Patent Caselaw Flashcards

Question

What did we learn from the Mobile Oil case?\*\* Better answer required

Answer 1

SIGNIFICANCE: First and second uses found for an oil product. The first one was for reducing rust, and the second one was for lubrication. Conflicts with Merrell Dow!!

Answer 2

SIGNIFICANCE: The formulation of the 'Outwards Presentation' test for infringement of purposive claims. OUTWARDS PRESENTATION TEST: If you sell a product and outwardly present it for indication A specifically and someone decides to use it for indication B, you are not infringing a patent for indication B.

Answer 3

SIGNIFICANCE: It changed the EPO's approach to claims comprising technical and non-technical features. Novelty and Inventive Step can be judged for the technical features, and the non-technical ones can be ignored. The fact that there a non-technical does not automatically make something entirely non-technical.

Answer 4

SIGNIFICANCE: The UK approach to excluded subject matter includes a 4 step process. 1. Properly construe the claim 2. Identify actual contribution 3. Check whether that contribution falls solely within the excluded subject matter 4. Check whether that contribution is technical in nature. This is not the same as the EPO's tech/non-tech approach, where each feature is considered.

Answer 5

SIGNIFICANCE: How to determine whether or not the same invention is disclosed in the priority application and the application claiming priority. Basically, determine whether the PSA would have \*directly and unambiguously\* derived the subject matter of the claim by reading the priority document.

Answer 6

With regards to the Paris Period extension, unintentional means the applicant had a continuing underlying intention to do it.

Answer 7

With regards to the Paris Period extension, unintentional does not cover the case where an applicant does not take necessary steps to comply with a deadline despite warning from their patent attorney and the patent office.

Answer 8

SIGNIFICANCE(4): (1) For a process-to-product claim, the applicant need only disclose one way of making the product. (2) If a competitor came up with a new way of making that product, they could get a patent for the process, but product would infringe your product. (3) Sufficiency is determined based on the whole application (description/claims/figures) (4) The PSA should be able to perform the invention without undue burden on their part. [UK PA 14(3)sufficiently complete and clear]

Answer 9

SIGNIFICANCE (2): [UK] (1) The invention involved encompassed more than one technology and whilst the skilled person can be a team [France Technip SA], the formation such a multidicplinary team was found to be inventive in itself, as the combination of the two technological fields to solve such a problem was not obvious at the time. (2) The courts also considered the following conundrum: if the PSA was person from tech A (or, equally so, tech B), then specification would be insuffiecient as neither person A nor person B would be able to perform the invention with their common general knowledge. They concluded that in such a case, whilst N and IS would be interpreted by PSA being A or B, the PSA for the specification would be A+B.

Answer 10

SIGNIFICANCE (2): (1) In the UK, it used to be the case that sufficiency was only required at the date of publication, however during this case, the courts found that sufficiency must be required at the DOF. (2) With regards to sufficiency, we are different to the EPO in that: - at the EPO, support can't be raised during opposition proceeding. TOO LATE T'POLOGIZE. - in the UK, lack of support is grounds for revocation.

Answer 11

SIGNIFICANCE: (1) In this case the EPO concluded that sufficiency is required any time from the DOF to the end of the patent term, which contrasted earlier decisions. (2) The UK's approach to when sufficiency is required is not the same as the EPO's.

Answer 12

SIGNIFICANCE: Breach of confidence test is 1. Information is of a confidential nature. [However confidential the circumstances of communication, there can be no breach of confidence in revealing to others something which is already common general knowledge or public property] 2. Information imparted in circumstance importing an obligation of confidence. [However secret and confidential the information, there can be no binding obligation of confidence if that information is blurted out in public or is communicated in other circumstances which negate any duty of confidentiality] 3. Unauthorised use or disclosure of information relating to the invention to the detriment of the inventor. "if the circumstances are such that any \*reasonable\* person standing in the shoes of the recipient of the information would have realised that upon \*reasonable\* grounds the information was being given to him in confidence, then this should suffice to impose on them the equitable obligation of confidence" The exception to the Coco v Clark rule being when it is not in the public's interest to keep that information confidential. There may also be contracts that say otherwise.

Answer 13

STORY: In Bonzel's application, guide wire described as 'relatively short', was later described as 'about as long as a catheter balloon'. This was found to be added matter. SIGNIFICANCE: During this case, the judge determined a 3-step test, the Bonzel case, wherein the courts would need to: 1. Ascertain, through the eyes of the PSA, what is disclosed. 2. Do the same for the granted patent. 3. Compare the two disclosures and decide whether any subject matter relevant to the invention has been added, by addition or deletion. The comparison is strict: matter is added if it is not clearly and unambiguously disclosed either implicitly or explicitly in the application.

Answer 14

SIGNIFICANCE (2): (1) Prior to this case, there had been a 1-stage approach to scope. Here, the judge determined a new 2-stage test, 'The Doctrine of Equivalents'. (2) The prosecution file may be looked at if there is ambiguity in the spec, or if it would be contrary to public policy not to do so. Judge concluded that infringement would be found upon addressing these two issues: (1) Does the variant infringe on the claims as a matter of normal interpretation? [Interpretation required] (2) If not, does the variant nonetheless infringe because it varies in a way(s) that are immaterial? [Facts/Evidence required] Yes to either (1) or (2) = infringement. The judge when further to apply the evaluation above by reformulating the Improver questions: 1. [Q of FACT] Notwithstanding the normal/standard interpretation of the relevant claims, does the variant achieve substantially the same result in substantially the same way as the invention? 2. Would it be \*obvious\* to the PSA reading the patent at the PD, but \*knowing\* the variant achieves substantially the same result, to know that it does so in substantially the same \*way\* as the invention? 3. Would that reader have concluded that the patentee \*nonetheless\* intended a strict compliance with the literal meaning of the claims was an \*essential requirement\* of the invention? YES, YES, NO = infringement.

Answer 15

SIGNIFICANCE (2): (1) Agrees with Catnic. What the addressee would have understood the words to mean \> The meaning of the words the author used. (2)The judge supported the purpose of 'The Protocol', clarifying that the author of a contract or patent document is attempting to communicate something for a practical purpose, and what they wrote should not be construed differently from the way it was meant to be construed to its intended addressees. Thus, context is everything hunny, and a claims should be interpreted/constructed in the \*purposive\* rather than \*literal\* sense so that we are considering what the person skilled in the art would have understood the author's words to have meant.

Answer 16

FACTS: The claimants had claimed for a vertical component, and the defendants claimed for a substantially vertical component. ISSUE: The courts were asked how to determine the extent of protection conferred by claims so that they could figure out whether or not infringement occurred. In particular, the courts were asked: (1) whether claims should be interpreted purposively or literally. (2) whether the PSA would follow the wording of the patent in strict compliance, assuming that each word/phrase is essential to the working of the invention. DECISION: The courts held that purposive interpretation was needed, and that the PSA would understand the wording to be inclusive of minor variants from the strict wording. NOTE: This is pre-Kirin Amgen and pre-Eli Lilly.

Answer 17

FACTS: The courts were asked whether a 'coiled helical spring' was equivalent to a 'slotted rubber tube' for the assessment of patent infringement. SIGNIFICANCE: Formulation of the Improver Questions/Test, later reformulated by the supreme court. 1. [Q of FACT] Does the variant have a material effect upon the way the invention works? 2. Would this have been obvious at the date of \*publication\*? 3. Would that reader have concluded that the patentee \*nonetheless\* intended a strict compliance with the literal meaning of the claims was an \*essential requirement\* of the invention? NO, YES, NO = infringement. Note! These questions (mainly 1 and 2) were reformulated during Eli Lilly v Actavis UKSC [2017] such that the addressee is no longer required to figure out what the variant does, they are already aware of what it does for the invention at the point at which infringement is judged.

Patent Caselaw Flashcards

(41 cards)