1
Q
Discuss the significance of priority date AND claim for priority
A
- The priority date is, prima facie, the date of filing of the application.
- The date of filing of an earlier “priority” application.
- The date of filing of an earlier application can be the priority date if the following conditions are met
- Declare the earlier application
- Priority is claimed within 12 months than that of the application in suit (+2 months if deadline missed unintentionally)
- Priority claim made by the same applicant or their successor in title
- The skilled person needs to be able to derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole
- An applicant has the right to file an identical application in another Paris Convention country within 12 months without being exposed to the risk that their own first application may be assessed as novelty destroying in subsequent application procedures in other jurisdictions
2
Q
Discuss the significance of a person skilled in the art
A
- The person is notional (a legal construct)
- An expert in the relevant field of technology who is possessed of average knowledge and ability
- Can be a team of experts with different basic skills
- He is aware of what was common general knowledge in the art at the relevant date has access to everything in the “state of the art”.
- He can conduct routine experiment but they have no inventive capacity.
- It is significant as the question of obvious is assessed through them. This person offers an objective test of whether a particular development can be protected by a patent.
3
Q
Discuss the significance of protected by the basic patent in force (in relation to SPCs)
A
Basic patent – a patent which protects:
- a product,
- a process to obtain a product
- an application of a product
…and which is designated by its holder for the purpose of the procedure for grant of a certificate.
- It is significant because of one the criteria for being granted an SPC is that “the product is protected by a basic patent in force”.
- Product is “active ingredient or combination of active ingredients”
- The protection conferred by the certificate cannot exceed the scope of the protection conferred by the basic patent
4
Q
What is the benefit of an SPC
A
- The purpose of an SPC is to re-establish a sufficient period of effective protection of the basic patent by permitting the holder to enjoy an additional period of exclusivity on the expiry of that patent.
- This is intended to compensate, partly, for the delay to the commercial exploitation of their invention by reason of the time elapsed between the date on which the application for the patent was filed and the date on which the first marketing authorisation in the EU was granted.
- SPCs aim to offset the loss of patent protection for pharmaceutical and plant protection products that occurs due to the compulsory lengthy testing and clinical trials these products require prior to obtaining regulatory marketing approval.
5
Q
Discuss the significance of restoration
A
- Getting a patent application back if it lapsed due to failure to pay renewal fees.
- You can renew up to 6 months after the due date but you’ll have to pay £24 on top of the renewal fee for each extra month.
- You can apply to have your patent restored within 19 months of the date the patent ceased – this is the date on which the renewal fee you did not pay was due.
- This provides an opportunity to those who for unintentional reasons did not pay renewal fees
- Must fill-in the relevant form and submit evidence that failure to pay was unintentional
6
Q
Discuss the significance of reinstatement
A
- The process to get an application back if you have missed a deadline during the prosecution of the application
- The applicant must request reinstatement (usually by filing Form 14) within 12 months from withdrawal/termination
- Must submit evidence that failure was unintentional
- Pay the relevant fees
- Anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid.
7
Q
Discuss the significance of resuscitation
A
- Getting a patent application back if it was withdrawn in error
- The comptroller is requested to correct an error or mistake in a withdrawal of an application for a patent;
- Anything done under or in relation to the application during the period between the application being withdrawn and its resuscitation shall be treated as valid.
8
Q
Critically discuss added matter
A
Definition: amendment of an application which results in it disclosing matter extending beyond that which it disclosed when filed
Rationale:
- An applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed.
- Allowing added matter would have the negative effect of giving the applicant an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application
Test
- Whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification
9
Q
Discuss common general knowledge
A
- “…what would be known to an appropriately skilled addressee-the sort of man, good at his job that could be found in real life.”
- The common general knowledge is the technical background of the notional man in the art
- Sources of information known of by the skilled person which they know to reference if needed
- Common general knowledge can come from various sources and does not necessarily depend on the publication of a specific document on a specific date
10
Q
Discuss ordre public
A
- Definition: Some sort of fundamental moral principle within as society which if not maintained/respected may could offence or be contrary to the public interest.
- Significance: inventions which are deemed to be contrary to order public/morality are not patentable. This is outlined in Art 53 EPC and PA77 section 1(3). However, something cannot be considered contrary to a public policy just purely because it is prohibited within a jurisdiction.
The biotech directive provides further information about the kind of things which may be excluded from patentability due to ordre public – this includes
- processes for cloning human beings;
- processes for modifying the germ line genetic identity of human beings;
- uses of human embryos for industrial or commercial purposes;
- processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
11
Q
Discuss support
A
- This means that there must be a basis in the description for the subject-matter of every claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art
- The purpose of the support obligation is to ensure that the extent of protection corresponds to the technical contribution made
- At the EPO, support cannot be raised during opposition proceedings;
- In the UK, lack of support is a ground of revocation
12
Q
Discuss the national phase in the context of the PCT
A
- National phase takes place at the end of the PCT procedure, usually at 30 months from the priority date. This is when the patent enters the specific countries/regions for which the applicant seeks patent protection.
- This is significant as the decision to grant patents remains under the control of the national Offices. In the UK, a positive International Preliminary Report on Patentability (IPRP) during the national phase can allow acceleration of examination on entry to the national phase
13
Q
Discuss the international phase in the context of the PCT
A
- International phase refers to the period from the filing of the international patent application under the PCT until entering national phase. It involves the filing and receipt of an international application, international search for relevant prior art and publication of the international application;
- It is significant because it allows applicants to seek protection for their invention in multiple jurisdictions with a single application. This eliminates the need to directly file several separate applications in the jurisdictions of interest and therefore allows the applicant to deal with simpler fee and formalities requirements and allows the postponement of major costs associated with getting patent protection in multiple jurisdictions as well as harmonises major requirements.
14
Q
Discuss reinstatement under the EPC
A
- An applicant for or proprietor of a European patent who, despite taking all due care required by the circumstances, was unable to observe a time limit vis-à-vis the EPO may apply to have his rights re-established.
- It is applicable both to procedures relating to patent applications and granted patents. It is applicable to the missing of any deadline which directly results in any loss of rights.
- Need to show that you were unable to observe the missed time limit “in spite of all due care required by the circumstances having been taken”.
