PA 125 – Extent of invention

Question 1

What does S125 concern

Answer 1

the Extent of invention

Question 2

What is the extent of protection of a patent defined by

Answer 2

S125(1)
by the claims as they are interpreted by the description and any drawings

Question 3

What will the priority date of a claim which encompasses two inventions be

Answer 3

S125(2)
The claims may have different priority dates for each invention

Question 4

How does the protocol on Art 69 EPC apply

Answer 4

S125(3)
it corresponds to S125(1) and applies for the purposes of defining the extent of protection given to a patent.

Question 5

Does the UK have a principle of file wrapper estoppel?

Answer 5

Traditionally no, , as the meaning of the patent shouldn’t be affected by someone having access to said file, however in Actavis, it was established that the UK courts may refer to prosecution files in limited circumstances, particularly if they resolve a genuine ambiguity in the patent itself, or it would be contrary to public interest not to

Question 6

How should claims be contrued

Answer 6

Claims should be purposively construed, to give an intended claim scope

Question 7

What are the Improver as modified by Activis equivalency test

Answer 7

i) - Notwithstanding that it is not within the literal meaning of the claim, does the variant achieve substantially the same result in substantially the same way - if no, it will be outside the scope.

ii) if yes to i) Would it be obvious to the skilled person, at the priority date, knowing that the variant achieves substantially the same result, that it does so in substantially the same way as the invention - if no, will be outside the scope

iii) if yes to ii) Would said reader have concluded that the patentee nonetheless intended strict compliance with the literal meaning of the relevant claims was an essential requirement - if yes - outside the scope

If yes, yes, no, then the variant infringes