Patents Short Answer Questions

Question 1

What constitutes “services for the Crown” for the purposes of the Crown use provisions?
(x3)

Answer 1

s. 56(2) PA77 defines services to the Crown as including:
(a) the supply of anything for foreign defence purposes;
(b) the production or supply of specified drugs or medicines;
(c) purposes relating to the production or use of atomic energy.

s.59 PA77 extends use for Crown for any purpose during a period of emergency

Question 2

Explain how “absolute novelty” is different to “relative novelty” and “local novelty”.
(x3)

Answer 2

Absolute novelty:
the state of the art comprises everything made available to the public anywhere in the world by means of written or oral description, by use, or in any other way, before the priority date of the application. Follows the library principle.

Relative novelty:
A publication in any country will destroy novelty, but use of the invention outside the country in which protection is sought does not form part of the state of the art.

Local novelty:
Any public use or publication of the invention before the priority date will not form part of the state of the art unless the use occurs in the country or the publication is available in the country.

Question 3

What are the categories of subject matter excluded from patentability under s.1(2) PA77?
(x7)

Answer 3

(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation;
(c) a scheme, rule, method of performing a mental act, playing a a game or doing business, or a program for a computer;
(d) the presentation of information;

The above exclusions only apply where the invention relates to that thing AS SUCH

Question 4

When can a compulsory licence be granted in relation to a patent owned by a WTO proprietor under s.48A PA77?
(x2)

Answer 4

(a) where the patented invention is a product, that a demand for the product is not being met on reasonable terms;
(b) important technological or economic advances are prevented are hindered by the refusal to grant a licence for an invention;
(c) the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced by the refusal to grant a licence for the invention;
(d) the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced because of conditions imposed by the proprietor on the grant of a licence.

Question 5

What are the four steps in the Pozzoli/Windsurfing approach?

x2

Answer 5

(1) Identify the notional skilled person and the relevant common general knowledge imbued upon him.
(2) Identify the inventive concept of the claim. If the inventive concept is not readily identifiable, construe it.
(3) What, if any, differences exist between the matter cited as part of the state of the art and the identified inventive concept of the claim?
(4) Viewed without knowledge of the invention as claimed, do these differences constitute steps that would have been obvious to the skilled person or do they require any degree of invention?

Question 6

What defences may a person rely upon if that person is accused of improperly threatening somebody with a claim of patent infringement?

Answer 6

(1) Justification defence: where the rights holder can show that the act which is the subject of a threat is an infringing act or would be if carried out.
(2) A threat action cannot be brought if the alleged infringement consists of making or importing a product for disposal or of using a process.
(3) The rights holder was doing something that did not constitute a threat: providing factual information about the patent, making enquiries for discovering if the patent has been infringed, or making an assertion about the patent for the purpose of the enquiries.
(4) No primary actor can be found: okay to threaten an alleged secondary infringer if a primary actor (manufacturer or importer) cannot be found.

Question 7

What, if anything, can be done where a person has failed to pay the renewal fee for a patent: (a) 2 months ago; (b) 15 months ago; (c) 30 months ago?

Answer 7

(a) 6 month grace period of s.25(4) means that if the fees are paid in the grace period, the patent is treated as if it never expired.
(b) The patent is treated as being terminated after the expiry of the grace period, but can be restored up to 13 months after the end of the 6 month grace period if the applicant can show that the fees were missed unintentionally. However, during this period of 13 months, third party rights are available.
(c) After 19 months there is no recourse unless there was a procedural violation from the patent office (19 month period otherwise inextensible).

Question 8

On what grounds can the validity of a European patent (UK) be challenged?
(x2)

Answer 8

(i) The invention is not a patentable invention;
(ii) The patent was granted to a person who was not entitled to it;
(iii) The specification does not sufficiently disclose the invention;
(iv) There is added matter that extends beyond the scope of protection of the application as filed;

Question 9

What formalities are needed to assign a European patent (UK) under English law?

Answer 9

(i) Must be in writing and signed on behalf of the assignor (unlike for EPO, the assignee does not need to sign);
(ii) There is not requirement to register an assignment, but failure to do so may have consequences in costs if not registered within 6 months of assignment in order to allow the party to claim future litigation costs and expenses.

Question 10

When will third party rights exist under a patent (identify each of the cases)?

Answer 10

(i) Honest prior users acting in good faith have the right to continue using the invention in the manner done previously licences.
(ii) Third parties may have rights to practice inventions of patent applications which have been terminated and subsequently reinstated if they practised the invention in the time when the patent application was dead (i.e. between termination and reinstatement).
(iii) Third parties may continue practising an invention in a patent if the patent expired and was subsequently restored if they practised the invention in between expiry and restoration.
(iv) Resuscitated patent applications.

Question 11

What restraints are there (if any) on a UK resident filing a PCT application at the International Bureau where the invention is: (a) a flea collar for cats; (b) a nuclear power system?
(x6)

Answer 11

In either case, under s.23 if there is information relating to military technology or if the information may be prejudicial to national security, then the person would have to file first with the UKIPO as the receiving office. They would then have to wait for written permission from the comptroller or 6 weeks from filing if no permission letter sent before filing in other countries.

For (a), it is almost entirely certain that neither the description or claims contain any restricted information. For (b), however, the invention is clearly directed to a matter of nation security, so should be filed first in the UK.

Question 12

What limitations are faced by co-owners of patents but no sole proprietors?
(x7)

Answer 12

Each proprietor is entitled to work the invention without infringing and without having to account to the others.

Without permission of the other co-owners, a co-owner cannot:

(a) amend the spec or apply for an amendment to be allowed, or for the patent to be revoked;
(b) grant a licence under the patent or to mortgage a share of the patent.

Question 13

When is an employee entitled to an invention as against an employer?

Answer 13

s.39 PA77 gives a ‘complete code’ for determining entitlement.

An invention will belong to an employer if:

(a) the invention was made in the course of the employees normal or specifically assigned duties and the invention was made in circumstances under which an invention might reasonably have been expected to have resulted; or
(b) an employee’s position and status within the organisation will be such that they will be taken to be under a special obligation to further the interests of the employer’s undertaking.

Employee inventions that fall outside these categories will belong to the employee.

Question 14

What is the period of priority for a patent application under the Paris Convention and how does the Patent Law Treaty affect that period?

Answer 14

Paris: priority period is 12 months from the filing date of the first application for the same invention.

PLT: at least 2 months extra are provided in which to claim priority where the failure to file was unintentional. UK - 2 months, unintentional standard. EPO - 2 months, all due care standard.

Question 15

When might a biotechnology invention be contrary to ordre public under Directive 98/44/EC (Patents Act 1977, Sch A2)?

Answer 15

(a) processes for human cloning;
(b) processes for modifying the germ line genetic identity of human beings;
(c) uses of human embryos for industrial or commercial purposes;
(d) modifying the genetic identity of animals which might cause them suffering without substantial medical benefit to man or animal.

Question 16

What is a divisional application and when might it be filed?

Answer 16

A separate application which exclusively contains subject matter clearly and unambiguously derived from an earlier application such that the subject matter of the divisional does not extend beyond that of the earlier application. The priority date of the divisional is the same as that of the parent application. A divisional application cannot be made if the parent application has been granted, refused or withdrawn.

Question 17

When will the rights in a patent be exhausted within the EU?

Answer 17

Under the doctrine of exhaustion, a patentee is unable to use a patent to prevent the further disposal of an article that has been placed on the market in the EEA with the patentee’s consent.

Furthermore, under the doctrine of implied licence, sale of a product implies a licence to keep, use and resell the product. If all parties in chain of supply are made aware of a limited licence preventing sale outside of the EEA, this may be enforceable to prevent export outside the EEA.

Question 18

What is the test for sufficiency?

Answer 18

s.14(3) PA77: the spec shall disclose the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the art.

To assess sufficiency, we use a two stage test:

(1) ask whether the specification would enable the skilled person to put the invention into effect (Kirin-Amgen)
(2) Then ask whether the skilled person is enabled to put the invention into effect across the full range of the invention.

In the UK, the application needs to be sufficient at the date of filing.
In the EPO, the application needs to be sufficient at the time of publication.

Question 19

What is ‘innocent infringement’ under s.62 PA77?

Answer 19

If an infringing user of a patented invention proves that, at the date of infringement, they were not aware or had no reason to believe that the patent existed, then they shall not be liable for damages or account of profits. They shall not be taken to have been aware of the patent if only the words “patent” or “patented” are applied to the product without also applying the relevant patent number.

Question 20

What are the consequences of not registering the assignment of a patent in the UK?

Answer 20

Registered transactions take priority over unregistered transactions, even if the date of the unregistered transaction is earlier than the registered transaction.

If the patent is assigned without registration and is then infringed, the owner cannot claim damages unless the assignment is registered within six months of the assignment.

Question 21

When is an application published under the EPC? And when will the rights conferred by publication come into being in the UK?
(x4)

Answer 21

Publication takes place 18 months after the priority date of the application.

The applicant can also request earlier publication.

If the publication is in English, the rights conferred by publication exist on publication. If not published in English, must file translation of the claims at the IPO to get rights conferred by publication.

Question 22

When does an international application enter into the national phase: (a) in the UK; and (b) in Luxembourg?

Answer 22

The international phase lasts a minimum of 30 months from the priority date, except for states which opted to remain using the old time limit for Chapter I.

In the UK, the time limit for both Chapter I and II is 31 months from the priority date.

In Luxembourg, the time limit for Chapter I is 20 months (old limit) and 30 months for Chapter II.

It is also possible for the applicant to file an international application designating an EP regional phase, the EP application itself designating Luxembourg so that it effectively enters the national phase within 31 months if extra delay is required.

Question 23

What is a licence of right and why might an inventor want to make such licences available?
(x4)

Answer 23

Any proprietor of a patent may apply for a licence of the patent to be available as of right such that any person is entitled to a licence of the patent.

An inventor may want to make a licence available as of right due to the renewal fees being halved (however if the licence of right is later taken down, then all renewal fees that would have been paid are due).

The inventor may also make a licence available as of right in order to advertise (due to the licence of right being published in the register) the invention and generate additional income from licensing if it has been difficult to find potential licensees.

They may also indemnify the proprietor against actions on grounds of anti-competitive behaviour.

Question 24

What checks are performed by the receiving office under the PCT?

Answer 24

(1) The application is in a prescribed language.
(2) Whether the applicant does not obviously lack, for reasons of residency or nationality, the right to file an application at the receiving office.
(3) Check there is an indication that a request form has been filed.
(4) Check there is at least one designated state,

Question 25

What is required the establish a date of filing under the PA77? (x3)

Answer 25

s.15 PA77: (a) documents that indicate that a patent is sought. (b) documents that identify the person applying for a patent or that contain information sufficient to enable that person to be contacted by the patent office. (c) documents that contain either: (i) something which appears to be a description of the invention for which the patent is sought; or (ii) a reference to an earlier application made by the applicant or a predecessor in title of his.

Question 26

What are the remedies available to a claimant in infringement proceedings (a) before the Patents County Court; and (b) before the Comptroller? (x6)

Answer 26

(a) s. 61(1): (DADDI) injunction, delivery up or destruction, damages, account of profits, declaration of validity and infringement. s. 61(2) Cannot award both damages and account of profits. (b) s61(3) Comptroller can award only damages and declaration of validity and infringement.

Question 27

When will can international application for a patent enter the national phase in the UK? And when would translations be required?

Answer 27

An international application enters the national phase in the UK 31 months from the priority date, or when the applicant expressly requests it early. The necessary fees must also be paid to enter the national phase. Translations are required on entry into the national phase if the international application was not in an official language

Question 28

What are the four requirements for a plant variety to be protected under the UPOV Convention (which is the same as the Plant Varieties Act 1997)? (x3)

Answer 28

``` (DUNS) Distinct Uniform New Stable ```

Question 29

What does Article 6 of Directive 98/44 on the legal protection of biotechnology provide? (x6)

Answer 29

(1) Inventions are unpatentable where their commercial exploitation would be contrary to ordre public or morality, but not just because it is contrary to domestic law. (2) The following in particular are unpatentable: (a) processes for human cloning; (b) processes for modifying the germ line genetic identity of human beings; (c) uses of human embryos for industrial or commercial purposes; (d) modifying the genetic identity of animals which might cause them suffering without substantial medical benefit to man or animal.

Question 30

What is the term of a patent under the Patents Act 1977? And from what day is that term calculated? (x5)

Answer 30

Term is 20 years from the date of filing of the application (not the priority date), subject to the payment of the necessary renewal fees.

Question 31

What acts constitute the direct infringement of a patented product? (x4)

Answer 31

For a product, it is an infringement if a person makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise.

Question 32

What acts constitute the direct infringement of a patented process? (x1)

Answer 32

For a process, it is an infringement for a person to use or offer to use the process in the when he knows or it would be obvious to a reasonable person in the circumstances that its use without consent of the proprietor would be an infringement of the patent. It is also an infringement of a patented process to dispose of, offer to dispose of, use or import any product obtained directly by means of the process or keeps any such product for disposal or otherwise.

Question 33

What is the time period for opposing the grant of a European patent and what are the grounds of opposition?

Answer 33

Time period = 9 months from grant of patent. Grounds for opposition are: (i) patentability (novelty, inventive step, industrial application); (ii) added matter; or (iii) sufficiency. (NOT entitlement, clarity, unity or support).

Question 34

What comprises the state of the art for the purposes of novelty and how does this differ from that used for inventive step? (x7)

Answer 34

The state of the art comprises all matter which has at any time before the priority date of the application been made available to the public (whether in the UK or elsewhere), by written or oral description, by use or in any other way. The state of the art will also include matter contained in another patent application which was published on or after the priority date if the matter contained in the other application was in the application as filed and as published, and the priority date of that matter is earlier than that of the invention. For inventive step, pieces of prior art may be mosaiced, while in novelty they may not.

Question 35

What occurs during the “international phase” of an application under the Patent Cooperation Treaty? (x2)

Answer 35

International phase begins when the application is filed at WIPO or a designated receiving office and ends at the entry into the national or regional phase. During this phase, formalities are examined and an international search report is produced, together with a written opinion. The applicant may then amend the application, after which it is published. Optionally, the applicant may choose to pursue a Chapter II application which gives a substantial examination.

Question 36

What defences to patent infringement were introduced in the United Kingdom to give effect to the Biotech Directive (98/44/EC)?

Answer 36

Art 11 Biotech Dir: the sale or other form of commercialisation of plant propagating material to a farmer by the rights holder implies authorisation for the farmer to use the protected livestock for an agricultural purpose and to use the product of his harvest for propagation by him on his own farm..

Question 37

When will an application be published and why is it relevant to infringement?

Answer 37

An application is published 18 months from the priority date of the application. The rights conferred by publication then allow the applicant to sue infringing persons once the patent is granted where the infringing act takes place between publication and grant of the patent if would have been reasonable to expect that a patent would be granted.

Question 38

What is the difference between German utility model protection and that for German patents? (x6)

Answer 38

A utility model is registered about 6 to 8 weeks after filing, so effective protection is rapidly available. Utility models are not available for methods. Maximum term for a utility model is 10 years compared to 20 years for a patent. Utility model applications have a 6 month grace period for disclosures made by the applicant; no such grace period is available for German patents. Prior use use is relevant only within the territory of Germany. Utility model applications are not examined before grant. Instead, validity is assessed before initiating an infringement action.

Question 39

What restrictions, if any, would apply to a US applicant, using a UK based attorney, on filing an application at the European Patent Office for a new form of submarine engine?

Answer 39

The UK attorney, a UK resident subject to s23 PA77, would be obligated to first send the application to the UKIPO and request permission to file abroad. If permission is received, or 6 weeks has elapsed, then no further formalities are required. However, if communications are received from the security division of the UKIPO stating that the invention is subject to s.22 PA77, then filing abroad will be restricted. Consideration would have to paid to the fact that the US applicant is also subject to the restrictions imposed by US law, that is, in the US, national security inventions must be filed first in the US if the invention was made in the US.

Question 40

All search fee was due to be paid on 10th December 2012, but the payment was missed. In what circumstances can the applicant apply for reinstatement?

Answer 40

s.20A - reinstatement is possible when an application is refused as a direct consequence of a failure by the applicant to comply (i.e. pay the search fee) with a requirement of the act or rules within a particular time period. If a request for reinstatement is made within 12 months of the failure to comply (i.e. until 12th December 2013), the applicant will have to provide evidence that the failure to comply was unintentional. The request is at the discretion of the comptroller.

Question 41

What is the difference between an exclusive licence, a sole licence and a non-exclusive patent licence? (x1)

Answer 41

Exclusive licence: no person or company other than the named licensee can exploit the relevant rights. The licensor is also excluded from exploiting the rights. Sole licence: the licence is exclusive to one licensee, but the licensor is not excluded from exploiting the rights. Non-exclusive licence: any number of licensees and the licensor may exploit the rights.

Question 42

What are the conditions under Article 3 of Regulation (EC) 469/2009 for the granting of a supplementary protection certificate?

Answer 42

(a) the product is protected by a basic patent in force (b) a valid authorisation to place the product on the market as a medicinal product has been granted (c) the product has not already been the subject of a certificate (d) the authorisation in point (b) is the first authorisation to put the product on the market as a medicinal product.

Question 43

In relation to the novelty of a patent, what grace period is available under Japanese law?

Answer 43

There is a 6 month grace period in which any voluntary disclosure by the applicant, or any disclosure made against the will of the applicant, will not be considered as part of the state of the art when judging the novelty of an invention. A written statement about the disclosure is required to be submitted to the patent office within 30 days of the disclosure.

Question 44

What is the 'library principle'?

Answer 44

The library principle, in relation to the state of the art when judging the novelty and inventive step of an alleged invention, asserts that there is no need to prove that anybody ever actually saw a disclosure of a piece of prior art for it to be considered part of the state of the art, provided that the disclosure was made in public: see Lux Traffic v Pike Signals.

Question 45

When can a patent's term be extended under Japanese law?

Answer 45

The extension of a patent's term (ordinarily 20 years from the date of filing) can be up to 5 additional years when the invention cannot be practiced because relevant approval has not yet been obtained. The application for extension must be made before the expiry of the patent, and must also be made within a predefined period of the regulatory approval being granted. If approval is not granted before the expiry of the patent, the applicant can write to the patent office within 6 months of expiry to indicate that a request will be filed in due course.

Question 46

What formalities are required to assign (a) a European patent (UK); (b) a European patent application? (x3)

Answer 46

(a) A European patent (UK) is equivalent to a nationally granted patent, so is subject to the laws of the UK. Therefore, the assignment of a patent is void unless it is recorded in writing and signed on behalf of the assignor - s.30(6) PA77. However, an assignment that is not recorded in writing may still be effective in writing. Registration of an assignment is not mandatory, however it grants priority of assignment over earlier un-registered assignments, (b) A European patent application is within the jurisdiction of the EPC. Thus, Art 72 EPC requires that any assignment of an application must be made in writing and requires the signature of both parties to the contract. The assignment must be registered for it to be recognised by the EPO.

Question 47

What is the "problem and solution" approach before the European Patent Office? (x4)

Answer 47

(i) determine the closest prior art to the alleged invention; (ii) establish the objective technical problem to be solved by studying the distinguishing features of the application and identifying the technical effect resulting from those features and then formulating the problem; (iii) consider whether or not the claimed invention, starting from the closest prior art, would be obvious to the skilled person.

Question 48

When is commercial success relevant to inventive step? | x1

Answer 48

EPO approach: In general, the commercial success of an invention does not indicate inventiveness. But a small company without a sales team more likely to suggest inventiveness than a large company. Furthermore, success in a short period of time a number of countries might suggest inventiveness. It is necessary to exclude other factors such as market monopoly, advertising or better selling techniques. UK approach: Commercial success can in rare circumstances be indicative of inventiveness. Doing what is obvious can also be commercially successful. Therefore, commercial success is relevant when the prior art has been available and the need for a solution has been sought for a long time.

Question 49

On what issues in relation to a patent is it possible to get an Intellectual Property Opinion? What are the consequences of getting an opinion?

Answer 49

s74A PA77: can request an opinion on: (i) whether an act constitutes infringement; (ii) patentability of a granted patent; (iii) sufficiency; (iv) added matter before or after grant; (v) validity of an SPC for a medicinal or plant product. Getting an opinion means that: (a) the opinion is advertised; (b) any person (including the proprietor) may file observations on the opinion; (c) the comptroller may revoke a patent following an opinion on his own initiative.

Question 50

What are the four steps of the Aerotel/Macrossan [2006] EWCA Civ 1371 test relating to the patentability of computer programs? (x1)

Answer 50

(1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; (4) check whether the actual or alleged contribution is actually technical in nature.

Question 51

What is the “trinity” applied for determining equivalents for the purposes of US claim construction. (x1)

Answer 51

Does the element if the invention perform: (1) substantially the same function; (2) in substantially the same way; (3) to achieve substantially the same result. The assessment takes place at the time of infringement (so can include future developed technologies).

Question 52

What are the four requirements for a patent to be granted according to Article 52 of the EPC?

Answer 52

The application must: (1) be new, involve an inventive step and be capable of industrial application; (2) not fall into excluded subject matter;

Question 53

What is meant by “prior use” under section 64 of the Patents Act 1977?

Answer 53

A person who practiced a patented invention before the priority date of the patent, or in good faith made serious and effective preparations to practice the invention, has the right to continue to do the act. This right does not extend to licensing the invention to another person.

Question 54

When, and one what grounds, can a patent be revoked in the United Kingdom by (a) the court; (b) by the European Patent Office?

Answer 54

(a) The court or comptroller can revoke a UK patent any time after grant if: (i) the invention is not patentable (ii) the patent was granted to somebody not entitled to it (iii) the patent does not sufficiently disclose the invention (iv) added matter extends the scope of the patent protection improperly (vi) there was an improper amendment that extends the scope of protection improperly. (b) The EPO can revoke a patent during opposition proceedings up to 9 months after the grant of the patent. The grounds for opposition are: (i) the invention is not patentable (ii) the patent does not sufficiently disclose the invention (iii) added matter extends the scope of the patent protection improperly.

Question 55

What is the three stage test for establishing breach of confidence set out in Coco v Clark [1969] RPC 41?

Answer 55

(i) the information must have the necessary quality of confidence - i.e. the information must be capable of being protected (ii) the information must be disclosed in a relationship of confidence (iii) identify whether there has been a misuse or disclosure of the information.

Question 56

When, and on what grounds, can a patent be revoked by the comptroller of his or her own motion?

Answer 56

If it appears, at any time, to the comptroller that an invention for a patent formed part of the state of the art by virtue of s.2(3), he may on his own initiative order for the patent to be revoked, but shall not do so without giving the proprietor of the patent an opportunity to make any observations and to make amendments so to exclude any matter which formed part of the state of the art. Where the comptroller has issued an opinion and is not satisfied that the patent is valid, the comptroller may revoke the patent. If there is a case of double patenting by a UK patent and an EP(UK) patent, the comptroller may revoke the UK patent.

Question 57

When is a continuation application filed at the US Patents and Trademarks Office?

Answer 57

Filed before the earlier application is issued or abandoned, provided that: • the earlier application is a non-provisional application • the two applications have at least one inventor in common • there are no added matter issues • the continuation application references the earlier application • the patent application complied with the disclosure requirements.

Question 58

What is excluded from patentability under art 53 of the European Patent Convention? (x3)

Answer 58

(a) inventions contrary to ordre public, but not merely because it is prohibited by domestic law; (b) plant or animal varieties or essentially biological processes for the production of plants or animals, but not for microbiological processes or products; (c) methods for treatment of the human body by surgery or therapy and diagnostic methods practiced on the human or animal body, but not for products for use in these methods.

Question 59

What is the ‘on sale’ bar in the US? | x1

Answer 59

Allows a patented product to be sold/marketed (offer to sell) before a patent is applied for, as long as application is made no later than 1 year after would-be infringing activity.

Question 60

What does Article 4 of the Biotech Directive (98/44) deem to be unpatentable? (x1)

Answer 60

(1) (a) Plant and animal varieties; (b) essentially biological processes. (2) Patentable if invention is not confined to a particular plant or animal variety. (3) Without prejudice to microbiological processes and products.

Question 61

When will a patent be refused on the grounds that it is contrary to public policy? (x1)

Answer 61

EPO: Oncomouse introduced the balancing act where the suffering of animals and possible risks to the environment were weighed against the usefulness of the invention.

Question 62

What is the definition of a diagnostic method under the European Patent Convention? (x1)

Answer 62

G 1/04 Diagnostic methods [2006]: (i) an examination phase, involving the collection of data; (ii) the comparison of these data with standard values; (iii) the finding of any significant deviation, i.e. a symptom, during the comparison; (iv) the attribution of the deviation to a particular clinical picture, i.e. the deductive medical or veterinary decision phase. Each of the above steps (i) to (iii) must be performed on the human or animal body.

Question 63

What has changed under EPC 2000 in relation to second medical use claims? (x1)

Answer 63

Prior to EPC 2000, a claim to a method of use of a known substance could not be permitted, but a claim to the use of a product for the manufacture of a medicament for a new and inventive medical use could be permitted. After EPC 2000, the patentability of a substance comprised in the state of the art for use in a new and inventive method is not excluded.

Question 64

What are the requirements for a claim under section 14 of the Patents Act 1977? (x1)

Answer 64

The claim shall: (i) define the subject matter for which protection is sought; (ii) be clear and concise; (iii) be supported by the description; (iv) relate to one invention or to a group of inventions which are linked by a single inventive concept.

Question 65

A claim for infringement of a French patent was filed before the High Court. Can the court hear the claim? If not, why not? (x1)

Answer 65

Cannot hear on validity, but can provide an interim injunction.

Question 66

What is the test for equivalents set out in Eli Lilly v Actavis [2017] UKSC 48? (x1)

Answer 66

(i) does the variant infringe any of the claims as a matter of normal interpretation? (ii) if not, does the variant nonetheless infringe because it varies from the invention in a way which is immaterial? (a) Does the variant achieve substantially the same result in substantially the same way? (b) Is it obvious to the skilled person at the priority date, knowing that substantially the same result result is achieved, that it is achieved in substantially the same way? (c) Would hey have concluded that the patentee intended that strict compliance with the literal meaning of the claim was essential? If yes to all of (a) to (c), then the variant is equivalent.

Question 67

What are the three methods of assessing damages for patent infringement used by the English courts? (x1)

Answer 67

Lost sales: where the claimant lost sales due to the defendant's actions, then damages are meant to compensate. Lost licences: where the claimant grants licenses to others to exploit his invention, damages should be calculated on the basis of the royalties the defendant would have paid, had he acted legally. The user principle: where neither of the above can be proved, damages will be assessed by considering what price the claimant could have reasonably charged for permission to carry out the infringing acts, taking into account their bargaining positions.

Question 68

What is the purpose of a “choice of court” term and a “choice of law” term in a patent licence? (x1)

Answer 68

Choice of court: the parties to a contract can agree where any dispute under the contract will be heard. E.g. disputes will be heard before the High Court in London. Choice of law: the parties may choose which law applies to the agreement. The choice of law and the choice of court may not agree. E.g. the English High Court may apply French law.

Question 69

What formalities are needed to mortgage a European patent (UK) under English law? (x1)

Answer 69

The mortgage will be void unless it is in writing and singed by the mortgagor. A company must register a mortgage over a patent with Companies House. For joint ownership, person wishing to mortgage his share of a patent must get consent from the other owners.

Question 70

When can proceedings be brought for a groundless threat of patent infringement? (x1)

Answer 70

s. 70A Actionable Threats: (a) a patent exists; (b) a person intends to bring proceedings against another person for infringement of a patent (in the UK or elsewhere) for an act that was (or would be) done in the UK; (c) the threat is actionable by any person aggrieved by the threat.

Question 71

When is an employee entitled to compensation for developing an invention? (x1)

Answer 71

s. 40(1) PA77: (i) if the employee made an invention belonging to an employer for which a patent has been granted; (ii) if, having regard to the size of the employer's undertaking, whether the invention or patent (or both) was of outstanding benefit to the employer.

Question 72

Explain the differences between “first to file” and “first to invent” (x1)

Answer 72

First to file: the first applicant to file an application for an invention is entitled to it. (UK, EPO and US post-AIA). First to invent: the first applicant to invent the invention (that is, to reduce it practice) is entitled to it. (US pre-AIA).

Question 73

What is needed to establish a claim of priority? | x1

Answer 73

Must file the claim of priority within 12 months of the filing date of the earlier application (plus the PLT grace period of 2 months in the UK and EPO if missed). Priority application must have been in a WTO or Paris Convention state. Priority application must be the first filing of the invention. The applicant of the new application needs to be the same applicant (or successor in title) as the earlier application.

Question 74

What is the period of priority under the Paris Convention and how does the Patent Law Treaty affect that period? (x2)

Answer 74

12 months from the date of first filing of the invention (using the inclusive rule). PLT gives at least 2 extra months for when the deadline is missed unintentionally (UK) or if all due care was taken (EPO). Priority must be claimed at the time of the application if using PLT period).

Question 75

What is needed to "renew" a priority date? | x1

Answer 75

Set out in Paris Convention Art 4C. If the application from which an applicant is claiming priority is not the first application for the invention in suit, then priority may still be claimed from the later application if the first application: (i) was withdrawn, refused or abandoned, (ii) before the first application was published or laid open for public inspection in any way. The earlier application may not then be used as a basis for claiming priority thereafter.

Question 76

What types of search are available under the Patent Cooperation Treaty? (x1)

Answer 76

The ISA may establish a Search Report and a preliminary non-binding written opinion within 3 months of receiving the search copy or 9 months from priority. The applicant may request one or more supplementary international searches which are carried out by an ISA other than the ISA which carried out the first international search.

Question 77

Who can hear patent infringement cases? | x1

Answer 77

Courts (Patents Court and IPEC within the High Court) can hear cases in infringement proceedings and grant all available remedies. Patent Office (as part of an opinion) can give opinions on whether an act constitutes infringement. This opinion cannot grant equitable remedies (can only grant damages and declarations of validity and infringement), but the proceedings are much cheaper than the courts.

Question 78

If identical patent applications are filed under EPC and UKIPO, what options does an applicant have in case of grant?

Answer 78

Options before grant: Either withdraw the GB designation of the EP application or withdraw the UK application. Could also amend either of the applications to remove the conflict between them. After grant, it is not possible to withdraw the GB designation of the EP patent. The comptroller does not have discretion to revoke the EP patent. Thus, unless the conflict is removed, the UK patent will be revoked by the comptroller.

Question 79

What is international preliminary examination under the PCT?

Answer 79

A preliminary and non-binding opinion on whether the claimed invention appears to be novel and contain an inventive step and be industrially applicable. The examination is part of the optional Chapter II route of the PCT and thus happens on request of the applicant via filing a demand. The prior art examined against uses a search against a minimum of PCT publications, but there is no search for disclosure by prior use. The preliminary opinion does not need to be accepted by the elected offices.

Question 80

List two conditions under UK law where a public disclosure will not defeat novelty

Answer 80

(i) if the disclosure was made as a breach of confidence against the proprietor where or where the matter disclosed was obtained unlawfully from the proprietor. (ii) if the information was displayed at an international exhibition, and the inventor states as part of the application that the invention has been disclosed in this way. The display must have been made within 6 months of the application being made.

Question 81

What do you understand by priority date?

Answer 81

Date of filing of the application if it is the first filing of the invention, or the date of filing of an earlier application for the invention from which priority is claimed for a later application. The priority date determines the state of the art when judging novelty, inventive step, sufficiency etc. The priority date also determines certain deadlines in the application process, such as publication which occurs 18 months from priority. Can only claim priority from earlier applications made in a WTO country or a country signatory the Paris Convention.

Question 82

Under US law, what is prosecution file wrapper estoppel?

Answer 82

When an applicant makes an amendment during prosecution of a patent application to avoid a certain piece of prior art, he cannot then sue for infringement of an equivalent variant under the doctrine if equivalence of the invention if the variant is the same as that piece of prior art.

Question 83

What is the effect of the London Agreement in (a) the United Kingdom; (b) Finland; (c) Iceland?

Answer 83

An EPO application must be in one of the official languages of the EPO: English, French or German. (a) (Official language is English) If the application is is English, no further translation requirements. If in French, the entire application would need to be translated into English. (b) (Official language is Finnish, prescribed language is English) If the application is in English, then translation of the claims into Finnish are required, but not further translations required. If in French or German, translation of the description into English and translation of the claims into Finnish required. (c) (Official language is Icelandic, prescribed language is English) If application in English, then need to translate claims into Icelandic. If in French or German, need to translate the description into English but need to translate the claims into Icelandic.

Question 84

What is the difference in scope between the ground of opposition for sufficiency under Art 100 of the EPC and revocation on the same grounds under section 72 of the Patents Act 1977?

Answer 84

EPO: the application must be sufficient at the date of publication. UK: the application must be sufficient at the date of filing.

Question 85

What occurs during formal examination and what happens during substantive examination?

Answer 85

Formalities exam: application is assessed to see whether it complies with formalities including checking: there is a request for grant, there is a description of the invention, one or more claims, any drawings and an abstract. Substantive examination: ascertain whether the application consists of excluded subject matter, is novel, involves an inventive step and is industrially applicable. Also checks sufficiency, clarity and conciseness and support.

Question 86

In what circumstances can a reference be made to the Enlarged Board of Appeal at the European Patent Office by a Technical Board of Appeal?

Answer 86

The Technical Board of Appeal may refer a question to the Enlarged Board of its own volition, or either by request from a party to the proceedings, in order to ensure uniform application of the law or if a fundamental point of law arises. The President of the EPO may also refer a point of law to the Enlarged Board of Appeal where the two boards have given different decisions on the question.

Question 87

What is required to obtain a date of filing under the European Patent Convention? (x2)

Answer 87

(a) an indication that a European patent is sought; (b) information identifying the applicant or allowing the applicant to be contacted; (c) a description or reference to a previously filed application.

Question 88

What is required to establish a date of filing under the Patent Co-operation Treaty?

Answer 88

(i) the applicant does not lack, for reasons of residency or nationality, the right to file an international application with the receiving office; (ii) the application is in the prescribed language (iii) contains: an indication that it is intended as an international application, the designation of one or more contracting states, the name of the applicant, something that appears to be a description, something that appears to be a claim;

Question 89

Identify three languages of publication under the Patent Cooperation Treaty which are NOT also official languages of the European Patent Office.

Answer 89

PCT languages: Arabic, Chinese, English, French German, Japanese, Korean, Portuguese, Russian or Spanish. EPO languages: English French German.

Question 90

In an entitlement dispute, what is required for somebody to be considered an inventor?

Answer 90

Not enough to look at who contributed to the claims. They must have contributed to the inventive concept. (Yeda)

Question 91

When is the end of the period for entering the national phase in: (a) the United Kingdom; (b) Luxembourg; (c) Canada; and (d) what is the minimum period permitted under the Patent Cooperation Treaty (absent a derogation by a Contracting State)?

Answer 91

(a) 31 months (Ch I and II) (b) 20 months Ch I, 30 months Ch II (c) 30 months (unless fee paid to increase to 42 months) (d) 30 months

Question 92

What happens during the “national phase” of an international application?

Answer 92

The national phase begins at least 30 months from priority, after which the national office republishes the application. The national office may then optionally perform another search and then perform substantive examination.

Question 93

An application for a patent was filed in Australia on 11 th January 2008. Can priority be claimed from that application at the UK IPO on: (a) Thursday 18 th December 2008; (b) Monday 12th January 2009; (c) Wednesday 4 th January 2009.

Answer 93

(a) Yes, within the 12 months set by the Paris Convention (which the UK and Australia are part of). (b) if Office closed on final day, may roll over. Even if not, may file a late declaration under the PLT. (c) Yes, within the 12 months.

Question 94

Where an employer has filed a patent application for his or her employee’s invention, when is he entitled to be granted the patent (and when is the employee entitled)?

Answer 94

Belongs to the employer if: (a) made in course of the normal or specifically designated duties of the employee (b) made in the course of normal duties of the employee and, at the time of the invention, because of the nature of his duties and the particular responsibilities arising from that nature, he had special obligations to further the interests of the employer's undertaking. In all other cases the invention will belong to the employee.

Question 95

Where a patent is invalid, what defences are there to a claim of unjustified threats under section 70 of the Patents Act 1977?

Answer 95

The communication may have been made to a primary actor (i.e. a manufacturer or importer). The communication may have contained only factual information about the patent, and there was no threat of proceedings.

Question 96

What are the provisions of Article 5 of the Biotech Directive (98/44) ?

Answer 96

(1) The human body at various stages of development and the simple discovery of one of its elements. including the sequencing or partial sequencing of a gene cannot be patented. (2) An element isolated from the human body or otherwise produced by technical means may be patented even if the element is identical to its natural counterpart. The industrial application of a sequence or a partial sequence must be disclosed in the patent application.

Question 97

What are the four requirements for a patent to be granted according to section 1 of the Patents Act 1977?

Answer 97

(a) Novel (b) Inventive (c) Capable of industrial application (d) Not excluded subject matter.

Question 98

Under the European Patent Convention, what constitutes the “state of the art”?

Answer 98

The state of the art comprises everything made available to the public by means of written or oral description, by use, or by any other means before the date of filing of the EP application. The state of the art also includes EP applications which were not published at the date of filing of the present application, but have an earlier priority date.