expired or been revoked.
138
When can third party observations be filed?
Between publication and the date of grant, any person may write to the Comptroller questioning the application's patentability.
139
When will the Comptroller not send third party observations to the proprietor?
If he thinks it will encourage offensive or anti-social behaviour.
140
What are the rules for objecting to a patent or amendment in relation to unity?
No person may object to a granted patent on grounds of unity either as the claims currently stand or as proposed to be amended.
141
Who can apply for a patent to be revoked?
Any person, including the proprietor.
142
What grounds can a patent be revoked on?
a) Lack of patentability, b) lack of entitlement to grant, c) insufficiently enabling description, d) added matter, e) amendment extending scope after grant.
143
What is the condition for revocation on the grounds of lack of entitlement?
The application must be made by a person found by the court to be entitled to the patent and must be brought within 2 years of grant.
144
When can the Comptroller revoke a patent of his own accord?
1. If a prior art document denies novelty, 2. If an opinion indicates novelty or inventive step are not satisfied, 3. If a corresponding EP(GB) has a notice of grant unless the proprietor shows different claimed matter.
145
In which proceedings may validity be put in issue?
a) As a defense for infringing rights, b) proceedings for an actionable threat, c) proceedings for a declaration of non-infringement, d) in proceedings for revocation, e) in proceedings under disputed Crown use.
146
On what grounds may the validity of a patent be contested?
The same grounds on which the revocation of the patent may occur: a) lack of patentability, b) lack of entitlement, c) insufficiently enabling description, d) added matter, e) amendment extending protection after grant.
147
What matters can a Patent Office Opinion be requested on?
a) Whether a particular act is an infringement, b) whether the patent is not a patentable invention, c) whether the specification provides a sufficiently enabling disclosure, d) whether added subject matter exists.
148
What is the procedure for obtaining a Patent Office Opinion?
Request for an opinion using PF17 and paying a fee of £200. Provide a statement outlining the question and relevant details. The request is then advertised and parties notified.
149
Who can request an opinion from the Comptroller?
Any person may request the Comptroller to issue an opinion in relation to the patent.
150
On what grounds may the UKIPO refuse to issue an opinion?
The Comptroller considers it inappropriate, the request is frivolous, the question has been sufficiently answered in other proceedings, or the requester has withdrawn the request.
151
Who may apply for a review of a Patent Office Opinion?
Only the proprietor or exclusive licensee.
152
When must a request for review be made regarding a Patent Office Opinion?
Within 3 months beginning on the date the opinion was issued.
153
What grounds may a review of a Patent Office Opinion be sought on?
Wrongly concluded that the patent was invalid or that an act does not constitute infringement.
154
How can one appeal a Patent Office Opinion?
Appeal to the Patents Court but only on restricted grounds.
155
What is the innocent infringement test?
It is that you are unaware of a patent rather than being unaware of infringing the patent. The burden of proof is on the infringer.
156
Outline the procedure for post-grant amendments.
1. Proprietor must request amendment in writing,
2. Preferably e-file the request,
3. Comptroller may require marked copy of specification,
4. If EP(GB) was published in another language, provide translation,
5. Comptroller may give subsequent directions,
6. If approved, updated specification filed as per formal requirements of schedule A2 (i.e. conform to publication standards).
