PA 69 – Infringement of rights conferred by publication of application

Question 1

what does S69 concern

Answer 1

infringement rights conferred by publication of an application

Question 2

What rights does the publication of an application confer

Answer 2

S69(1)
where it has been published, the applicant has the same right to bring infringement proceedings for any act occurring between publication and grant that wold infringe the (eventual) patent

Question 3

What circumstances does publication actually confer rights

Answer 3

S69(2)
rights are conferred PROVIDING
a) the proceedings are begun after the patent has been GRANTED
b) the act would infringe the claims as originally published as well as the final granted patent

Question 4

what types of damages do not apply for pre-grant infringment

Answer 4

S69(3)
S62(2) and (3) (infringement during the grace period or pre-amendment) do not apply, but when evaluating such cases the court will consider whether it would have been reasonable to expect that infringement would eventually occur given the published contents of the patent.

Question 5

What count as the published claims for infringement for the published application

Answer 5

the claims as filed, and any claim amendments filed BEFORE publication

Question 6

Are there any limitations on what application can confer rights

Answer 6

the application must be in English, rights conferred on an EP(GB) non English patent are only conferred on the publication of the English claims.
If the applicant sends an English copy of a non-English application, rights will be conferred from that date.

Question 7

What does S69 mean you should do if you think you application may be infringed

Answer 7

request early publication
send an English translation to the potential infringer

Question 8

what should you do if you were working the invention between the priority date and publicaton

Answer 8

There is a buffer period so actions can be wound down (i.e. clearing stocks etc.), parties to check if they were prior users, or if the application would be rejected for lack of novelty/inventive step. An infringer post publication has some leeway (but its risky) if it was unclear whether they would infringe the actual patent.