Patents Act Flashcards
1
Q
Surrender of Patents
A
The proprietor may offer to surrender their patent
In writing
At any time
Stating that there is no pending action for revocation or infringement or where an action is pending, full details of the action
A third party may oppose the surrender
If surrender is accepted, has effect from date of notification in the OJ
Cannot sue afterwards for prior infringements
Unlikely to be accepted if pending action for revocation or infringement which can result it retroactive loss of a patent.
2
Q
Non-prejudicial disclosures
A
A disclosure is not part of the state of the art of the disclosure occurred during a 6 month period preceding the filing date in the UK and…
The disclosure was due to the invention being obtained unlawfully or in breach of confidence
Or the disclosure was due to the inventor or proprietor displaying the invention at an officially recognised international exhibition, the inventor states this on filing and supplies evidence within 4 months of filing.
3
Q
What types of applications are s2(3) prior art
A
GB, EP, PCT(GB), PCT(EP)
(Not PCTs not entering GB or EP)
For EPs even if GB designation is withdrawn before publication, publication is still s2(3) prior art
PCTs are treated as EPs in the EP regional phase
4
Q
Methods of Treatment and Diagnosis
A
Methods of treatment of the human or animal body by surgery or therapy
Methods of diagnosis practices on the human or animal body
Substances and compositions for use in such methods are allowed.
A new use of a known substance is new
Treatment is of the human or animal body - purification of a patient’s blood through a dialysis machine is not excluded
Purely cosmetic treatments are not excluded
Cosmetic surgeries are excluded
Therapy assumes relief of a medical condition
Diagnosis includes a medical decision phase
Diagnosis is: the i. Collection and II. Comparison of date to iii. Identify any deviation from the norm and iv. Attributing that to a particular clinical picture.
Diagnosis assumes medical condition, pregnancy tests are not diagnoses
5
Q
Assignments/Licences
A
For patents and published UK applications register assignments and licences at the UKIPO within 6 months or as soon as practical after date of assignment/licence otherwise costs or expensive for infringement proceedings will not be awarded to the assignees or exclusive licensees.
For unpublished UK applications, notify the Comptroller of any registerable event.
For EP(GB)s register at the EPO
The PCT does not have a register so licences etc. cannot be registered. Notify the IB of assignments and licences during the international phase
6
Q
Later/Earlier Transactions/Events
A
An earlier transaction/event has entitlement over an earlier transaction or event if:
a) the earlier transaction/event was not registered
or
b) if transaction/event occurred before publication, notification was not given to the Comptroller
and
the later transacting party did not know about the earlier transaction.
This also applies where a second right is incompatible with a first right arising from an unregistered transaction or event.
A transaction is not valid if not done with the correct owner
7
Q
What is the default arrangement for co-ownership?
A
Equal undivided share
subject to agreements to the contrary
8
Q
What rights do co-owners have by default?
A
Each is entitled to work the invention independently and source essential means for it.
All parties must agree to:
amend, revoke, licence, assign or mortgage the patent.
Applies to patents and applications
Any of the above may be altered by agreement
Each owner can sue for infringement without asking for permission of the others. The other parties are automatically brought into proceedings but are only liable for costs if they take an active part in them
9
Q
Transactions in patents and patent applications if the owner is overseas
A
A UK representative is required to transfer rights
10
Q
Original proprietor and licensee rights when application/patent is transferred to completely new proprietor
A
Licence lapse upon registration of new owner.
Old proprietor and existing licensees are entitled to continue working the invention or begin if serious and effective preparations have been made in good faith to work the invention in the UK.
They have up to 2 months of the order of the transfer to request a new licence.
Licence must be for reasonable period and on reasonable terms.
11
Q
When can you declare priority if you file an application within 12 months from the earliest priority?
A
At the same time as filing the application (within 12 months)
or
Up to 16 months from the earliest priority provided no request has been made for early publication of the application claiming priority, or that such a request is withdrawn in time to prevent publication.
Pay fee, file form
12
Q
What can you do if you miss the 12 month convention deadline? (priority)
A
If one unintentionally misses the 12 month deadline when filing, can request a late filing of the application up to 14 months from filing
Provided no request has been made for early publication of the application claiming priority or such a request is withdrawn in time to prevent publication.
Must declare priority when filing the request
Provide evidence of why the late filing was unintentional
Pay late fee, declaration fee, file form
13
Q
Who may a patent be granted to
A
The inventor(s)
or in preference a person entitled by agreement, law, or treaty (e.g. employer)
or a successor in title to either of the above
An applicant cannot be entitled via an unenforceable assignment, e.g. any assignment that diminishes an employee’s rights
14
Q
Section 8 - Procedure to Resolve Entitlement before grant for a UK application
A
Any party may refer a question of entitlement to the Comptroller
The Comptroller can:
- Replace some or all applicant names with the new party/s
- Refuse to grant a patent
- Amend to excise contested elements of the patent application
- Order a licence or transfer of right in the application to the new party/s
If the new party’s elements of the application are excised or the application is refused or withdrawn, the Comptroller may order that the new part can file a new application for those elements (no added matter) within 3 months from the decision or end of the appeal (treated as having been filed on the date of the older application).
15
Q
a) UK applications
b) UK patents
c) foreign applications
d) joint applicant disputes
e) joint applicant disputes when one applicant is not entitled
f) inventorship disputes
A
a) s8
b) s37
c) s12
d) s10
e) s10 and s8 in combination
f) s13 (but use s12 for foreign applications)
16
Q
What to consider if joint applicants split
A
Likely to be a conflict of interest. Select which you will continue to represent and advise the other to seek a new representative.
17
Q
Consequences of offering settlement
A
Party could bear costs if court if they reject a settlement offer
18
Q
Section 12: Entitlement Disputes for Foreign Applications
A
Before grant of an overseas patent…
…any person may refer a question of entitlement to the Comptroller
If overseas app is EP, determination under S12 is typically that applicant is resident in the UK or that the employee is employed in the UK
Where a foreign application grants during s12 proceedings then proceedings can continue
s12 can be used to determine inventorship (unlike s8 which defers to s13)
The decision can affect granted sister cases overseas, thought it will only be guidance in their jurisdictions - not binding on parallel litigation overseas
For EP
Request suspension of EP proceedings, providing proof entitlement proceedings have begun in the UK
If successful, a UK decision can be used to transfer rights of an EP application
For PCT
Cannot suspend proceedings but successful decision can be applied to the international application
19
Q
Section 13: Declaration of Inventorship
A
Within 16 months from priority provide the UKIPO with:
- the identity of the inventors
- a derivation of rights if the applicant is not the inventors
A 2 month extension as of right is available under R108(2)
Failure to do so results in the application being deemed withdrawn
For PCT(GB) entering the national phase, have the later of 16 months from priority and 2 months from the start of the national phase to request a mention of the inventor.
The right of an inventor to be mentioned can be waived if requested before preparations for publication are complete. Must give reason why inventor does not want to be named.
Anyone can apply to have an alleged inventor mentioned in a patent or published application
20
Q
When is the application fee due?
A
Within the later of 12 months from priority or 2 months from filing
21
Q
The abstract…
A
Does not form part of the state of the art under s2(3)
It is citable as part of a published document under s2(2)
22
Q
Withdrawal of applications…
A
cannot be reversed but the Comptroller can correct an error or mistake in the withdrawal of the application
23
Q
If the applicant’s name and address is not provided…
A
…the Comptroller will request and the applicant has two months from the request to comply
24
Q
Unity of Invention
A
Two or more inventions have unity when the share a technical relationship based on matching or complimentary special technical features that define a contribution of the prior art
25
Enabling Description
An enabling description provides enough information for the skilled person to work the invention across the whole scope of the claim
26
Sufficiency
The test of whether the full scope of the invention as defined in the claims is clearly and completely disclosed by the description
27
Support
Whether there is enough technical information in the application to support (provide basis for) the text of the claims
28
Date of Filing
The earliest date on which the following conditions are met:
a) an indication that a patent is sought
b) identifies the applicant or enables contact with them
c) something that appears to be a description of the invention or a reference to an earlier relevant application
29
When are the claims due?
Within **12 months**
Or, if claiming priority:
The later of **12 months** from priority or **2 months** from filing
*Can get a 2 month extension under Rule 108(2)*
30
When is the abstract due?
Within **12 months**
Or, if claiming priority:
The later of **12 months** from priority or **2 months** from filing
*Can get a 2 month extension under Rule 108(2)*
31
When does the description need to be filed if the earlier application is filed by reference?
Within **12 months**
Or, if claiming priority:
The later of **12 months** from priority or **2 months** from filing
*Can get a 2 month extension under Rule 108(2)*
32
When does a certified copy of the referenced application need to be filed by? (For applications filed by reference)
Within **4 months** of filing
*Can get a 2 month extension under Rule 108(2)*
33
When does a translation of the referenced application need to be filed by? (For applications filed by reference)
Within **4 months** of filing
*Can get a 2 month extension under Rule 108(2)*
34
When is the search fee due?
Within **12 months**
Or, if claiming priority:
The later of **12 months** from priority or **2 months** from filing
*Can get a 2 month extension under Rule 108(2)*
*Or, for PCT(GB)s....*
The later of the period above and 2 months from the start of the national phase
35
Missing Parts
Can add missing parts between the **filing date** and date of **preliminary examination** or within **2 months** of notification by the preliminary examiner
Unless the applicant withdraws the missing parts in writing before the preliminary exam or before 2 months of notification by the preliminary examiner...
...the date of filing will be **re-dated** to when the missing part was filed....
Unless...
On or before the initial filing date, a priority document is declared that contains the missing parts
and
a **request** is made **not to re-date** the application **in writing**....
...**identifying** the missing part in the priority application...
...before **preliminary examination** or within **2 months** of notification by the preliminary examiner
The request fails if the priority document is missing any of the added material
A **certified priority document** needs to be filed within the **earlier** of **16 months** from the priority date or **4 months** from the date of the request to keep the filing date
*A certified copy isn't needed if the UKIPO already has a copy*
36
Divisionals
Can only be filed while the parent is **pending** (the parent has not been terminated or withdrawn or not yet granted)
Must be filed before the last **3 months** of the **compliance period**
The divisional application must include a statement that identifies it as a divisional
37
New applications following disputes...
can be filed within **3 months** of the Comptroller's order or within **3 months** of the end of any appeal of that order
38
Deadlines for filing declaration of inventor and priority docs for divisionals and new applications following disputes
The **later** of **2 months** from filing or the relevant dates...
...unless they are filed in the **last 6 months** of the compliance period, in which case they must comply on filing
39
Welsh texts...
...will be translated by the Comptroller
40
When is the national fee due for PCT(GB)s (which replaces the application fee)?
Must be paid to enter the national phase (at national phase entry)
41
Deadline for filing formal drawings
Typically around **15 months** or within **one month** of notification
42
What happens if an application is withdrawn after preparations to publish are complete? (typically about five weeks before)
The application is published
The application counts as s2(2) prior art but does not count as s2(3) novelty only prior art
43
When is the deadline for correcting an erroneous priority date in the declaration
**2 months** from notification
44
When does substantive examination need to be requested?
***Six months** from the **publication date** (as publicised in the OJ)
Pay exam fee
Together with any **excess description page** fee, for the 36th and subsequent pages
*Otherwise the application will be deemed withdrawn*
*For applications under a s22 secrecy order*
2 years from priority
*For divisional applications or applications following a dispute*
The later of the normal period for the **parent** application or **2 months** from filing...
...unless within **6 months** of the compliance period, in which case it needs to be requested **on filing**
*For PCT(GB)s*
The later of 33 months from priority or 2 months from entry into the national phase
*The date to request exam can be extended as of right by **2 months** under Rule 108(2) - file form, pay fee*
*The date can be further extended at the Comptroller's discretion under Rule 108(3) providing a good reason why failure to request was out of the applicant and agent's control - file form, pay fee*
45
What happens if there are more than 25 claims?
Excess claims fees for the 26th and subsequent claims will need to be paid **together with** the **search fee
46
When do additional search fees need to be paid?
File the search request and pay the second search fee no later than **3 months** before the end of the compliance period.
47
What happens if PF9A and PF10 are submitted together
A Combined Search and Examination Report is issued (unless it is specified that the applicant does not want this to happen)
48
When is voluntary amendment possible?
**After** the search report has issued
49
Accelerated Search
Can be requested with a **reason** (e.g. wanting to see the results before foreign filing)
50
Unsearched claims
Can be reconsidered during examination if a supplementary search is carried out (e.g. due to amendment) - requires payment of fee unless waived by Examiner. *More lenient than the EPC which prevents amendments based on unsearched subject matter*
51
What options does the applicant have if the Examiner requires a supplementary search (e.g. if there is non-unity or due to amendment following the search)
a) Pay the additional search fee
or
b) amend to render the search unnecessary
or
c) successfully argue otherwise
52
How many opportunities does the applicant have to comply with defects highlighted by the exam report and/or argue against them
One
53
When is the Compliance date (the period for putting the application in order for grant)?
The later of
**4.5 years** from the priority date
or
**12 months** from the first exam report
*For new applications following a dispute*
The later of the compliance period of the originating application or **18 months** from the filing date of the new application
*For divisionals*
The compliance period is the compliance period of the parent application
54
What happens if the Examiner uses third-party observations within the last 3 months of the compliance period
The applicant has 3 months to respond
55
When does the grant fee need to be paid
If, when notified of the intent to grant under s18(4)...
the number of claims is greater than 25 and is greater than the number of claims when the search was requested
or
the number of pages of the description is greater than 35 and is greater than the number of pages of the description when the examination was requested
the applicant must pay a grant fee corresponding to the further additional claims fees and/or pages fees
within **2 months** of the notification of intent to grant.
56
What happens if there are no objections before publication
The Examiner will wait until at least **3 months after publication** before granting a patent to allow third-party observations
Consider requesting early publication of the application
57
When can voluntary amendments and divisionals be filed once a notice of intent to grant has issued?
Voluntary amendments and divisional filings are not possible between the administrative grant date and notification of grant in the OJ
To avoid this happening without warning, the UKIPO will issue a notification of intent to grant (under s18(4)) which indicates a later grant date.
The UKIPO will provide at least a **one month** window to file divisionals or to make voluntary amendments if the first exam communication is a s18(3)
or a **2 month** to file divisionals or make voluntary amendments if the first exam communication is a s18(4)
58
Double Patenting
If an EP(GB) claiming priority from a corresponding GB case grants before the GB case, the GB case is likely to be revoked
If the GB patent grants first and then an EP(GB) grants with the same claims, the GB patent will be revoked
unless: the cases are amended to distinguish them
the GB designation of the EP is withdrawn before the EP(GB) grants
or
the EP(GB) is surrendered before the GB grants
The UKIPO will wait until the **end of the EP opposition** period/procedure in case a successful opposition removes the EP(GB) patent
59
When can you register a patent in Hong Kong based on a GB or EP(GB) or CN patent?
Within 6 months of grant providing the application was also recorded in Hong Kong within 6 months of publication.
*Only formalities are examined before allowance*
60
What happens if the first communication under s18(3) is more than 3.5 years after the priority date
the response time for the communication is 2 months, and only extendable to 4 months
61
What happens before loss
The applicant is entitled to a hearing, appeal to a patents court, then appeal (on facts and law) to the court of appeal
62
Accelerated examination
Can be requested if can demonstrate hardship (e.g. likely infringement or where grant is needed to secure investment)
Acceleration can be requested using the green channel for inventions with an environmental benefit
63
Pre-Grant Amendment
The applicant can voluntarily amend at any time before grant providing they do not add matter
To amend before grant:
Request amendment **in writing**
**Identify** amendment and provide a **reason** for it
Wait for search report to issue but can keep on amending until the first exam report is issued
if the first report is a s18(4) report, one voluntary amendment is allowed if it is within **2 months**
if the first report is a s18(3) report, one voluntary amendment is allowed if it is part of a reply to the report
or
if the first report is a s18(3) report issued before publication, can keep on voluntary amending before actually replying to the report
*The Comptroller may also consent to an amendment*
For a PCT(GB), if it has already received its search report (ISR), voluntary amendments can be made upon or after national phase entry
64
What happens if an appeal is pending or the time to bring an appeal has not expired by the end of the compliance period?
The court determines an extended compliance period.
If no appeal is brought, the compliance period ends 28 days from the decision.
*Time to bring an appeal = 28 days from a decision*
65
What is the deadline for requesting an appeal (e.g. on a decision to refuse an application)
28 days from the decision
66
What should you do if it is close to the end of the compliance period?
Mark correspondence as urgent
67
When can you reinstate an application?
When an application has been refused or treated as withdrawn due to missing a deadline either set by the Comptroller or the Act...
If the failure to meet the deadline was **unintentional**
If an extension is not still available
*cannot reinstate an application following a late declaration of priority with a late filing*
Request reinstatement as soon as possible to prevent third party rights accruing.
68
What must you do to reinstate an application?
Request reinstatement within **12 months** of the date of termination of the application
File **evidence** that the failure was **unintentional**
*Unintentional may include an isolated mistake, does not include changing one's mind*
Remedy to failure that caused the application to be deemed withdrawn within a period specified by the Comptroller - at least **2 months**
Have one month to request a hearing if reinstatement is refused
69
What happens when reinstatement is requested?
Notice of the request will be given in the OJ.
A decision to reinstate is also published
69
What is the effect of reinstatement for 3rd parties
If the application has **published**, and a 3rd party carries out an infringing act *during a potential as of right extension period* it is still an infringement.
If the application has **published**, a potential extension period has passed but a 3rd party **continues or repeats** an earlier infringement, this is still an infringement.
If the application has **published** and between *termination* and *notice of request of reinstatement*, anyone who *begins* in ** good faith** to effectively infringe or **makes serious and effective preparations** to do so, they may **continue**. This right does not become exercisable until after any deadline by which an extension could have been requested.
*"Continue" suggests that significant expansion or divergence from their original act is not allowed*
*This right also applies to partners in a business but can only be transferred **as part of the business** itself*
70
Third Party Observations
Between **publication** and the administrative **grant date** **any** person may file third party observations
Relating to the application's patentability
Filing observations does not make you a party to proceedings
*If the observations are within the last **3 months** of the compliance period and result in a s18(3) exam report, the applicant is given a total of **3 months** to put the application in order.
70
What happens if a GB, EPC or PCT relates to military technology?
*Section 22: Information prejudicial to national security or public safety*
A GB, EPC or PCT application must be **first filed** at the **UKIPO** where it is reviewed to see if it is prejudicial to **national security**
If so, the Comptroller may prohibit or restrict publication/distribution
For cases that may be prejudicial to the **safety of the public** the Comptroller can prevent or restrict any dissemination of the invention for up to **21 months**
While the prevention is in force:
- Can still prosecute to readiness to grant in the UK
- The application is suspended and not published
- EPC applications are not sent to the EPO
- PCTs are not sent to the IB or ISA
Any application identified as prejudicial to national security or public safety is notified to the Secretary of State who:
- determines if publication of the application or invention would prejudice security or safety
- instructs the Comptroller to extend the period of prevented or restricted publication until instructed otherwise
- will review security / safety again within 9 months of filing and every 12 months thereafter
- lifts the restrictions if application is no longer prejudicial
*If hardship due to the restriction is shown, the Government may make a hardship payment*
*The renewal fee is waived while the prevention is in force*
Breaching the prevention makes one liable to:
i) a fine of up to £1000
ii) up to 2 years in prison
Can seek discretion to disclose to specified persons
*If an EP is not received by the EPO within 14 months, conversion to designated states may be possible*
*A PCT designating GB may be converted to a GB national filing if it is not received by the IB within 14 months*
*Don't cross reference to a secret application, or the second application will become secret too*
71
When do restrictions to file overseas apply? (s23)
If an application relates to *military technology, prejudices national security or public safety*.
Unless the application was filed *in the UK* **6 or more weeks ago** and there is no prevention order in force
The restrictions do not apply if a non-UK resident previously filed the application overseas anyway.
*Can request foreign filing clearance from the UKIPO*
72
What happens if someone breaches an s23 order? (i.e. first files an application relating to military technology, or that may prejudice public safety or national security)
Breaching the restriction on overseas filings makes one liable to:
a) a fine of up to £1000 or
b) up to 2 years in prison
but only if you **knew** that filing would contravene s23 or were **reckless** with the possibility that it would.
73
What happens if payment is not made within the renewal period?
The patent ceases to have effect at the end of the renewal date (the anniversary of filing, not the end of the month)
74
What can a proprietor do if they miss the renewal period?
Pay renewal fee with a **surcharge** within a **6 month** grace period
(to the *end of the month* 6 months after the last month of the renewal period)
*File form, pay fee*
*The surcharge is £0 in the first month and £24 for each succeeding month*
75
When is the renewal fee due for a UK application when the grant date is **earlier** than 3 years 9 months from the filing date
At the end of the month of the 4th anniversary of the filing date.
The renewal period for paying is during the 3 calendar months preceding and including the anniversary
76
When is the renewal fee due for a UK application when the grant date is **at or later** than 3 years 9 months from the filing date?
At the end of the month 3 months after the grant date.
The renewal period for paying is from the grant date to the end of the month 3 months after the grant date.
77
When is the renewal fee due for an EP(GB) application if the EP grants within the 3 month period ending with the 4th anniversary of the filing date
EP grants within 3 years 9 month to 4 years from filing date
The end of the month 3 months from the grant date
The renewal period for paying is from the grant date to the end of the month 3 months after the grant date.
78
When is the renewal fee due for an EP(GB) application if the EP grants later than the 4th anniversary of the filing date?
Later than 4 years from the filing date
The end of the month after the 5th anniversary of the filing date
The renewal period for paying is from 3 months prior to the 5th anniversary of the filing date to the end of the month containing the 5th anniversary of the filing date.
79
When are subsequent renewal fees due?
At the end of the month of the next anniversary of filing
The renewal period is the three calendar months leading up to and including the renewal date in the third month
80
What happens if a renewal payment is overdue?
The Comptroller must send a reminder within **6 weeks** are the renewal period expires
If the renewal fee and surcharge are not paid by the end of the grace period, the Comptroller will send a notice within **6 weeks** and point out the possibility of restoration
*Failure of the Comptroller to send a payment reminder could be interpreted as a procedural irregularity, allowing for the possibility of additional time to pay the fees*
81
When does a patent's term expire?
At midnight the day before the 20th anniversary of the filing date (up to and not including the 20th anniversary)
81
What happens if a GB patent grants after the second or subsequent renewal period
The proprietor has to pay **all** the outstanding renewal fees.
81
What happens if a granted patent lacks unity?
Cannot object to a granted patent on grounds of unity
82
Section 27: Post Grant Amendment
Cannot **add matter**
Cannot **broaden scope** of claims
Request **in writing**
**Identify** the proposed amendment and provide a **reason** for it
Retroactive to the date of grant
An application to amend is posted in the OJ
May be **opposed** by a third party
- e.g. if it adds matter, broadens scope, or still leaves the patent invalid
*If currently in proceedings for infringement or revocation, use s75, not s27*
83
What should you do if prior art comes to light after grant of an EP patent?
Amend using post-grant **central amendment**
84
When can an application for restoration of a lapsed patent be made?
Within **13 months** *after the grace period*
If failure to pay in the original period or grace period was **unintentional**
85
Who can make an application to restore a lapsed patent?
The proprietor or one of several joint proprietors
86
What should you do to restore a lapsed patent?
Apply for restoration before the end of the **13 calendar months** from the **end of the grace period**
File **evidence** that failure to pay was **unintentional**
*Notice of the application to restore will be published in the OJ*
Request **asap** to minimise **third party rights**
After the Comptroller allows a restoration, **pay missing fees* before restoration is enacted and advertised. The UKIPO issues a deadline, typically 2 months
If restoration is not allowed, have **one month** to request a hearing
87
What effect does restoration have on third parties?
An infringing act still infringes if it was done *during the grace period*
An infringing act still infringes if it was a *continuation* of an earlier infringement
If, *after* the **grace period** but *before* the notice of application to restore was published in the OJ, an otherwise infringing act or a **serious preparation** to do so is begun in **good faith** or they may **continue** to do that act
Persons allowed to work the invention can allow partners within their business to work it but can only assign or bequeath the right as **part of the business**
*"Continue" suggests that significant expansion or divergence from the original act is not allowed.
88
Who can pay renewal fees?
Anyone
89
Post grant entitlement disputes (Section 37)
Only someone claiming a **proprietary** interest may start post-grant entitlement proceedings
Can only launch post grant entitlement proceedings up to **2 years** from grant unless the proprietor knew they were not entitled when the patent was granted
Successful proceedings may result in:
a) the claimant being made an extra or replacement proprietor
b) a licence being granted
c) the current proprietor or rights-holder being directed to comply
Where the result is revocation due to ownership by an unentitled grantee, the claimant may apply for a patent in the whole/ part of the spec they are entitled to within **3 months** of the decision or end of appeal. Such a new filing will keep the filing date of the original.
*Applies to UK and EP(GB) patents*
90
Licensee rights when at least one of the original proprietors is the same.
Any licences or other rights are considered to be issued by the updated proprietors
91
When does an invention belong to an employer?
If it was made **in the course of normal duties** of the employee and an invention might **reasonably be expected** to arise from them
If it was made in the course of additional **specifically assigned duties** and an invention might reasonably be expected to arise from them
or
If it was made in the course of the **employee's duties** and implicit in these duties is a **special obligation** to further the interests of the employer
*Invention is broader than patentable invention since ownership can be determined prior to grant*
*Normal duties does not preclude working at home or outside normal hours*
92
Who is an employee?
Someone who has a **contract of service** or apprenticeship with an employer
For PhD students look at employment contracts, funding/grant agreements for IP clauses. Consider several outcomes but typically a student will own their invention in the absence of indications to the contrary.
For directors or major shareholders, request confirmation that they are employees. If so likely to have special obligation.
For contractors and other non-employees, check if there is a contract and whether it deals with ownership. Request a copy to inspect. Check whether there is a contract of service (employee) or a contract for service (not an employee). Consider the nature of the work and whether inventions may arise in the contractor's normal duties under the contract.
Advise including an IP ownership clauses in any agreements you propose.
93
Who does s39 apply to?
Employees normally resident in the UK and mainly employed in the UK
94
Where does the burden of proof lie for employee ownership disputes?
The burden of proof is on the employer as the default position is ownership by the employee
95
Employee compensation when an invention made by the employee belongs to the employer.
If, while a patent is **in force** or within **one year of its lapse*...
...and a patent has been **granted** for an invention made by the employee and belonging to the employer...
...and the invention and/or patent is of **outstanding benefit** to the employer *factoring in the size and nature of the company*...
...so it is *just* that the employer compensates the employee....
...then the court or comptroller may award compensation to the employee.
96
Employee compensation when an invention made by an employee as is assigned or exclusively licensed to the employer
If, while a patent is **in force** or within **one year of its lapse** an employee makes an application for compensation...
...and a patent has been **granted** for an invention made by and belonging to the employee but **assigned** or **exclusively licensed** to the employer...
...and the benefit to the employee is **inadequate** in relation to the benefit to the employer of the invention and/or patent...
...so it is **just** that the employer *further* compensates the employee...
...then the court or Comptroller may award compensation to the employee.
*The one year window after the patent has lapsed may be extended under R108 at the Comptroller's discretion'
*File a caveat to request to be informed of when the patent lapses*
97
When does an invention or patent have an outstanding benefit?
Not merely substantial but out of the ordinary
Future benefit is not included
Foreign rights can be taken into account
The benefit is the actual not theoretical benefit
Must factor out contributions of adverts etc.
Onus is on the employee to prove it is outstanding
98
When may the benefit to an employee be considered inadequate?
When the benefit to the employer diverges significantly from that understood at the time the agreement was made
99
How much compensation should be awarded (employee compensation)
A **fair share** of the *benefit to the employer* from the invention, patent, application and/or assignment of any rights in the invention, patent or application, whilst taking into account:
a) the employee's **duties**
b) the employee's **existing pay/benefits**
c) the effort and skill in inventing
d) any co-inventor's contribution
e) the employer's contribution
99
What happens when a contract diminishes an employee's rights?
Any **term** diminishing the employee's rights is unenforceable in respect of those rights...
...but this does not extend to any duty of confidentiality
100
Who does s39 to 42 apply to (employee rights/compensation)?
Employees **mainly employed in the UK**
If unclear where mainly employed, then if they are attached to a **UK place of business**
101
What period is used to calculate the benefit to the employer
The calculated benefit to the employer from an invention does not extend beyond the period the patent is in force
102
When are licences of right available?
Any time **after grant** a proprietor may apply to register that licences are available as of right
103
What does the Comptroller do when a proprietor registers that licences as of right are available?
The Comptroller:
- informs current rights holders
- ensures there are no contractural obligations prohibiting licensing
- advertises that licences of right are available in the OJ
104
What are the consequences of a proprietor registering that licences of right are available?
Any person is entitled to a licence on agreed terms/terms of the Comptroller
Any infringer who takes a licence may only pay **damages** up to **2x** a retrospective **licence fee**
**Renewal fees** payable are **halved** after registration
*An infringer can take a licence without admitting liability*
A licensee as of right may, unless their licence expressly states otherwise, *request the proprietor defend against infringement*.
After **2 months** from such a request, the licensee as of right can act themselves if the proprietor does not, with the proprietor drawn in as co-claimant.
A proprietor added as co-claimant is not liable for costs/expenses unless they actively participate in the licensee's action.
**Any infringer can take a licence and avoid an injunction and limit damages except for the case of importation outside the EEA**
*To get a renewal fee reduction, the application must be registered at least 10 days before the fee is due*
105
How can a licence of right be cancelled?
The **proprietor** can apply to cancel the licence at any time after the licence of right was registered
To cancel they must **pay the balance of all discounted renewal fees**
Any licensees need to **consent** to the cancellation
*Alternatively...*
An existing **third party** may apply for cancellation of a request for a licence of right within **2 months** of the date of entry - e.g. if they have an existing agreement with the proprietor that precludes licences of right
Applications for cancellation may be opposed within **2 months**
106
Infringement of a product
Making, using, disposing, offering to dispose, importing, keeping the product **in the UK** while the patent is **in force**
M.U.D.O.I.K.
107
Infringement of a process
using or offering the process for use **in the UK** when it is **known** or would be obvious that it would infringe to do so
or
using, disposing, offering to dispose, importing or keeping any product **directly obtained** by the process
U.D.O.I.K.
108
Indirect infringement
When the **supply and recipient** are in the **UK**...
...and when a person **supplies** or **offers to supply** **in the UK** an **unauthorised person** with any means relating to an **essential element** of the invention if the person **knows** or it is **obvious** that those means are **suitable for** and **intended for** putting the invention into effect **in the UK**
Unless the means is a **staple commercial product** and is not used to **induce** infringement
*For importation consider where the transfer of title of ownership occurred*
109
What is exempt from infringement?
a) private non-commercial use
b) experimental purposes relating to the subject-matter of the invention
c) a medicine prepared in a pharmacy in response to an individual's prescription
d) use for the needs of a ship **temporarily in UK waters**
e) use in an aircraft/vehicle **temporarily** in UK territory/airspace/waters
f) certain exempt aircraft lawfully in the UK and their parts or accessories
g) farm use: propagating the product of a harvest on own holding
h) farm use: breeding livestock
i) human or veterinary health trials for market authorisation
a), b), and c) do not excuse acts under 60(2)
Ships and aircraft must be **registered outside** the UK to gain exemption
*Both vehicles registered in the UK and not yet registered anywhere (and hence open to UK registration) are **not** exempt*
110
Who has the onus of proof for patent infringement?
The patentee except in the case of a process producing a new product - the existence of the product causes a presumption of infringement
111
What are patented products?
- a patented product
- a direct result of a patented process
- a product to which a patented process has been applied *(a process that results in alteration to the product)*
112
What should you do if your client is concerned about possibly infringing a patent?
Carry out a freedom to operate search
Consider a declaration of non-infringement
113
What should you do if you think a company's product is potentially infringing a client’s patent
Purchase the item to provide evidence of infringement
114
What remedies are available if infringement proceedings are successful?
a) a full injunction
b) an order to deliver up or destroy the infringing product
c) damages or an account of profits
d) a declaration of validity and infringement
e) costs or expenses
115
When is the cut off for claiming damages?
Can only claim damages for infringements up to 6 years ago
116
What should you consider if the client is the patentee?
If unclear whether infringement has occurred, analyse and/or **buy the product** to establish infringing act(s)
**Identify** possible infringers and whether they are directly or indirectly infringing
Consider whether an amicable solution is desirable
- offer a **licence**
- **offer to sell** the relevant product to them or provide the relevant service
- **cross licence** if they have refined client's invention or developed a complementary invention
Put infringer on **notice** to avoid innocent infringer defence. E.g. send copy of the application/patent. Take care not to threat.
Note to client the risk of inviting observations before grant or opposition or revocation actions after grant
Ensure patent is valid. Evaluate prior art and propose amendments if necessary.
Patent must be granted and in force before rights can be asserted.
If application is not granted, **accelerate** proceedings
Consider amending the current application to a narrow claim directed towards the infringement and filing a divisional application to the remaining broad material.
For small clients / infringements under £10K consider suggesting the small claims track in the IPEC to save costs
117
How can you accelerate proceedings?
GB, EP, PCT
For a UK application:
- request combined search and examination
- request accelerated prosecution by reason of infringement
- request early publication to obtain s69 rights (provisional infringement)
For an EP application:
- use PACE
- request early publication
- pay exam and des fees early and waive right to confirm proceedings with examination
- note some states only confer protection once claims are published in their language - consider preparing translations early and sending to EPO and desired designated states
For a PCT:
- request early publication
- request early entry into the national/regional phase (and request early processing)
118
What is required to obtain an interim injunction?
- A **serious** (not frivolous) case is to be tried
- The potential harm cannot be adequately compensated for by eventual damages won at trial
*Damages are unlikely to be adequate if the company's exclusive market position will be irreparably damaged by entry of a competitor*
- There is a **balance of convenience**
*The court will take into consideration other relevant details such as the financial standings of the parties - avoiding possible hardship that might arise by either granting or not granting the interim injunction*
- If the above points are balanced, the status quo will be maintained
If an interim injunction is granted, a financial cross-undertaking may be required to compensate the other side if the injunction was wrongly granted - the ability to pay is likely to be a factor in the balance of convenience.
**Do not delay** requesting an interim injunction
119
What should you consider if your client is an infringer?
**Identify** the possible infringers and whether they are **directly** or **indirectly** infringing the patent
Consider amicable options:
- take a **licence**
- **purchase** the product or service
- **cross licence**
....in return for not bringing any action for previous infringement
Check patent is **granted** and **in force** (the patentee cannot bring infringement actions in the UK until a patent is granted and the patent must still be in force)
An alleged infringer can view an unpublished patent
Check whether the infringer is a **prior user**. Check if they have documentation that may act as prior art.
Request a **declaration of non-infringement** from the patentee, and if they do not co-operate, from the Comptroller or court
Request an **opinion** on validity and infringement of the patent from the UKIPO
Offer a **settlement**
If a claimant recovers less than what was offered prior to proceedings, they pay full costs *(if in a weak position as an infringement and have no alternative, if payment looks inevitable)*
Carry out a prior art search against the patent
Consider filing **third party observations** if they know of details that may affect grant of the patent.
The patentee has more scope to amend before grant so consider waiting and bringing revocation or opposition proceedings later
For an EP patent, check whether currently in the **opposition period** and if so, file an opposition
For a UK patent, bring **revocation proceedings**
Consider what amendments the patentee could make to maintain their patent in a form that would still read onto client's activities
Does the patentee have patents in other jurisdictions which could affect the client's activities? Check for **equivalents** in other jurisdictions.
120
What may restrict damages?
- Innocent infringement - damages or account of profits are not awarded against a defendant who can prove they were unaware and had no reasonable grounds to suppose the patent existed and was in force at the time of the infringement
Mere application of the word "patented" to a product is not enough to confer awareness, unless in conjunction with the patent number or a web link
- Infringement during the grace period - damages are discretionary for infringement during the grace period.
121
What is taken into account when considering damages for a patent that has been amended?
a) at the date of infringement, whether the defendant **knew** or **had reasonable grounds to know** that s/he was infringing
b) whether the patent as published was *prepared* **in good faith** and with reasonable skill and knowledge (didn't ignore art)
c) whether the *current proceedings* are brought **in good faith**
*Typically damages are not awarded for infringements prior to amendment of an infringed claim, unless the court/Comptroller is satisfied that the claim was originally filed in good faith (didn't ignore art) and the infringement fell within the scope of the claim in each form*
122
When should you amend to restore validity?
Amend as early as possible
Post-grant, it is generally preferable to amend under s27 rather than s75 as there is generally more freedom
123
What will the court or Comptroller take into when awarding damages for infringement of a partially valid patent?
a) whether the infringer **knew** or would **reasonably suspect** that they were infringing
b) whether the patent was framed in **good faith** and with reasonable **skill and knowledge** *amended when aware of relevant prior art*
c) whether the infringement proceedings were brought in **good faith** *(did the proprietor believe in the validity of the patent)*
*Relief may be conditional on amending under s75 to recover the partial validity*
124
Prior Use
A person **in the UK** who, **before** the **priority date**...
...in **good faith**...
...did an act that would infringe the patent if it had been done in force...
or
...made **serious and effective** preparations to do so...
...may **continue** to do so...
but cannot licence others to do so.
If the act or preparations was done in the course of a business, the right to continue may be used to authorise partners in the business and be assigned or bequeathed as part of the business.
**Consider whether prior use could act as prior art**
*Continue assumes that the preparations are ongoing. A pause in the preparations may suggest they are no longer serious or effective*
125
What is a certificate of contested validity
If, during court/Comptroller proceedings, the patent is contested but found to be wholly or partially valid, a certificate may be awarded.
Any subsequent proceedings that unsuccessfully contest validity is entitled to costs from the other party on an 'indemnity' basis - i.e. also paying the reasonable legal costs of the proprietor.
126
Can co-owners initiate infringement proceedings?
Yes. Co-owners can initiate infringement proceedings. The other co-owners must be made party to proceedings but are not liable for costs unless they actively take part.
127
Can exclusive licensees initiate infringement proceedings?
Yes. An exclusive licensee can initiate infringement proceedings **after** the date of the licence.
Damages/relief takes account of the exclusive licensee's losses.
The proprietor is made a party to proceedings but is not liable for costs unless they take part.
*An exclusive licensee also excludes the patent proprietor in the relevant jurisdiction*
128
Can a sole licensee bring infringement proceedings?
No. A sole licensee may be the only licensee but does not exclude the patentee and cannot bring proceedings by themselves.
129
What happens if a patent is infringed before a transaction is registered?
Where a transaction occurs and the patent is infringed before the transaction is registered the court or Comptroller will **not** award **costs** for infringement proceedings **unless**:
a) the transaction was registered within **6 months** of the transaction
or
b) it can be proved to have been registered **as soon as practicable** thereafter
130
What are the conditions for suing for provisional infringement?
Proceedings are begun after the patent has **granted**
The act would infringe the claims as **originally published** as well as the final granted patent
Publication of the application must be in **English**
*Consider sending the infringer a translation of the published application.
Consider requesting **early publication***
131
What will the court consider when evaluating damages for provisional infringement?
Whether it would have been reasonable to expect that infringement would eventually occur given the published contents of the application.
132
When does a communication contain a **threat** of infringement proceedings?
If its **recipient** would **reasonably** understand that:
a) a patent or published application exits and
b) someone intends to bring **proceedings** in respect of an act done, or which would be done in the **UK**
133
When is a threat of infringement proceedings an **actionable** threat?
A threat of infringement proceedings is actionable by any person **aggrieved** by the threat
as long as the threat is not in respect of an act of **making** or **importing** a product for **disposal** or **using** a process
or in respect of **intending** to perform such an act
and the threat was not made to made to a person who has performed or intends to perform such an act e.g. to a **manufacturer, importer, or user of a process**
provided it was not made in a **permitted communication**
134
What are examples of permitted purposes? (threats)
Giving **notice** that a patent or published application exists
Discovering **whether** or by **whom** a patent or published application has been infringed
Giving notice that a person has a right in or under a patent or published application when a third party's awareness of that right may be relevant to any future proceedings.
135
What are not permitted purposes?
a) requesting a person ceases commercial activities in relation to a product or process
b) requesting a person delivers up or destroys a product
c) requesting a person gives an undertaking relating to a product or process
136
What are the remedies for an actionable threat?
a) a declaration that a threat was unjustified
b) an injunction against continued threats and/or
c) damages in respect of any loss sustained by the aggrieved party as a consequent of the threats
137
What are defences for an actionable threat?
It is a defence for the threatener to show that the action for which proceedings were threatened does (or would if done) constitute infringement of the patent or published application, once granted;
or to show that despite taking reasonable steps, the threatener has failed to identify who has committed the relevant act, and notified the recipient of the steps taken before or when making the threat *(e.g., if they made it clear to the recipient that they were seeking a different, unknown infringer but only if reasonable attempts to find the primary infringer have filed and you notify the secondary infringer of your efforts)*
138
What happens if a professional advisor is instructed to send an actionable threat
The professional advisor is not liable if they are acting on the instructions of the threatener and identifies that threatener in the communication.
They have the burden of proving this requirement was met.
139
What should you consider as the aggrieved party? (threats)
Ensure **proof** of the threat is available
Ask the client to prepare a submission explaining how/why they are aggrieved *(e.g. loss of business/clients due to circulation of threat)*
140
When may a declaration of non-infringement be ordered?
A declaration that an act does not or a proposed act would not infringe can be ordered by the court providing:
a) the person seeking the declaration has already **written to the proprietor** requesting acknowledgement of their declaration and providing **full particulars of their activities** and
b) the proprietor has refused or failed to give any acknowledgement
The Comptroller can also make such a declaration but if in doing so they find the patent invalid, this does not bind the court in any future infringement proceedings
141
What are the grounds for revocation?
a) lack of patentability
b) lack of entitlement
c) and insufficiently enabling description
d) added matter
e) a broadening amendment post grant - extending protection
142
Who may make an application for revocation through lack of entitlement?
Only be a person with a **proprietary interest**
143
When must an application for revocation through lack of entitlement be made by?
The application for revocation by lack of entitlement must be made by the 2nd anniversary of the date unless it can be shown that the current proprietor knew they were not entitled at grant.
144
What post grant amendment options does a proprietor have for an EP(GB)?
Amendment under s27 or s75 at the UKIPO, and central limitation at the EPO
145
When may the Comptroller continue revocation proceedings?
If the original applicant drops out if it is considered to be in the public interest.
146
When is revocation effective from?
Revocation is fully **retroactive**
*A consequence of revocation may be that licensees sue for a refund of the license fees*
147
What are the grounds of opposition for an EP?
a) lack of patentability
b) lack of sufficiency
c) added matter
***Not entitlement** - for entitlement for EP(GB) use s37, s12 in conjunction with Art 61 EPC (entitlement in EPC)*
148
When should you amend a granted patent to restore validity?
Partial validity can affect damages so consider amending s27 first (before asserting a patent and inviting a revocation action) if you think a claim is currently invalid. If you don't amend it this may be interpreted as bad faith.
Balance this against any need to act quickly, e.g. when seeking an interim injunction
149
What happens if after grant, a prior art document denies novelty by virtue of s2(3)?
The Comptroller may revoke the patent.
The proprietor can object and amend if possible (no added matter, no broadening amendment)
150
What happens if the Comptroller issues an opinion that a patent is not novel or inventive
They may revoke the patent after the period for requesting a review has elapsed or any subsequent appeal has occurred
The proprietor can object and amend if possible (no added matter, no broadening amendment)
151
What should you consider if a granted GB is replaced by an equivalent EP(GB) e.g. to avoid double patenting?
Any licence or assignment of the granted GB would lapse and would likely need to be replicated for the new patent.
152
What are proceedings in which validity may be put at issue?
a) infringement proceedings
b) actionable threat proceedings
c) declarations of non-infringement
d) revocation
e) disputed crown use
153
When can validity proceedings be stayed?
If there is a parallel opposition proceeding at the EPO
154
What can a validity or infringement opinion be on?
a) whether an act is or would be an infringement of the patent
b) whether or to what extent the patent lacks novelty or inventive step
c) whether the patent provides a sufficiently enabling disclosure
d) whether a patent application contains added subject matter
e) whether a claim in a granted patent has been broadened
f) whether a supplementary protection certificate is invalid
155
What is the effect of validity or infringement opinions?
They are non-binding
156
What happens when someone requests a validity or infringement opinion?
Requests are noted in the register
Anyone may file observations on any issues raised by the request within **4 weeks** of advertisement in the register
Copies of the observations are sent to the patentee and requester within the **4 weeks**
The recipients may make observations within a further **2 weeks**
The patentee, requester and observers get a copy of the opinion
Requests can be withdrawn
*For opinion requests resulting in a negative opinion the UKIPO can start the process of revoking a patent in clear cut cases, after the patentee has had the opportunity to apply for a review of the opinion*
157
Who can request a review of an opinion?
Patentees or exclusive licensees
158
When may an opinion be reviewed?
If someone applies for a review of an opinion within **3 months** from issue of opinion...
...and no other proceedings have decided the issue under review
159
What are grounds for a review?
a) an opinion wrongly concludes that a patent is wholly or partially invalid
b) an opinion wrongly concludes non-infringement based on its interpretation of the specification
160
What is the outcome of a review of an opinion?
The opinion is either set aside or they are not. A new opinion is not issued
161
What happens when a request of a review of an opinion is filed?
The request is advertised in the OJ
Anyone may file observations on issues raised by the request within the later of **4 weeks** from advertisement or **two months** from issue of the opinion
Copies of observations are sent to the patentee and requester and the recipients may make observations within the later of **4 weeks** from advertisement or **2 months** from issue of the opinion.
162
S75 - Amendment during revocation or infringement proceedings
Proprietor must request **in writing**...
...identifying the proposed amendment...
...and giving a **reason** for it
No added matter
No broadening amendments
Amendment will be advertised in the OJ
May be **opposed**
Amendments are **retroactive** to date of grant
*If an EP(GB) was originally published in another language, provide a translation of the original and amended portions of text*
If patent is an EP(GB) consider EPO central amendment
163
What does 'no added matter' mean?
Can only amend within the limits of what a skilled person would have derived directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the document as filed.
164
What renewal fees are paid if an EP(GB) grants 4 or more years after its filing date
A renewal fee is payable to the UKIPO but not in respect of any period prior to the grant date - no back payment or duplication with EPO renewal fees,
165
What is the authentic text of EP patents?
The text in the language of proceedings
For GB domestic purposes it is the GB translation of a FR or DE language text if this confers narrower protection, except for revocation proceedings
166
What happens if a translation error results in a narrower GB protection than that of the granted EP patent in the language of proceedings?
A corrected translation can be supplied and published, but the now wider protection conferred is no retroactive.
People acting in good faith who only infringe the wider coverage can continue working the invention
167
When can an EP(GB) application be converted to a UK application
If the application was not received by the EPO within **14 months** of priority (e.g. due to a PCT receiving office error) provided:
The applicant requests conversion within **3 months** from notification of loss directly to the UKIPO, pays the application fee and if necessary, translates the application into English within **2 months**
OR
Such a request is relayed from another patent office of an EP convention country within **20 months** of priority and the applicant then pays the application fee and if necessary translates the application into English within **4 months**
168
What is the effect of a converted EPO application?
A converted application keeps the filing date it would have received from the EPO
Any corresponding documents filed with the EPO are treated as filed with the UKIPO
169
When can the UK court/comptroller determine entitlement questions:
a) other than employer-employee questions
a) If either the applicant has their **residence** or **principal place of business** in the UK **or** the *other party* has their residence or principal place of business in the UK and the applicant does not have a residence or principal place of business is any state that is signatory to the EPC protocol on recognition, and providing neither part has agreed in writing to submit to the jurisdiction of a different state
170
When can the UK court/comptroller determine entitlement questions:
b) employer-employee questions
If **either** the employee is mainly employed in the UK or the employer has a place of business in the UK to which the employee is attached, providing the parties have not agreed in writing to submit to the jurisdiction of a different state.
171
When is the international phase of a PCT
From PCT filing until 30 months from priority
172
When does the national phase begin?
When:
a) the 31 month priority period expires and (if needed) an English translation is filed with the UKIPO
or
b) a request for early entry into national phase and an English translation are filed with the UKIPO
and the national fee is paid
...*otherwise the application is considered withdrawn*
173
When is the search fee, exam fee and declaration of inventorship due for a PCT(GB)?
Up to 2 months after entry into national phase if later than normal deadline
174
Can you delay entry into the national phase?
Yes, by **2 months** using R108
This also delays the deadline for filing national fee and any translations
Reinstatement may be available for applications deemed withdrawn due to unintentional failure to meet the requirement for GB national phase entry
175
What is the reversal of the burden
If a patented process creates a new product, production of the same product by an unauthorised party is prima facie infringement of the process unless it can be proven to the contrary
176
What happens if some falsely claims that a product they sell is patented
They are liable for a fine of up to £1000
allows for reasonable period to sell marked stock and change marketing literature
Same if a person falsely claims a product they sell has a corresponding patent application when the application has been withdrawn or refused.
177
How should you request a correction of an error?
Request **in writing**
Specify the correction to make
In the specification, the correction should be **obvious** to make (**immediately evident that nothing else could have been intended**)
**Non-obvious** errors in other application documents and forms can be corrected
**unless** it is due to corruption during electronic transmission
If the correction is unobjectionable, it will not be advertised in the OJ
The correction will be advertised in the OJ if related to erroneous withdrawal of the application
Anyone can request corrections of errors under R105
178
What happens if there is an irregularity of procedure before the UKIPO?
The Comptroller may correct for any irregularity of procedure before the UKIPO if they think fit
Extensions of due dates can only be allowed if the UKIPO contributed **wholly** or **in part** to the irregularity
(Any length of extension may be granted)
179
What is the effect of resuscitation of a withdrawn application?
Where a request was made to correct an error or mistake in withdrawing an application the effect is as follows:
If the Comptroller published notice of a request to correct the error then any **continuation** or a **repetition** of an earlier infringement is still an infringement
If the Comptroller published notice of a request to correct the error but between the date of withdrawal and the date of notice a person:
a) began **in good faith** an otherwise infringing act
or
b) made **in good faith** serious and effective preparations to do so
then they have a right to **continue**
but they cannot licence this right.
If the otherwise infringing act or preparations to do so was in the course of business, the person may authorise the partners in the business to carry out the act and assign or bequeath the right as part of the business
Any product made as a result of this is free to use it as if from the patentee
**Request resuscitation asap to minimise 3rd party rights**
180
What extension is available for time limits specified by the Comptroller?
An extension under s117B
The applicant or proprietor must request **in writing**...
...within **2 months** of the expiry of the missed time limit
The extension lasts the earlier of:
**2 months** or
The end of the compliance period
**No form or fee**
*Reinstatement excludes errors in the s117B process. This is because failure to reply to the Exam report renders the application dormant, not withdrawn. Still have the Rule 30 period to get it in order, but this will be discretionary if both the reply and s117B deadline were missed*
181
What extensions are available for some statutory deadlines
Extension under R108(2)
**2 month as of right ** extension
File form pay fee within 2 months of missed deadline
The Comptroller may allow a further discretionary extension under R108(3).
File form. File evidence as to why the further extension should be granted. Fee payable if extension is granted
Must request further discretionary extension within 2 months from missed deadline (if foresee that as of right extension won't be long enough)
Extension limited to 2 months??
182
What happens if someone is notified that the applicant will bring infringement proceedings for an unpublished patent application
They can request information/ inspect documents relating to the application
183
What are the limitations of product by process claims?
Product by process claims are not limited by process features.
184
When could an interrupted day occur?
When there is an interruption to **normal operation** at the UKIPO
When there is an interruption to the **normal operation** of postal services in the UK
185
What happens when there is an interrupted day?
Certification appears in the OJ
Deadlines falling on an interrupted day are extended to the next uninterrupted an open day
186
What happens if there is a delay in or failure of a communication service?
The Comptroller will extend any period of time in the act or rules when satisfied that the failure to meet a deadline was **wholly** or **mainly** attributable to a delay in or failure of a communication service *e.g. post, courier, email
Such an extension is made after notifying the parties concerned and subject to any conditions directed by the Comptroller
*The communication service should be external to the applicant - a failure by one's own email server may not fall under R111.*
The hearing officer may use the balance of probabilities to determine whether a postal delay has occurred.
187
What is the Actavis test?
i. Does the variant achieve **substantially the same result** in **substantially the same way**
if yes, then...
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?
If yes, then...
Would the reader have concluded that the patentee intended **strict compliance** with the **literal meaning** of the claims was an essential requirement of the invention?
If no, the variant infringes.
188
Equivalents (EPC)
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.
189
What are supplementary protection certificates?
No extensions of a patent, a separate right that provides similar protection for inventions that are subject to regulatory approval that make take an appreciable portion of the patent's life to complete.
Protection only extends to the embodiment of the invention (specific product) for which regulatory approval is obtained
Two types, one for medicines and one for plant protection products
190
How should you apply for a supplementary protection certificate?
Apply for a certificate within the later of:
**6 months** of receiving authorisation to put the product on the market (if patent is in force)
or
**6 months** of grant
Pay an application fee and cumulative renewal fees for the duration of the SPC in advance of it coming into effect. There is a 6 month grace period for this cumulative fee.
Maximum term is **5 years** - term is less of 5 years and the period between the date of lodging the patent application and the date of product authorisation, minus 5 years.
If a supplementary protection certificate is not granted until after the original patent has expired then **intervening rights** are possible.
191
What should you consider when considering whether a repair consists of making the article?
i - is the part replaced such a **subsidiary** part of the patented article that its replacement, when required does not involve making a new article?
ii - does the replaced part have a significant;y lower life expectancy than the retained part? Would one anticipate replacing the replaced part several times during the life of the retained part?
iii - Is the component **easily replaceable**?
iv - Does the replaced part include any aspect of the inventive concept?
i.e. is the replaced part a freestanding item of property that does not include, or relate to, the inventive concept?
