Patent Principles Flashcards
1
Q
Describe the types of novelty that have traditionally existed.
A
The are 3 types:
- Absolute Novelty, which is used in the UK and EPC. “Any publication anywhere in the world”
- Relative Novelty, was used old US and china “Only use in the jurisdiction and publications anywhere”
- Local Novelty, currently used in Jamaica. “Only publication or uses in the jurisdiction”
2
Q
What are the requirements for novelty?
A
Need to provide an enabling disclosure. Prior art anticipates if it contains disclosure and is enabling, wherein ‘enablement’ means that the ordinary skilled person would have been able to perform it at the time of disclosure.
3
Q
How many people define ‘the public’ in patent law?
A
One person, an individual. If disclosed to the public, they are free in law and equity to use it.
4
Q
Do we need to prove disclosure by proving the public actually saw the disclosure?
A
No, which we know from the Lux Traffic vs Pike Signals case, wherein the claimant’s trialed their traffic lights in public but attempted to say no-one knew the inner workings. The UK’s library principle tells us we only need to demonstrate that the disclosure is available in ‘a library’. Could>Would.
If you are able to request to view it without signing an NDA, it can be considered a disclosure. However, it was later shown that ‘seeing’ is not necessarily equivalent to ‘observing’, in more complex cases, for instance. Showing someone a pill does is not an enabling disclosure for the pill.
5
Q
Should a document be construed at the date it was applied for or at the date it was published? How does this compare to inventive step?
A
The date of publication is when a non-patent document should be construed.
A patent document is construed at the date of filing.
Inventive step is construed at the date of filing.
6
Q
If something is enabling, does it also meet the sufficiency requirement?
A
Not necessarily. Enablement depends on the complexity of the invention. Some inventions enable the ordinary skilled person at the point of disclosure.
7
Q
What if there is a mistake in the disclosure which makes it not entirely enabling?
A
The EPO has an undue burden requirement. If the skilled person can correct the mistake without undue burden, then it counts as a disclosure.
8
Q
When and what time is novelty judged?
A
Unless there’s a priority date, at the date of filing at 12.01am (immediately after midnight on the filing date), wherein the time is judged by the timezone of the relevant patent office. It used to be stamped at the time it arrived, but that wasn’t fair.
9
Q
What is mosaicking, and can it be used to destroy novelty?
A
Mosaicking is where document 1 discloses element A and document 2 discloses element B of the A+B invention. It’s called Individual comparison in the UK.
Mosaicking does not typically destroy novelty because an enabling disclosure is considered for each individual document. Mosaicking is permissible only if one document includes the other by referencing.
10
Q
Discuss the EPO’s approach to different types of disclosure.
A
The EPO may require different standards of proof for different types of disclosure (document, meetings, internet, drawing, etc..). The lowest standard relating to a document, and the highest relating to an oral disclosure.
11
Q
What is the EPO’s Identity test?
A
It’s a test for the complete correspondence of between all of the technical features of the application in suit an the prior art. Correspondence of only the essential features would not pass this test.
12
Q
What counts as an excluded disclosure?
A
Excluded disclosures are disclosure not able to destroy novelty. There are two types: unpublished patent applications; and non-prejudicial disclosures.
The first type refers to prior art that has an earlier filing date, but isn’t published. Publishing qualifies the filing date.
The second type refers to things like breach of confidence and extends only 6 months prior to the EP filing date. This would could in cases of abuse in relation to the applicant or their legal predecessor, or if the applicant or legal predecessor presents the work at a recognised international exhibition. A certificate is required.
13
Q
What are the Pozzoli questions? And do they represent the UK or EU approach.
A
- Identify the PSA and their CGK
- Identify the inventive concept of the claim in question
- Identify any differences between the claim in question as the state of the art
- Viewed without any knowledge of the claimed invention, would the differences constitute steps that would have been obvious to the PSA.
14
Q
What are the characteristics of the PSintheA?
A
- Capable of mosaicking
- Capable of progressing the invention in a non-inventive manner (Actavis v ICOS)
- May be a team and a multi-disciplinary one at that (France Technip SA)
- Team made be led by a leader
- Never misses the obvious (Technograph)
- Can speak all languages and dialects
- Has read every publication (Pfizer)
- Influenced by prejudices and conservatisms in the field (France Technip SA)
15
Q
Where must an unpublished patent application be filed in order to constitute a potential novelty destroying threat to a UK patent application??
A
UK IPO, EUIPO, WIPO. All of these can become patents designated in the UK.
No national offices count, unless they claim priority to a UK application/patent.
16
Q
Is the common general knowledge the same across the world?
A
No, it’s localised.
17
Q
The UK’s windsurfing/pozzoli questions compare to what patent law approach at the EPO?
A
Problem-Solution Approach
18
Q
How does one do the Problem-Solution Approach?
A
- Determine the closest prior art
- Establish an objective technical problem to be solved
- Without knowledge of the application in suit, starting from the closet prior art and the objective technical problem, what would have been obvious to the PSA.
19
Q
How do we determine the closest prior art?
A
The closest prior art is one that corresponds to a similar use and requires the least modification to compare to the claimed invention.
20
Q
What does “obvious to try” mean?
A
It means the PSA would believe that trying this would likely be successful.
21
Q
Does commercial success or the fact that someone copied the invention indicate patentability?
A
Not necessarily. With regards to commercial success, there may be any of a number of ways to achieve this, marketing for instance, can have a huge impact.
However there are some cases in which commercial success can indicate the inherent inventiveness of an invention, such as in cases where the success arises from the fact that the solution is relatively simplistic and easier/cheaper to manufacture in comparison to the prior art. Such case is Haberman’s ‘AnyWayUpCup’. Someone may well copy an idea based on its commercial success.
22
Q
Are patents that contradict domestic law allowed?
A
Yes, the Paris Convention says that a patent application shouldn’t be rejected or invalidated on the grounds that it contradicts domestic law. You can’t be refused a patent because it’s illegal: law may change.
23
Q
Can anything illegal be patented based on Ordre Public of the Paris Convention?
A
The TRIPS agreement states that patents may be invalidated or refused application in order to protect Ordre Public or morality, in order to protect human, animal, plant life, health, or to avoid serious prejudice to the environment, as long as such exclusion is not made merely because the exploitation is prohibited under domestic law. ‘Unlawful’ is not necessarily equivalent to ‘immoral’.
24
Q
When do you judge morality in relation to a patent application?
A
At the point of filing. Note that our perception of morality may change over time.
25
What does the Landmines Act 1998 say?
It applies to the UK, and prevents people from **producing or developing** landmines/anti-personnel mines/cluster munitions. Patents are considered as development or encouraging development and so these things (delayed mines that last for years) are completely banned.
There is no Landmines Act in the US though...
26
What does the Biotech Directive say in relation to the TRIPS Ordre Public statute?
The Biotech Directive follows on from the TRIPS statute on protecting ordre public and morality by stating a number of things that must be considered unpatentable entirely. These being:
- processes for **cloning human beans**.
- processes for **modifying** the **germline genetic ID** of **human beans**.
- uses for **human embryos** for **industrial** or **commercial** purposes
- processes for **modifying** the **genetic ID** of **animals** that are likely to cause them **suffering without** any **substantial medical benefit** to man or animal, plus any animals resulting from these processes.
27
Which international agreements and/or directives inform us on the types of **biological subject matter** excluded from the patents system?
The TRIPS agreement tells us that plants, animals, micro-organisms and another other essentially biological process are excluded from patentability.
The Biotech Directive implements the TRIPS agreement by stating that **plant and animal varieties are not patentable**, **nor essentially biological processes for the \**production*\* of plants or animals**. The directive also says that an invention may be patentable if its _not confined to_ plant/animal variety.
28
What is the main difference between patent applications for an entire genus and patent applications for a variety of that genus.
If the technical feasibility of an invention is confined to a **particular variety**, as opposed to an **entire genus**, it is excluded from patentability.
29
Identify some secondary indicators for patentablity.
- **Commercial success** (AnyWayUpCup)
- **Experts** in the field would not take the sought after approach
- **Relative simplistic approach** to solving a problem in a way so many others had solved in a more complex manner (AnyWayUpCup)
- The approach produces a **surprising effect**.
30
What does the TRIPS agreement say in relation to the exclusion of medical treatment from patentability?
The TRIPS agreement says that the following \*methods for the treatment of humans or animals\* are excluded from patentability:
* Diagnostic
* Therapeutic
* Surgical
The TRIPS agreement informs the EPC implementation of excluded medical methods, which is stated in Art 53(c).
The **US** do not exclude such medical methods, but they do ensure that medical **doctors infringing a patent for \*humans\* are not liable**.
31
'Before EPC 2000' means?
Before 2007
32
How was the TRIPS agreement interpreted in relation to the exclusion of medical methods considered before EPC 2000?
Before EPC 2000, medical methods were excluded from patentablity by means of the **industrial application** criteria; medical methods were described as not industrially applicable. Nowadays, medical methods are expressly excluded in **Art 53(c)**.
33
What is the main function of the TRIPS agreement?
To ensure that all member states allow for the patenting of technical inventions, both products and processes, provided the inventions are **novel**, **industrially** **applicable**, and **inventive**. It ensures **anti-discrimination** in patent protection by providing the same rights in all member states such that **import/trading is not affected by the place of origin** of the invention.
34
What are the key critical points to bring up when asked for a detailed discussion on the exclusion of \*surgical\* methods from patentability?
SURGERY: Surgery used to be considered as 'anything that broke the skin' in the past. As surgical methods progressed with technological advancement, surgical methods that didn't break the skin were considered 'cosmetic'. The conceptual line between 'cosmetic' and 'non-cosmetic' quickly became problematic as there are a number of metrics one can use to assess this. More broadly, rapid general technological advancement proved it was difficult to provide a one-size-fits-all, ever current, description of surgery. It was concluded that the best way to define surgery was by weighing up: 1. the degree of complexity/training required 2. whether it required medical expertise 3. whether it entails significant health risks The most relevant caselaw are all around 2010: - Magnetic Resonance/WARF - Anaesthetic Gas/MEDI-PHYSICS - Blood Flow Instrument/TRANSONIC
35
What are the key critical points to bring up when asked for a detailed discussion on the exclusion of \*therapeutic\* methods from patentability?
THERAPY: Therapy is not limited to \*curative\* medical treatement, it can be \*preventative and/or curative\*. Relevant caselaw: - Blood Separation/FENWAL 2011 - Cornea/THOMSPON 1995 - Cooling Animals/LELY ENTERPRISES 2010 - Perception of fatigue/MIT 1995
36
What are the key critical points to bring up when asked for a detailed discussion on the exclusion of \*diagnostic\* methods from patentability?
DIAGNOSTIC: In general, the aim is to exclude from patentablity diagnosis perfomed by instruments whilst not excluding from patentability diagnosis performed by doctors. In Diagnostic Methods/CYGNUS, the courts determined that there are 4 stages of diagnosis: 1. Examination (collection of data) 2. Comparison (to standard) 3. Identifying deviations (symptoms) 4. Diagnosis (based on 1 to 3) [1-3 being performed on the human/animal body] The exclusion will only apply if no. 4 is included in addition to 1-3 in the claimed invention. [NEED FOR A DOCTOR] In Pigs II/DUPHAR, the courts determined that 'therapy' did not require 'a need for a doctor', as surgical methods might. Consider people applying treatment to their own domestic pets, this would still be therapy.
37
What is 'Dual Effect', and how does it relate to excluded subject matter?
Dual Effect refers to where an invention that has both a medical effect and a cosmetic effect. Inventions that have at least one use that falls within the scope of Art 53(c), such as toothpaste, which removes plaque AND makes your teeth looks good, are excluded even if they have another use that doesn't fall within the scope of Art 53(c). However there are limitations to the Dual Effect exclusion; if it is possible to significantly distinguish the medical effect from the cosmetic effect you can get a patent for the cosmetic effect alone. This was the case for Appetite Suppressant/DU POINT 1986. The toothpaste caselaw is called Cleaning Plaque/ICI 1992.
38
What are the 3 main types of excluded subject matter mentioned in Art. 53 EPC?
Art53(a) relates to inventions the commercialisation of which would be contratry to 'ordere public' or morality, wherein the exclusion is not solely based on the invention being illegal in one or more contracting states. Art 53(b) relates to inventions relating to plant or animal varieties or essentially biological processes for the production of plants and animals. This provision, however, does not apply to microbiological processes though. Art 53 (c) relates to methods for treatment of human or animal bodies by surgery, therapy, or diagnosis practised on human or animal bodies. This provision does not apply to products, in particular substances or compositions, for use in any of these methods.
39
How has our treatment of 'medical use' patent applications and patents changed over time?
In the olden days (before EPC 2000), first medical use describe a first medicinal characteristic of the drug. When more of these characteristics were discovered and were caused by the same active agent in the drug, the courts had to consider whether the subsequent uses could be patented, or whether their novelty was destroyed. An example is aspirin; it's first use was for headache treatment but it's second use was for thinning blood. Initially the EPC allowed first medical use, but then in the Second Medical Indication/EISAI 1995 case, the EBoA decided to allow patents for second use. As long as these were written in Swiss claims form. Nowadays, we no longer require Swiss claims as they lack clarity, purpose claims are fine!
40
Discuss the use of Swiss form and purpose form for claims.
The two forms have a slightly different scope of protection. SWISS: "use of substance X for the preparation of a medicament or for treating indication Y." PURPOSIVE: "product X for treating indication Y." Swiss claims were used because it was expensive to patent new drugs, mainly because of the rigorous testing required. Swiss claims cover 3 types of additional medical use scenarios: - Wherein different physiological characteristics of the patients warrant different response to drugs. - Wherein there is a different mode of administration available. - Wherein there can be a different dosage regime.
41
Compare UK and EPO approach to patentabiltity.
The EPO starts from the consideration of what is and isn't technical, excluding from patentability that which cannot be considered technical in part. In fact, in the Estimating Sales Activity/DUNS LICENSING 2008 case, the EPO concluded that for a mix of technical and non-technical features, the technical features alone could be judged for N and IS. In comparison, the UK has a much more philosophical approach as to what should and shouldn't be patented. The UK doesn't exclude things from patentabilty on the basis of whether or not it comprises one technical feature. In the Aerotel 2007 and HTC v Apple 2013 cases, the UK clarified that the actual contribution of the invention must be identified, before being considered with respect to excluded subject matter, before checking whether the actual contribution is technical in nature.
42
Is killing equivalent to undue suffering?
No.
43
Is euthanasia a method of medical treatment?
No.
44
What is the priority date and what function does it serve?
The priority date is either the date of filing or the date of filing of an earlier 'priority' application. The priority date is the date upon which 'novelty' is judged. Thus. if the priority date is 1st Jan and the date of filing is 1st June, documents published between these dates do not destroy novelty. NOTE: Patent comes into force from the date of filing, not the priority date.
45
When can one file/apply for a priority date for UK or EPC patents?
The PC allows 12 months from the date of filing of the patent application to file apply for a priority date. If the 12 month deadline has been missed unintentionally [UK approach], or where 'due care' was exercised [EPO approach], they can apply for a further 2 months extension, a 'Paris Period'.
46
When is a patent application published?
18 months from the priority date. NOTE: Not the filing date
47
How is priority established? What is required for this?
Priority can only be established for the applications disclosing the same invention. Priority must be established within 16 months of the filing of the earlier application to which priority is being claimed, the 'priority application'. A certified copy of the original priority application is required. The priority application must be a patent application and must have been filed in a PC OR WTO country. The priority application must be the first in its country.
48
What is priority date regeneration?
It's when an earlier patent application is withdrawn, abandoned, or refused before it was ever published and refiled in the \*same country\* at a later date such that a new priority date can be set. The PD being the DOF of the re-filing. [Haberman] You can maintain your claimed priority to a withdrawn application, but should that application be refiled (to regen) you would need to choose which of the two benefits from the PD of the priority application. This is called 'No Claims Outstanding'.
49
Who can claim priority?
The same applicant(s) as the priority application or the successor of the priority application.
50
Describe the UK's approach to discerning whether or not the priority application discloses the same invention as the application claiming it.
Determine whether the subject matter of the claim would be \*derived directly and unambiguously\* from the priority application by the PSintheA . We learnt this from the Samsung V Apple 2013 EWCA case.
51
Does 'No Claims Outstanding' preclude an application from having multiple priority applications?
No. 'No Claims Outstanding' tells us that a given application can only serve as a priority application for a single patent application. This doesn't isn't a symmetrical limitation. One application can claim priority from multiple priority applications. For instance, if the invention/claim is A+B, and A is disclosed in X, B is disclosed in Y, and A+B is disclosed in Z, priority can only be claimed for Z. If the invention/claim is A or B, priority could be claimed for X and Y.
52
When applying for a Paris Period extension, how might the requirements differ for the UK and the EPO?
For the UK, you would need to demonstrate that your failure to apply for priority was unintentional. For the EPO, you would need to demonstrate that you exercised due care, but missed the deadline.
53
With regards to late filing during the Paris period, how is 'unintentionally' missing the priority application deadline judged in the UK?
- You must have a continuing underlying into to apply for the priority (Heatex [1995]) - You can't ignore the warnings given by your patent attorney and the patent office and simply fail to comply with steps, as instructed (Anning's [2007])
54
What are the sufficiency requirements?
There are 2 sufficiency requirements outlined in the UK PA 14(3). (1) The spec must disclose the invention in a matter that is clear and complete enough for the PSA to perfom the invention. (2) The claims must be supported by the description/
55
Name the types of sufficiency.
There are 3 types of sufficiency: (1) Classic - undue burden required to perform the invention. (2) Biogen/Excessive Claim Breadth - when the PSA can perfom some but not all of the invention. (3) Ambiguity - the PSA wouldn't know if they were or weren't working the invention.
56
When is sufficiency required?
It differs for the UK and the EPO! UK: It used to be @ publication, but now its the DOF. [Biogen v Medeva] EPO: Any time from the DOF to the end of the patent term [DC Motor 1983 EPO]
57
How might the requirement for the degree of sufficiency vary from application to application?
That would depend on the size of the technological step forward. If it's relatively small, the degree of suffiency required may be lower for something that is a huge step forward.
58
How does plausibility relate to sufficiency?
Plausibility relates to the question: "What evidence does an applicant need to show at the DOF to prove that it works?" The courts found that you need some \*reason, not an indication,\* that the invention would work. You may need to support this with added evidence later on.
59
How does the EPO approach to sufficiency differ from the UK's?
UK: Set out requirements for sufficiency in Art 14(3), stating that the spec must be complete enough an clear enough for the PSA to perform. EPO: Require roughly the same thing in Art 83 EPC, but perform a 2-stage test. Stage 1 - does the spec enable the PSA to put the invention \*into effect\*? Stage 2 - If so, would be PSA be enabled to put the \*full range\* of the invention \*into effect\*?
60
What is the purpose of the 'clarity' requirement in the UK PA 14(5)(b)?
To ensure that the public know what is and what isn't being claimed, so that they know what is and isn't permitted.
61
What is the purpose of the 'conciseness' requirement in the UK PA 14(5)(b)?
To ensure that the \*scope\* of the protection sought can be \*establised\* without \*undue burden\*.
62
What is the purpose of the 'must be supported' requirement in the UK PA 14(5)(c)?
To ensure that the \*extent\* of protection sought corresponds to the technical contribution made. It is not enough to only recite the claims in the description, however.
63
What is the purpose of the unity requirement in the UK PA 14(5)(d)?
To ensure that a single inventive concept is protected per patent application. The EPO approach for unity testing applies to both dependent and independent claims.
64
What is 'added matter'?
Added matter can comprise an addition or a subtraction to the invention which increases the extent of the protection sought beyond that which would have corresponded to the subject matter disclosed in the application as filed. UKPA 76(1) defines added matter. UKPA 72(1)(d) tells us that a patent may be revoked on the grounds of added matter.
65
How does the UKIPO test for added matter?
The UKIPO employ the 3-step Bonzel test for added matter. 1. Ascertain what is disclosed through the eyes of the PSA. 2. Do the same in respect of the patent as granted. 3. Compare the two disclosure and decide whether any subject matter relevant to the invention has been added by addition or deletion. The comparison is strict: matter is added unless its CLEARLY and UNAMBIGUOUSLY disclosed in the application either EX- or IM-plicitly.
66
How does the EPO test for added matter?
Very similar to the UKIPO approach. Two additional criteria [form European Central Bank case] being: 4. \*Even obvious additions\* would be considered added matter. 5. Must \*avoid hindsight\*. The PSA sees the application without seeing the amendment and thus should not know what they are looking for.
67
When can patents be revoked and when can they be opposed?
Revocation is brought before the courts or comptroller and can occur at any time from grant to the end of the patent term. All related EP patents require \*separate\* proceedings for each country. Opposition can occur within a 9 month period from grant. In contrast to revocation, opposition has effect on all related EP patents.
68
If a UK patent application is submitted to the IPO, and 6 months later an identical EP patent application is submitted to the EPO by an unrelated party, what, if any, consequences may there be for either application?
Art 53 EPC is similar to S2 of the UKPA in that, the prior application would only be novelty destroying if it was published. At the 6 month mark, both applications would be fine. However, once the EP patent is granted, it can be revoked in the UK because the earlier UK application would destroy novelty.
69
What determines the scope of protection conferred by an EP patent?
Art 69 EPC states that the scope of protection is determined by the claims, but that the description and the drawings may be used to interpret the claims. Before grant, the scope is determined by the claims in the application. However after grant, the scope may be amended in opposition, limitation, or revocation proceedings, which will retroactively determine the scope of protection conferred.
70
What is the effect of 'The Protocol on the Interpretation of Art 69 EPC' on scope of protection for EPC patents?
'The Protocol' offers clarity on how claims should be interpreted so as to determine the extent of protection conferred by the claims. Importantly it notes that the claims should not be interpreted in a \*strict, literal\* manner, nor should they be interpreted as mere \*guidelines\*. 'The Protocol' also states that due account should be taken of any element which is equivalent to that of an element specified in the claims. 'The Protocol' is incorporated into the UKPA in section 125.
71
With regards to claim interpretation, does it matter what the author meant to say?
No, it only matters what was written, and what the skilled person would understand the claims to mean. [Kirin Amgen v HMR (2004) UKHL - Prior to Eli Lilly]
72
How has our UK approach to claim construction changed?
**Before** Eli Lilly [2017] UKSC, we followed the considerations and decisions made in:
* Catnic v Hill & Smith [1982]
* Improver Corp v Remington [1990]
* Kirin Amgen v HMR [2004]
and the wording of **UKPA 125,** **EPC Art 69** and **The protocol on the interpretation of EPC Art 69** construction.
_Catnic v Hill & Smith [1982]_
The courts had to determine whether a claim for a 'vertical' component covered a 'substantially vertical' component. The courts adopted a purposive approach to claim construction, considering what the PSA would have understood the claims to mean given the context provided by the description and drawings. Thus 'vertical' = 'vertical enough to work'.
_Improver Corp v Remington [1990]_
Purposive construction was also applied in this case; the courts had to determine whether a 'helical' spring covered a rubber rod with slits that performed the same function. The courts formulated the Improver Questions:
1. Does the variant have a material effect upon the way the invention works?
2. Would this have been obvious at the date of publication to the PSA?
3. Would the PSA have nevertheless have understood that a strict compliance with the language of the claim was an essential requirement for the invention to work?
If no, no, yes, then there's no infringement. No infringement found here.
_Kirin Amgen v HMR [2004]_
**Kirin Amgen v HMR [2004]** UKHL case **followed Catnic v Hill** in the \****purposive* construction**\* of claims over the literal. They also followed the wording of The Protocol which says the **claims are neither strict and literal nor mere gudelines**.
The Kirin Amgen case also noted that whilst we must consider the fact that the inventor may have \***several embodiments**\* of their invention and \***1 generalised inventive concept**\*, **we can't always interpret the \**widest possible meaning*\***of their words. Kirin Amgen noted hat \***obvious limitations**\***should not be disregarded**, as there must be some meaning there, and that words with \*acontextual\* meaning may not have a that meaning within the context of the application. Finally,**Kirin Amgen determined that there was no "doctrine of equivalents",** which has now been (more or less) superceded by Eli Lilly v Actavis [2017] UKSC.
_Eli Lilly v Actavis [2017] UKSC_
In this case the patent court applied the Improver questions to assess whether 'premextred disodium' was infringed by the defendant's variant 'premextred dipotassium'. They found no infringement based on a negative response to question 2.
However, the UKSC later criticised Kirin-Amgen's an Improver's approach for conflating the 2 questions:
1. does the variant infringe any of the claims as a matter of normal interpretation?;
2. if not, does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are **immaterial**?
To provide clarity the UKSC reformulated the Improver questions:
1. Does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, **but *_knowing_* that the variant achieves substantially the same *_result_* as the invention**, **that it does so in substantially the same *_way_*** as the invention?
3. Would such a reader of the patent have concluded that the Patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
If the response is yes, yes, no, then infringement is found. Infringement was found, and a Doctrine of Equivalents was established in the UK
73
Is a patent construed in light of the prior art?
Only if it's referenced/cited in the application. Otherwise, no!
74
Are examples in applications limiting?
No, we can assume it means that the author means to say "including but not limited to"
75
What are the Improver questions and what purpose do they serve?
There are 3 Improver questions and they are used to assess patent infringement. 1. Notwithstanding the normal interpretation of claims, does the variant achieve substantially the same result in substantially the same way? 2. Would it have been obvious to the PSA at the priorty date, knowing that the variant achieved substantially the same result, that this was achieved in substantially the same way? 3. Would the PSA have concluded that nonetheless, the patentee intended strict compliance with the wording of the claims was an essential requirement of the invention?
76
In the UK, when can we look at prosecution file to understand the scope of protected conferred by claims?
The Eli Lilly case concluded that there were 2 scenarios when this would happen: 1 - ambiguity in the specification 2 - where it would be contrary to the public interest for the prosecution file to be ignored.
77
How do we interpret the term 'for' in patent law? How do we interpret the terms 'large' or 'thin' in patent law?
We interpret 'for' as 'suitable for' not 'for the purpose of'. We interpret them within the context of industry standards.
78
How do we interpret the terms 'pre-set', 'pre-determined', 'approximately' or 'about' in patent law?
We assess clarity based on the context, i.e. if there's no more information for the PSA to understand what this refers to within the spec, it may be consider unclear.
79
For which type of infringement is it important to consider whether or not the infringer knew, or it would have been obvious for them to know.
Under UKPA 60(1), it is only infringement of a patent relating to a process when the infringing act is \***U** or **Ou**\* and that act is performed \***in the UK**\* **by someone who knew it would infringe** to do so, or if it would have been obvious that that act would have infringed.
80
Why might a patent attorney not advise their client to inform someone that they are infringing before suing?
It might give rise to grounds for a threat action from the addressee.
81
With regards to direct infringement, what issue arises in the interpretation of the word 'make' in the UK?
One can only determine whether something is made, and not ***repaired***, or vice versa by considering the context and in particular the degree/extent of the repair/make.
82
With regards to direct infringement, what issue arises in the interpretation of the phrase 'dispose of' in the UK?
'Dispose of' doesn't mean throwing away or delivering, it means selling or hiring the product out.
83
Is 'exporting' a form of direct infringement in the UK?
No, not for patented products, patented processes, or products derived by means of a patented process. However, exportation is likely covered by other infringing acts such as 'keeping' or 'disposing of'.
84
With regards to direct infringement, what issue arises in the interpretation of the act 'offering use of a process' in the UK?
Offering to use a process can occur in 3 ways: (a) **offering to** **work** the process for someone (b) offering to **sell a machine that uses** the process (c) **selling information required** for the person to work the process themselves.
85
With regards to direct infringement, what issue arises in the interpretation of the 'knowledge' in the UK?
If a person \****reasonably believes***\*: (a) they have consent; (b) they are not offering the process for use; (c) their activities fall outside the scope of the monopoly; then there is NO infringement.
86
With regards to \*indirect\* infringement, what issue arises in the interpretation of the 'knowledge' in the UK? AND How does it compare to our 'knowledge' standard for direct infringement?
The knowledge requirement for indirect infringement does not refer to the knowledge that the patent exists; it refers to the knowledge that X is means to put the invention into effect. This contrasts the knowledge requirement for \*direct\* patent infringement, wherein the person needs to know, or would reasonably know, that the act would constitute infringement for it to be so.
87
With regards to \*indirect\* infringement, who, other than a licensee, might be entitled to work an invention?
Other than licensing, it is possible to get rights to use/work an invention under Crown Use, and it is also possible to get 3rd-Party rights.
88
What are 'rights conferred by publication'?
UK Rights conferred by publication (at 18 months) may be used to bring infringement actions, however the infringement will be assessed from grant, not publication. For infringement to be found based on these rights, one would need to prove infringement for the claims as published AND as granted. There's a 6 year period for which this can be used. Crown users get this right.
89
Which acts of infringement are permitted?
UKPA 60(5) says the following 8 acts are A-OK! {3 EXes} - private and non-commercial - experimental purpose relating to the subject matter of the invention - use by an aircraft/hovercraft/vehicle temporarily/accidentally in the UK - same but for 'exclusive need' for relevant ships - farmer plants on their own land with consent of the proprietor and propagates the crops - same farmer but with animals and animal reproductive material - extemporaneous prep by pharmacist for an individual in line with their official prescription -exempted aircraft.
90
What are the requirements for 'secret prior use'?
The would-be acts must have been: 1 - done in GOOD FAITH 2 - done in the UK 3 - would have constituted an infringement
91
In relation to secret prior use, what count's as serious and effective preparation?
Whilst unsold prototypes may not be considered serious and effective prep, full scale trials would be.
92
Describe the timeline for high impact caselaw that changed our views on claim construction and infringement.
In the Catnic case in 1982, the courts were asked whether or not a claim for a vertical component in an invention would be infringed by the replacement of it with a substantially vertical component. The courts clarified that claims should be interpreted purposively, in the manner intended by the author for the addressee, and not literally. In this way, context should be take into account to construe the scope of the claims. During the Improver case in 1990, the courts were asked whether a coil component of an invention was infringed by a tube-with-slits component used by the defendants. In response, the courts formulated 3 questions to assess patent infringement with regards to the use of variants in the place of components/features of a patented invention. These were later reformulated, but started out along the lines of: Does the variant have a material effect? Would this have been obvious at the date of publication? Would the addressee have thought the patentee required strict compliance with the wording to work the invention? Then came the Kirin-Amgen case, which followed the principles of catnic. The courts clarifying that claims must be interpreted purposively so as to capture the appropriate context, i.e. the fact that the author was communicating to the PSA, rather than interpreted literally. The Improver questions were most recently reformulated in the Eli-Lilly v Actavis case in 2017. The main difference being in the second question, wherein the addressee considered \*aware\* of the fact that the variant achieves substantially the same result, which reduces the burden on the patentee.
93
Can you have property in the application for a patent?
Yes, you can for UK EP or International patent applications.
94
What's the difference between rights \*in\* a patent and rights \*under\* a patent?
Rights in a patent refer to things like interests and/or shares in a patent, whereas rights under a patent refers to things like licences. Making/Importing would be a right in a patent.
95
Does the registration of patents and patent applications affect the ownership of them?
Not in the UK; Ownership can be changed and still be valid, even if unregistered, or even if the register is not up to date.
It does matter for the EPC; Registration *must* be undertaken for assignments in patents and applications. This is not the same for TM and Design law.
96
What does it mean, to assign a patent?
Assigning a patent means that the \*legal or equitable\* title is transferred to the assignee. In the UK in the past, only the Crown could assign patents, but now we can assign applications for patents and patents.
97
What formalities (admin) are associated with patent assignment? [3]
In the UK and EPO, assignment MUST be doing in writing and be signed on behalf of the assignor. Without this, assignment only in equity may be possible in the UK.
In the EPO, they require registration, but we don't here in the UK. It's also possible to assign ***accrued rights*** in patents like claims for infringement or other related IP rights. If the assignee is made \****aware***\* of licences under the patent or the licence was registered, the assignee must honour them.
98
How does licencing relate to assignment?
If the assignee is made \*aware\* of licences under the patent or the licence was registered, the assignee must honour them. The best way to ensure everyone is aware of your licence as a licencee is to register those permission.
99
What is a covenant and how does it relate to assignment of patents.
Covenants are used to ensure royalties for instance, and aren't licences in that they aren't permissions from the proprietor to perform the invention. Covenants should be registered.
100
What is Assignor Estoppel
An assignor cannot challenge the validity of the patent assigned to them!
101
Whats the difference between an 'exclusive' and a 'sole' licence.
Exclusive licences gives the rights under the patent to the licencee only, or 'to the exclusion of all others'. Even the proprietor cannot act on these rights once and exclusive licence is issued without \***breaching contract**\*! In the case of breach of contract by the proprietor or infringement by others, the exclusive licensee has the same rights as the patent proprietor would.
In contrast, for 'sole' licences, the proprietor allows themself and one other rights under the patent.
102
What is a 'bare' licence?
A bare licence is NON-CONTRACTUAL in that it allows the licencee to do something that would otherwise be considered unlawful.
103
What if no term is specified in the licence?
In such a case, the licence is construed to determine the appropriate term.
104
Can a patent be mortgaged?
Yes, and so can patent applications!
105
What types of transactions can be registered?
"AMSamDO" Assignment Mortgage Sub-licence for an assigment or mortgage Death-induced transfer of rights Order by an authority to transfer rights NOTE: Not licences!!
106
What happens if someone doesn't register?
There is a 6 month period in which registration is possible, but if they fail to do so any infringement actions may be restricted wrt the recovery of costs. Compensation isn't available for crown users in the case of infringement.
107
What is a licence of right?
Where the proprietor makes licences available to any person as of right, and gives notice on the patents register. They may do this because: (1) It would be anti-competitive to do otherwise. (2) It's cheaper: renewal fees are halved! (3) It might be hard to find licencees or perhaps you don't have the means to put it to market.
108
When might a comptroller get involved with a proprietor and a licencee?
(1) If the two parties can't agree on licence terms. The comptroller needs to set out fair and reasonable terms. (2) If the proprietor wants to make licences of rights available under their patent and need endorsement.
109
Can a person with a licence of right bring infringement proceedings?
Yes, if they can't compel the proprietor to do so.
110
When can compulsory licences be granted?
[4,3] Under the Paris convention, a compulsory licence can be granted in a 'failure to work' scenario, but can't be granted until 4 yeas have elapsed since filing, or 3 years since grant.
111
Comment on authorisation and Crown use.
The Crown can authorise themselves or any others (that is part of the crown) to use an invention or an application for one without the use constituting infringement. In addition, such use can be authorised retrospectively. In general crown use allows for making or importing but \*not selling\*. Otherwise competition would be set up with the proprietor. Crown use pays proprietor reasonable ££££. Crown use may be required to (3): (1) supply of anything for foreign defense (2) production of specific drugs/medicine (3) things relating to atomic energy or a related matter, where the Secretary of State thinks it's necessary.
112
What is the IP law on 'Threats' and when did it come into force?
UKPA 70(1) came into force in October 2017 and states that "threats of infringement proceedings" will be found for any communication from which the reader would understand that: (a) a \*patent\* exists (b) someone intends to bring infringement proceedings against someone else for infringement of the patent for (b)(i) an act done in the UK or (b)(ii) an act that would be done in the UK Patent applications are treated the same.
113
In which ways can patent infringement threats be made?
When the communication contains 'this is not a threat \*yet\*' LOL; Orally; During licencing arrangements; Unintentionally; By way of notification of an infringing product.
114
What means do we have to reduce the likelihood of the reasonable recipient interpreting a communication as a threat?
Under UKPA 70(B)(1), we can employ 'permitted communications' wherein a communication containing a threat will be permitted if it: (a) contains information relating to a \*permitted purpose\* (b) all of the information relating to the threat: (b)(i) is necessary for that purpose AND (b)(ii) the person making the communication reasonably believes this is true. We can also employ 'without prejudice' communications, however these are less powerful and can't be used to mask threats. They can only be used to pursue settlement.
115
Why should people be allowed to sue for perceived threats of patent infringement against them?
It's reasonable to sue because the recipient may suffer loss/damages as a result of the threat.
116
What purposes are permitted in relation to communications containing threats?
UKPA 70(B)(2) states that 'Permitted Purposes' include (a) giving notice that a patent exists (b) discovering whether and/or by whom a patent has been infringed by an act mentioned in UKPA 70(A) (c) giving notice that a person has a right in/under a patent, where another person's awareness of such rights is relevant to any proceedings. (d) any other acts the courts deem as being in the interests of \*justice\*
117
What purposes are NOT permitted in relation to communications containing threats?
(a) asking someone to stop doing things relating to a product or process (b) asking someone to deliver up or destroy their products (c) asking someone to give an undertaking in relation to a product or process.
118
What happens if you honestly believe your threat is justified but it wasn't?
Unjustified threats used to have some defence under old law, but they no longer do!
119
What if you can't identify the primary infringer?
Under old law, as long as the threaten-er can prove that they used their \*best endeavors\* to find the primary infringer, they can bring infringement actions against the secondary infringer. Nowadays we only need to take \*reasonable\* steps, not our very best endeavors. If we take reasonable steps to find out who is infringing and we are sue for threats, we have defence!
120
Can professionals be sued for sending out communications containing threats?
Not if they are acting under the instructions of a client, identified in the letter, within a professional capacity under a regulatory board..
121
Which types of threats aren't actionable?
for products: making/importing 4 disposal and for processes: using
122
When can entitlement be determined?
Before or after grant via the comptroller, who can refer questions to the court. Before grant, UKPA 8(1) states that: (a) any person can refer questions to the comptroller on whether they are entitled to be granted a patent and whether they'd have rights in or under it. (b) any co-proprietors can ask whether rights in or under an application should be transferred to another person
123
What can sole proprietors do that co-proprietors cant?
A co-proprietor can perform an act that would otherwise constitute infringement. However a co-proprietor cannot grant a licence or assign a mortgage their patent or in Scotland grant security over their grant. Nor can a proprietor amend.
124
What rights does the inventor have, with respect to patent entitlement?
They have the right to be mentioned as such on the patent, before the relevant patent office. An inventor doesn't need to show why they are entitled to be named so. An inventor can be removed by breach of contract for instance.
125
What entitlement rights arise in the following situations: (1) Ayo communicated information about their inventive concept to Nqo \*without\* imposing a duty of confidence. Nqo applied for a patent for the inventive concept. (2) Ayo communicated information about the inventive concept in confidence. Nqo applied for a patent for it.
(1) Ayo's communication is novelty destroying for Nqo's application. (2) Nqo's patent may be granted and if so, Ayo can claim entitlement as an inventor.
126
When might an employer be entitled to an invention made by an employee? How do we define an employee?
UKPA 39 says: (a) where the invention was made in the course of normal duties, or duties falling outside of normal duties, but specifically assigned to them, wherein the circumstances are such that an invention might reasonably be expected to result from the carrying out of their duties. (b) the invention was made in the course of the duties of the employee, who at the time of making the invention, because of the nature of the duties, had some obligation to further the interests of the employer's undertakings. (2) Any other invention made by the employee.. An employee is someone who works under contract of employment or in employment of a government department or someone who serves the crown.
127
When might an employee be entitled for compensation for an invention?
UKPA 40 states that where an employee has made an invention belonging to their employer for which a patent is granted and the \*invention/patent\* (i.e. not marketing) is of \*outstanding benefit\* to the employer the employee should be awarded compensation ( a fair share of the benefit) by the employer
128
What are the differences between a german utility model and a german patent?
A German UM is: U10-2-4-SPaFD - an unxeamined IP right (no StotA) - only lasts 10 years - only takes 2 to 4 months to register - restricted protect able subject matter - limited prior art - secures a filing date for everything it discloses.
129
Whats an SPC?
An SPC is a Supplementary protection certificate you can get to extend the length of the protection conferred by a patent. They need these in pharma to counter the lengthy time it takes for drugs/medicines to pass regulatory standards, which could take the entire lifetime of a patent. In general, 1 MA is required before drugs can go to market in the EU.
130
Whats a generic medicine?
A copy of a brand name drug with exactly the same dosage, method of delivery, dosage form. Generic medicines typically come about after the expiry of a patented drug. If the generic company wants to avoid repeating the FDA approval, they can wait 8 years...
131
What is a 'product', as defined by an SPC?
A product refers to the combination of active ingredients in the medicine.
132
What is a 'basic patent', as defined by an SPC?
s
133
Before the 1997 UKPA, how long did patents last? How did we navigate the change from the old patent term to the new patent term?
They lasted 16 years, but now they last 20. During the transitional period, they gave old patents an extra 4 years but those 4 years were tied to licences of right.
134
How does one apply to have their patent made available under licences of right?
They apply for endorsement. The comptroller notifies any current licencees. If no objections are raised, the endorsement for licences of right go ahead.
135
Who can apply for a licence of right under your patent?
Anyone, even your competitor or an infringing party.
136
If someone is accused of infringement, what courses of action can they take?
Prior to infringement proceedings, they can agree to take a licence under the proprietors patent and pay double the licence fee instead of damages. They can attempt to invalidate the patent during infringement proceedings. However, if this does not work they may need to pay damages.
137
Can you remove licence of right availability from a patent once it's there?
Yes you can but you need to apply for it. All the licencees would need to agree, but they are free to oppose it. Renewal fees will go up to full price again!
138
Can compulsory licences be assigned?
No. Don't be silly.
139
What were the criticisms of the compulsory licencing system?
The pharma industry were concerned with the ease of obtaining a licence. TRIPS Art 31 sought to assuage those fears by putting in some limitations, namely: (a) own merits (b) the licencee applicant has to have tried to get a licence on reasonable terms but failed. (c) scope and duration is limited (d) non-excluive (e) non-assignable (h) right holder should be renumerated. There is also Article 31bis.
140
What is the purpose of Article 31bis?
To enable “exporting countries” to make a drug and for it to be imported to a “importing country” (the importing country having a public health crisis) Due to lack of pharma capacity in the importing country and the fact that there should be improved access to medicine. 31bis doesn't really work. It's only been used once and didn't go well. Instead people don't really get patents for drugs in developing country due to the bad publicity it would bring. That way, access has improved.
141
What might the Crown apply for Crown Use for?
Crown use may be required to (3): (1) supply of anything for foreign defense (2) production of specific drugs/medicine (3) things relating to atomic energy or a related matter, where the Secretary of State thinks it's necessary. It's not desirable for these topics to be brought into the public forum during litigation. They are handled discreetly. They will pay the proprietor though.
142
How does the old law on threats compare to the current UKPA?
[Tort, no defined permitted, good faith ok, best endeavours] Before October 2017, the old law said that a \*tort\* is committed where someone circulates by ads or otherwise threats to bring proceedings for the infringement of a patent. The old law also said that providing factual information is not a threat, with no definition of permitted communications. Unjustified threats used to have some defence under old law (good faith?), but they no longer do! Under old law, as long as the threaten-er can prove that they used their \*best endeavors\* to find the primary infringer, they can bring infringement actions against the secondary infringer. Nowadays we only need to take \*reasonable\* steps, not our very best endeavors.
143
Does the intention of the alleged threat maker matter?
There is no good-faith-get-out-of-jail-free card; a threat is given a broad meaning and the whole communication is taken into account.
144
Who is the reasonable reader?
They are the entities we use to assess the effect of a communication containing a threat.
145
"we will settle this patent infringement now if you give us money" Is this a threat?
Yes because the reasonable reader would believe there was a patent in force and that the person who wrote the letter intends to bring infringement proceedings, even if only on a 'maybe' basis.
146
Why would someone use 'without prejudice' communications?
To pursue settlement.
147
Who can sue for perceived threats of patent infringement against them?
Any one that's aggrieved by the threats can sue. Perhaps a supplier supplied the goods to a distributor, but the distributor receives the threat.
148
What does a non-actionable threat mean?
It means its just not considered a threat at all. It would not give rights to sue.
149
When are threats OK?
Threats are only ok if the infringement claim is valid. At this point, you have defence against a threats claim.
150
If someone did threaten patent infringement proceedings, what defences do they have?
The may have defence if their infringement claim is valid, or if not, they may be able to show that they took reasonable steps to find the infringer.
151
Who can apply for a UK or EPC patent?
Anyone!
152
What would one need to secure a DoF in the UK or EPC?
UKPA S15 & Rule 40(1) EPC says you'd need: (a) indication that a patent is sought (b) documents identifying the person applying for the patent or enough information for the patent office to contact them (c) and the documents contain either - (i) something that \*appears to be\* description of the subject matter for which the patent is sought - (ii) a reference to an earlier relevant application made by the applicant or predecessor \*appears to be\*= to account for different languages.
153
Can missing parts be added to an application after submitting a UK application?
Yes, however it may affect the date of filing if the missing parts aren't included in the priority application. You have within 2 months of the notification that something is missing to fucking fix it. Fucking fix it right now.
154
What considerations are there for national security in the UK?
A UK person cannot file an application in another country for something related to military tech or national security, unless you get permission from the comptroller. You can either get permission from the comptroller, or you can file it in the UK first, wait 6 weeks for directions from the comptroller and then go ahead?
155
What is required for a UK application? [not DoF]
request for patent claims description drawings abstract All of these must be filed within 12 months of the DoF or else the application will be considered withdrawn. For Provisional applications, its a deadline of 2 months beginning with the DoF.
156
When does a UK preliminary examination happen?
Automatically after the application is submitted and before the search.
157
When do you get a UK search report?
In order to get a search done you need to put in a request for one. A search will be done within 4 months of the request, but you can request an accelerated search if you're in a rush
158
What may be included in a UK/EPC search report?
The Examiner might say the search is futile/not meaningful. The examiner may say that there is a plurality of inventions so they'll only search the first one for you. You can pay more to get them to consider the rest.
159
When are applications published in the UK? What might they include?
Usually 18 months after the priority date. You can request earlier publication if you're needy. A publication includes the search report.
160
What's a UK 3rd party observation?
Observations a 3rd party can make FOR FREE after publication but before grant. Observations are on the topic of patentability only. The examiner will take them into account, but they don't need to agree.
161
In the UK, do we get substantive examination reports automatically?
No. We only get a preliminary examination automatically. We need to request substantive examination within 6 months of publication.
162
What's the difference between an S 18(3) communication and an S 18(4) communication from the UKIPO?
S 18(3) means that the application ford not meet patentability requirements. You then have an exchange with the examiner.
163
Is there a difference between when a patent is granted in the UK and in the EPO?
Yes. In the UK it will be granted within 4.5 years, which is not the case for the EPO.
164
When is the DoF filing set for an application to the EPO?
The date they receive the application. It's different from the UK's DoF practice, wherein there needs to be certain info in certain documents before this can be set.
165
When can you amend a UK patent?
Both before and after grant, and during opposition and \*limitation\* proceedings. You may amend before grant voluntarily or due to examination. After grant, you may amend due to infringement proceedings, revocation proceedings, mistakes, or just generally because you like drama.
166
When do we start paying renewal fees on UK patents?
Every year after the 4th year, provided the patent has actually been granted by that year. If your patent is granted in year 9, you pay the 4th, 5th, 6th, 7th, 8th, and 9th renewal fees all in one go on your first post-grant renewal payment. This is different to the EPO. However, if EPC or PCT patents become national UK patents, they follow the same system.
167
In the UK, when does the patent term start and how long does it last?
In the UK, a patent confers rights over the invention for a 20 year term from the Priority Date.
168
What actions can someone take if they've failed to pay their renewal fees?
The proprietor has until the end of their renewal month to pay the renewal fee. If they are particularly keen, they can pay their renewal up to 3 months prior to the end of their renewal month.
There is a **6 month grace period** under the Paris convention if they should fail to pay their renewal fee where the proprietor would need to pay late fees. Once they've paid the late fee within the 6 months, we all act like expiry never happened. **Any infringement during that time would be actionable**, for instance.
After the 6 month grace period, each MS provides different rules for **restoration**. We offer a further **13 months** in the UK. With restoration/late fees added on, of course.
169
What do we mean by a 'terminated' \*application\*?
A terminated application is one that has been refused OR it's being \**treated as though*\* it's refused or withdrawn.
170
What's the difference between restoration and reinstatement?
Restoration is for patents which have lapsed due to the failure of payment of a renewal fee. Reinstatement is for terminated \*applications\*.
In order to get your patent reinstated you have \*12 months\* wherein you need to:
* - **Send a request** from the applicant to the comptroller
* - the request needs to comply with the rules
* - the **comptroller needs to be satisfied** that this was all unintentional [and everything is right in the world].
If the refused/treated as refused or withdrawn applicant has been published BEFORE the application was deemed terminated, and the applicant had started unknowingly infringing their own patent by performing acts with the invention or had prepare to do so, as long as they did it in \*good faith\*, they can keep on keeping on with **3rd party rights** #justlikesecretprioruse.
171
Why might someone withdraw their patent application?
To regenerate their priority date, duh.
172
What's the difference between resuscitation and reinstatement in the UK?
Resuscitation is what you'd use to undo an accidental withdrawal. During this time you have 3rd party rights #justlikesecretprioruse
Reinstatement is what you'd do within **12 months** of your patent being terminated or having been considered terminated/withdrawn.
173
What can we do before an examiner makes a final decision against your UK patent application?
We have the right to request a hearing! So we should.
174
When you appeal the result of a hearing in front of the UKIPO, what are you effectively asking for?
You are effectively asking them to determine whether the decision was made in error or plainly wrong. [Shanks v Unilever]
175
What are UKIPO 'opinions'?
Opinions were originally where you could ask an examiner whether or not [X] would infringe, with **no legal consequence**.
Nowadays you can get opinions on **patentability, sufficiency, added matter, amendment validity, and SPCs**. Opinions provide low cost indications on the likelihood of success. HOWEVER, they said if the opinion is invalid due to novelty/inventive step, they can revoke your patent... :O :O
176
What is the opinions procedure?
* - **Request** opinion.
* - Opinion request is **advertised**.
* - Anyone can submit observations. ANYONE.
* - Examiner reviews evidence and gives opinion.
* - Opinion can be reviewd in a hearing.
* - Go to the EWHC.
177
What does the composition of the EPO \*RESEmBLE
* Receiving
* Examining
* Searching
* Board of Appeal
* Legal Division
* Enlarged Board of Appeal
178
Where can you file a EPC patent?
At the EPO (Munich, The Hague, Berlin) Or at a national office.
179
What are the official filing language for the EPO?
English, French, and German. If it's not one of these you have **2 months to get it fucking straight man**, c'mon. JESUS.
180
What happens if a EP application is submitted, but it's deficient?
The receiving division will notify you. You have **2 months from the DoF**, **or from notification** of missingness, **to file missing parts**
181
What is required for a EPO patent application?
Nearly the same as UK:
* request for patent
* claims [FEES]
* description
* drawings
* abstract
182
How many claims can you file at the EPO for a given application without paying additional fees?
15. Nice and Round.
183
How does designation to national patents work at the EPO?
It's automatically designated to all the MS. There's just one fee required for this! You gotta OPT-OUT. You have **6 months to pay your designation fees from publication of the SEARCH REPORT**.
184
If the applicant is not based in a contracting state, can they apply for UK and EPC patents?
Yes to both. However, **for the EPC they need to find a representative** who is qualified/capable of representing a country that is.
185
What is an EESR?
An Extended European Search Report contains an examination report **and an opinion**.
186
Why should the applicant for an EPC patent be informed about when their SEARCH REPORT will be published?
Other than just wanting to know, they have **only 6 months to**:
* Request substantive examination
* Pay their designation fees.
187
Are there rights conferred by publication for EPC published patents?
**Only if its in _ENGLISH_**, goddamit. \* [weird] \*
If you **file an English translation** of the **CLAIMS** at the IPO, or send a **communication** to an infringer in English then **you get rights from that date**.
This is not affected by the London Agreement.
188
Whats the PACE program?
It's an accelerated prosecution you can pay for at the EPC.
189
What's the London Agreement though?
The LA says that any country with **English**, **German**, or **French** as its official language **does not require a translation** of the \*description or claims\* until court proceedings.
Where these are not the official languages, a country can **prescribe themselves an official language and translate just the \*description\*** for prosecution purposes. **The claims can be kept/translated into the country's language**. ***Every single country* has chosen English as their prescribed language**.
A *foreign* patent is **not in force** in a EGF country until these requirements are met.
For infringement proceedings, you may be asked to translate the entire thing! This came into force May 2008.
190
What is the EPO's approach to renewal fees?
Nearly the same as the UKIPO's.
**3rd year and every year thereafter**, **PRIOR TO GRANT**.
**After grant** it's handled by the *national* office!
191
Whats the re-establishment of rights under EPC rights?
It's *similar* to reinstatement BUT:
You must **identify the *cause* of the failure to comply**.
**2 months** **from** the point at which the **cause was *removed***, _you can apply_ for re-establishment.
Like the UK, there's a 12 month limit on this, overall.
192
What is the purpose of the Enforcement directive?
It provides guidance on measure, procedures and rememdies for the enforcement of IP rights, requiring that they be:
* Fair and Equitable
* Effective
* Proportionate
* Dissuasive
and that they not be:
* Unnecessarily complicated or costly
* Unreasonable time-limits
* Unwarranted delays
193
What is the basic test for an interim injunction?
It was given by the *American Cyanamid v Ethivon [1975] AC 396* case:
1. Asses whether there is a ***serious question*** to be tried?
2. Would ***damages*** be an **adequate remedy for a party injured** by the _grant_ or _refusal to grant_ of an **interim injuction**?
3. **Balance** of justice
_Serious Question:_
* Not frivolous [*a low standard*]
_Adequacy of Damages:_
* Cross-undertaking required:
* If the claimant is sucessful would damages be adequate for them?
* A _licensing agreement_ would mean yes
* Copyrights, maybe not :-(
* Will the _market rate_ for the patented product be restorable if the injunction was granted? *[Warner Lambert v Teva 2011]*
* If the defendant was sucessful, can the claimant compensate their loss?
* Can they _afford to pay_ £££
* Will the _business cease to exist_? [*Artificial Solutions v Creative Virtual*]
_Balance of justice:_
* **Patent expiring soon** tipped the balance in *[Warner Lambert v Teva 2011]*
* Significant, **immediate impact on the market** in *[Warner Lambert v Sandoz 2016]*
* Failure to **clear the way** (check in adv) tipped the balance in *[Smithkline v Apotex 2002]*
* **Delay** to get to court may tip the balance
* **Maintan status quo**
194
What is a preventative injunction called and how do we test whether or not it's necessary?
Qua Timet
2-stage test:
1. Asses objective position
2. Defendant's intent/state of mind
195
What is a Search (Anton Piller) Order? What do you need to get it granted?
It's a type of interim injunction that allows the sucessful applicant to **enter and search** the premises of the defendant and **seize documents** to be used for trial.
Requirements:
Strong ***prima facie*** case
Strong **evidence** that incriminating documents are there
Serious **danger to the claimant** should the injunction not be granted
High **risk of destruction**.
196
What is a Norwich Pharmacal Order? How do you get on approved?
It's a type of interim injunction where the claimants get to **demand information** relating to an importer/supplier. Used commonly in IT.
_Requirements 4 Pharmacal Order:_
* a **3rd party** is **mixed up** in the transaction for which disclosure is required
* order for disclosure is **legimate**, as per the application
* the 3rd party is not a **mere witness**.
197
What is a permenant injunction? How long does it last? Is it limited in any way?
A permanent injunction comes after the trial and lasts a long as the duration of the protection conferred.
The courts will always aim for it to be:
* Effective
* Proportionate
* Dissuasive
as per the Enforcement directive. And they will take into consideration the likely behaviour of the defendant.
198
What is delivery up? And what's the rationale for it?
It requires the defendant to give all of the infringing articles to the claimant. It gives the claimants a right to destroy the articles and prevent infringing use.
It doesn't matter **how much** the goods are worth *[Kirin Amgen v Transkaryotic 2005]*
_The claimant *does not* become the **owner** of the goods._
199
What is a certificate of contested validity?
It's like that film **double jeopardy**. If your patent claims have been litigated and found to be valid, another party can't come along and *attempt to invalidate* it without you being paid **£indemnity costs**.
200
Discuss 'Publication of Judgement'
In some countries, having the losing party be identified as losers is seen as a punishment, however in the UK it is not.
The Enforcement Directive requires publication in relation to *infringers*.
In the UK, the Samsung v Apple 2012 EWCA case required publication in relation to *non-infringers*.
Famously, in this case, the judge concluded that the Samsung device was 'not cool'. The courts ordered the Apple to publish that Samsung's device did not infringe. Apple did so, but added extra text clarifying jurisdictions in which Samsung did infringe. The courts were not happy.
201
What is 'monetary relief'?
There are 2 types of monetary relief and neither are punishment, OK?
* Legal: Damages
* Equitable: Account of Profits
Election = You can't have both per case!
202
What is Innocent Infringement?
Although infringement does not require knowledge, there is a limiation in **UKPA 62**, which says:
Innocent infringers cannot be held to ***financial*** remedies, wherein innocence means they didn't know and had **no reasonable grounds for supposing** the patent ***_existed_***.
Might this be between PD and publication?
In Scheneck Rose v Universal Balancing [2012] EWHC, the courts said there is **no general requirement to undertake a patent search** unless it's common/reasonable to do so in the field.
203
What's the basic rationale for (legal) damages?
Damages are there to compensate for loss or damage, to put claimant in the position they would have been had there not been infringement.
*General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1975]*
The claimant can show damages are required for 3 things:
* **Lost sales** for parties in competition
* Excess sales
* You can't claim for what you couldn't have sold yourself!
* Lost income
* Convoyed goods
* Matching set goods may be affected by the infringing sale of just one of the goods
* Price reduction
* You had to reduce it to compete with the infringer
* **Lost licences** for parties who licence
* You have to show that the product is *available* for licencing or what you'd have licenced it for. *[General Tire and Rubber Co v Firestone Tyre and Rubber Co [1976] ]*
* **User Principle** for parties who neither lost sales nor lost licences
* Determined based on the '**willing licencee**' and '**willing licensor**' and their respective barganing positions.
204
What's the basic rationale for (equitable) account for profits?
To deprive the infringer of the profit they would have made _from the infringing articles_. Profit ascribed to anything else doesn't count, like overheads where the same overheads would have been incurred without profit occuring.
205
What about infringement for subsequently-revoked patents?
In *Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC,* the courts said once a patent has been revoked it's **deemed to never have existed** so any costs/payments/judgements need to be **repaid/appealed**.
206
Why do we use experts in infringement proceedings?
We use experts for their ***opinion***, which is *so* expert, we called it **expert *evidence.***
* Experts are used to educate the court on technology *[Rockwater v Technip France SA [2004] EWCA]*
* Experts have a duty to the court which overrides a duty to any party
