UK Patent Law

Question 1

What are the exclusions for biological inventions?

Answer 1

• The human body and gene sequences discovered in it (although an isolated gene may be patented in conjunction with an industrial application of it)
• Cloning humans
• Modifying the human germ line
• Industrial or commercial exploitation of human embryos including stem cells when harvested from embryos
• Genetic modifications of animals likely to cause suffering without giving rise to significant medical benefits, and patenting the resulting animals themselves
• Plant and animal varieties

Question 2

What is excluded as patentable inventions s1(2)?

Answer 2

a) discovery, scientific theory or mathematical method
b) literature, drama, music, art or any other aesthetic creation
c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program; or
d) the presentation of information…
…AS SUCH

Question 3

A patent won’t be granted where the commercial exploitation of the invention would be…

Answer 3

Immoral or contradict public policy

• does not equate with illegal

Question 4

What is the test for determining whether a claim is related to an excluded category?

Answer 4

Aerotel/Macrossan

1. Properly construe the claim (decide what the monopoly is)
2. Identify the actual contribution
3. Ask if this falls solely within the excluded subject matter
4. Check whether actual or alleged contribution is technical in nature

CC-AC-SE-TIN

Question 5

How long is the grace period for filing a patent application after a disclosure to the public in breach of confidence or officially recognised international exhibition?

Answer 5

Six months preceding the filing date

Question 6

Under what scenarios does the grace period for a disclosure to the public apply?

Answer 6

• The disclosure resulted from the invention being obtained by anyone unlawfully or in breach of confidence
• The disclosure occurred at an officially recognised international exhibition, and this is stated on filing the application with confirmatory evidence supplied within 4 months of filing or within 2 months of entering the national phase for PCT applications

Question 7

What is required to establish a breach of confidence?

Answer 7

• An air of confidence at the time the information is imparted or acquired that causes the recipient to understand that the information is confidential
• e.g. marked “confidential”
• Attempt to get proof e.g. signed NDA or affidavit

Question 8

Is an abstract part of the state of the art for novelty-only prior art?

Answer 8

No

Question 9

What type of applications form part of the state of the art for novelty-only prior art?

Answer 9

• GB
• EP
• PCT validly entering GB phase
• PCT(EP) where filing fee is paid (and translation filed where PCT is in non-EPO language)

Question 10

For a matter to be made available to the public, what type of disclosure must it have been?

Answer 10

Enabling disclosure

Question 11

What is the test for an enabling disclosure?

Answer 11

Whether enough information is revealed to enable a person in the relevant field to replicate the invention

Question 12

A document having its own URL is available to the public if?

Answer 12

• It can be found using a public search engine using keywords related to the essence of the content of the document
• It remains online long enough for a member of the public to have direct and unambiguous access

Exam note: good practice to obtain proof of claimed date of disclosure for web based disclosures

Question 13

What should you suggest to a client when there has been a partial or non-enabling disclosure?

Answer 13

• Request document is returned and no further applications are made
• File application ASAP
• Warn client that grant may not be possible depending on facts

Question 14

If there was no air of confidence regarding a disclosure to the public, what should you suggest to your client?

Answer 14

• The inventor is unlikely to get a patent in EP/UK
• But may use 12 month grace period for UK/EP designs
• Or try to obtain patent protection in other jurisdictions with a patent grace period e.g. US and JP

Question 15

What should you do it you think someone will breach a confidence?

Answer 15

• File application ASAP
• In principle you will have a 6 month grace period but this is less safe and may complicate overseas filings
• Monitor the person who may breach (as they may be likely to file their own application or work the invention) and
• In time, consider infringement proceedings

Question 16

What are the steps of the Pozzoli / Windsurfing test?

Answer 16

1a) Identify notional PSA
1b) Identify CGK of PSA
2) Identify or construe the inventive concept in the claim
3) Identify what, if any, differences there are between the material forming the state of the art and the invention as identified or construed
4) Decide, without any knowledge of the proposed invention as claimed, whether those differences required any degree of invention

Question 17

What are some secondary indica of inventiveness?

Answer 17

• Long felt need
• Commercial success (not attributed to factors other than the invention e.g. marketing)
• Prejudice in the art against an approach

NB these cannot generally be used as evidence of inventiveness

Question 18

Define industrial applicability

Answer 18

Physical activity of technical character belonging to useful or practical arts.

Excluded: aesthetic arts

Question 19

What is excluded from patentability under s4A?

Answer 19

• A method of treatment of the human or animal body by surgery or therapy
• A method of diagnosis practiced on the human or animal body

Question 20

Define treatment of the human or animal body by therapy

Answer 20

• Achieves a therapeutic effect
• Covers curative and preventative treatments as well as treatments that alleviates a cause of symptom of a medical condition
• Excludes purely cosmetic treatments; but any incidental potential therapeutic effect in a cosmetic treatment can cause the method to fall under an exclusion
• Pest control is a therapy for the pest’s victims (e.g. killing tapeworms or ticks)
• Requires there to be a medical condition (e.g. snoring prevention not therapy)

Question 21

Define treatment of the human or animal body by surgery

Answer 21

• Non-insignificant physical intervention
• Not necessarily of an invasive nature e.g. application of butterfly stitches
• Encompasses both cosmetic and therapeutic surgery
• Removal of body hair for purely cosmetic purposes is not a “treatment by surgery”

Question 22

Define method of diagnosis practiced on the human or animal body

Answer 22

According to EBoA:
(I) examination and collection of data
(ii) comparison with normal values
(iii) recording any deviation from the norm
(iv) attributing the deviation to a particular clinical picture

To be a diagnostic step, it must include (iv)

Requires all method steps of a technical nature to be practiced on the body

Assumes a medical condition (e.g. pregnancy tests are not diagnoses)

Question 23

What is the normal priority period?

Answer 23

12 months from earliest claimed priority

Question 24

Can the 12m priority be extended? How?

Answer 24

• Yes, with the permission of the Comptroller this can be extended by 2 months
• Must file request on relevant form and pay late fee
• Must provide evidence that failure to file the application within 12 months was unintentional
• if no evidence submitted on filing the request, the Formalities Examiner should request the evidence within a specified period (usually 2m)

Question 25

When must priority be declared for an application filed within the normal priority deadline (12m)?

Answer 25

• Either at time of filing; or
• Within 16 months of earliest priority date, using relevant form and paying £40 declaration fee
• Declaration must include the country, date of filing and application number(s)

Question 26

When must priority be declared for an application filed in 2 month extension period?

Answer 26

• At the time of filing the request for the extension, with a late filing fee £150 and the £40 declaration fee; or
• if the request is in relation to a PCT(GB) application, the late declaration must be made within 1 month of entering the national phase

Conditions:

• No early publication can be requested; or
• A request for early publication was made but withdrawn in time to prevent publication

Question 27

When can a second application, disclosing the same matter as an earlier filed application, be used as basis for priority?

Answer 27

• When the first application is withdrawn or refused
• with loss of all rights prior to the publication, and
• was never used as a basis for priority itself,
• on or before the day the second application was filed
• in the same country as the first

Question 28

What are the requirements for filing priority documents?

Answer 28

• A certified copy of the priority document must be filed within the 16 month period unless a copy is already available to the Comptroller
• e.g. if it is a PCT(GB) and the priority docs were previously submitted to WIPO

Question 29

What are the requirements for filing foreign priority documents?

Answer 29

• Certified copy(s) must be provided within 16m (or later if a request for an extension is filed R108(2), and
• optionally a further request is filed under 108(3) furnished with evidence supporting the grounds)

Question 30

What happens if the priority document is in a language other than English or Welsh?

Answer 30

• a Patent Examiner may request a translation or a declaration that the new application is a complete translation of the priority document
• Only if the validity of the priority claimed from the earlier application is relevant for the patentability of the application

Question 31

Who can file a priority claiming application?

Answer 31

• Applicant(s) - if more than one in earlier application, then they must all be named or assigned priority rights prior to filing; or
• Successor(s) in title

Question 32

Who is the onus of proof on to show that the priority application exists?

Answer 32

The applicant

Question 33

If priority is contested, who is the onus of proof on to show that the priority document is insufficient?

Answer 33

The objector

Question 34

If an application is lost (e.g. abandoned, lapsed, refused) before filing a priority claiming application, what is advisable?

Answer 34

Explicitly reserve the right to claim priority from it to avoid it being interpreted as desiring a full loss of rights

Question 35

When can a declaration of priority be withdrawn?

Answer 35

• For a PCT(UK), before the national phase begins
• For any other UK application, before preparations for publication are complete

Question 36

What are the three drawbacks to late declarations of priority (i.e. within 16m)?

Answer 36

• Higher cost (£40 declaration fee)
• Less time to correct errors in priority (deadline 16m from priority)
• Prevents the option to file missing matter without redating

Question 37

Who may apply for a patent?

Answer 37

• Any person (natural or legal)
• Excludes unincorporated partnerships

Question 38

Who may a patent be granted to?

Answer 38

• The inventor(s); or
• in preference, a person entitled by agreement, law or treaty (e.g. an employer); or
• a successor in title to either of the above

Question 39

Who is an inventor?

Answer 39

• A person who made an inventive contribution
• A person who contributed materially to what was thought to be the invention at the time of its devising, regardless of how small that contribution was or ended up being in the claims
• A person who merely gives advice or assistance is not a co-inventor

Question 40

What are the three options for changing application details?

Answer 40

1. Correction: file a request under R49 (correction of name and address) or R50 (correction of error in register) with written reasons; or under R105 (correction of error in application) if clerical/translation error
2. Amendment: file a request under R31 (amendment of application) is statement of inventorship not filed
3. Transaction: file a request under PF1 if registering a transaction

Question 41

Can an applicant be entitled to an invention via an assignment that diminishes an employees rights?

Answer 41

No - unenforceable assignment

Question 42

Lack of entitlement is a ground for revocation of a patent for how long?

Answer 42

• Two years from grant
• Unless the applicant was knowingly fraudulent

Question 43

After grant, who can raise an entitlement issue?

Answer 43

• The potentially entitled person only

Question 44

Onus of proof is on whom to prove a lack of entitlement?

Answer 44

• The party raising the entitlement issue,
• except possibly under s39(2) for employer-employee cases

Question 45

s8: Before grant, who can refer a question of entitlement to the Comptroller?

Answer 45

Any party

Question 46

For a pending application, what actions can the Comptroller take under s8 to address a lack of entitlement?

Answer 46

1. Replace some or all applicant names with the new party(s)
2. Refuse to grant a patent, or amend to excise contested elements of it
3. Order a license or transfer of right in the application to the new party(s)

Question 47

Under s8 proceedings, if the Comptroller refuses to grant a patent, or amend to excise contested elements of it, what can the new party do?

Answer 47

The Comptroller may order that the new party can file a new application for those elements within a prescribed period of 3 months from the decision or end of appeal, which is treated as having been filed on the date of the earlier application.

Question 48

If an order to licence or transfer a right in the applicant is ignored by the ordered party, the comptroller can permit the other party to implement the order if it has been ignored for how long?

Answer 48

14 days

Question 49

Can Comptroller pass s8 entitlement issues to courts?

Answer 49

Yes

Question 50

Can trustees or representatives of deceased parties pursue s8 entitlement proceedings?

Answer 50

Yes

Question 51

For new applications arising from entitlement disputes or divisionals, what actions must be taken in terms of inventorship and priority, and by when?

Answer 51

By the later of 2 months from filing or 16 months from priority:

• declare inventorship; and
• file priority documents

BUT if the new application is filed within 6 months of the compliance period, the documents must be supplied at filing

Question 52

For new applications arising from entitlement disputes or divisionals, when must information regarding biological deposits be supplied?

Answer 52

The later of:

• The filing date; or
• 16 months from priority

Question 53

What articles are relevant for entitlement proceedings for:

1. UK applications
2. Foreign applications
3. UK patents

Answer 53

1. s8
2. s12
3. s37

Question 54

Are there any UK provisions to deal with entitlement proceedings of foreign patents?

Answer 54

No. But where a foreign application grants during s12 proceedings, then the proceedings can continue

Innovia Films v Frito-Lay [2012]

Question 55

Advice to consider for entitlement disputes during the exam?

Answer 55

• Consider an amicable agreement e.g. assignment or comfort letter, if suitable
• Be seen to check agreements and facts of case
• Attempt early settlement where the other party is clearly wrong - point out that they could bear the costs in court if they reject such an offer
• Consider accelerated prosecution due to likely infringement of other party

Question 56

Is the publication or prosecution of the application in the UK delayed by entitlement proceedings?

Answer 56

No. But corresponding EP case can be suspended pending the outcome.

Question 57

Under s10, if joint applicants disagree on how to prosecute a case, what can be done?

Answer 57

Comptroller can be asked by any of the parties to:

• arbitrate;
• direct how to proceed; and/or
• alter the number of applicants (can use s8 in parallel if one party is not entitled)

Question 58

If joint applicants which you have been representing split, what should you do?

Answer 58

There may be a conflict of interest.

• Select which applicant to continue to represent
• Advise other applicant to seek a new representative

Question 59

What can/cannot a joint applicant do without permission from the other applicant?

Answer 59

• Can: work invention
• Cannot: assign, license, revoke

Question 60

Following transfer of application in s8 or s10 proceedings, what happens to extant rights (e.g. a licence)?

Answer 60

• If one or more of the original applicants remain - extant rights are normally allowed to continue
• If none of the original applicants remain - extant rights lapse upon registration of new applicant

Question 61

If any of the original applicants or parties granted extant rights were making serious and effective preparations to work the invention in good faith in the UK prior to a reference under s8, what are they entitled to, and by when?

Answer 61

• Entitled to be granted a licence on reasonable terms by the new proprietor or the new applicant made from excised matter
• The license should be requested within 2 months of the order of transfer

Question 62

Under s12, before grant of an overseas patent, who may refer a question of entitlement to the Comptroller?

Answer 62

• Any person (e.g. a non-applicant); or
• one or more co-applicants can approach Comptroller regarding transfer to any other person

Question 63

Are decisions on entitlement of foreign applications under s12 binding overseas?

Answer 63

No. Only provides guidance.

Question 64

Under s12, if the question of entitlement is referred for an EP application, what action can be taken?

Answer 64

• Request suspension of EP proceedings - requires proof that entitlement proceedings have begun in the UK
• If successful, a UK decision can be used to transfer rights of an EP application - A61 EPC

Question 65

When can you file a new application following s12 entitlement proceedings:

• For an EP application with its GB designation withdrawn before question is referred under s12;
• For an EP application refused by request of the entitled person after proceedings under s12; or
• For a PCT(GB) application with its GB designation withdrawn or refused during prosecution before or after any question is referred under s12

Answer 65

New party can file new application within

3 months

Question 66

What right does the inventor(s) have, and can this be waived?

Answer 66

• The right to be mentioned in the granted patent (and if possible the published application)
• This right can be waived - inventor must provide reasons for not wanting to be mentioned, but no reason required for wanting address to be mentioned

Question 67

What must the applicant provide the UKIPO with re the inventors, and by when?

Answer 67

• The identity of the inventor(s); and
• A derivation of rights if the applicant(s) is not the inventor(s)

Must be filed within:

• 16 months from priority; or
• for PCT(GB), the later of 16 months from priority and 2 months from NPE

Failure to do so → application deemed withdrawn

Question 68

If the inventor is not mentioned in the published application or patent, what must happen? Who can apply for this?

Answer 68

• What: They must be mentioned in a subsequent addendum or erratum
• Who: anyone can apply

Question 69

How is inventorship declared, and by when must this be done?

Answer 69

How:

• Form PF1 names the applicants and asks if they are also (all) the inventors;
• If not filled out on PF1, must file PF7 to specify the inventors and/or the applicant’s derivation of rights (e.g. by virtue of employment)

By when:

• 16 months from priority
• Or if PCT(GB) entering the national phase, the later of 16 months from priority or 2 months from NPE

If not done on time:

• Application deemed withdrawn

Question 70

Remedies for failure to mention inventor by due date?

Answer 70

• Two month extension as of right (form + fee) - R108(2)
• If failure to comply within the two month extension is unintentional, can potentially use R108(3) or s20A for further extension - form, fee, evidence of unintentional

Question 71

Does the inventor’s nationality need to be declared?

Answer 71

No

Question 72

How can an inventor name be added/changed?

Answer 72

• Within 16m from priority - send a replacement PF7 with a note saying it supersedes any previous PF7
• Or use s117 to correct clerical errors

Question 73

Is an actual assignment document/contract with a date and signature etc needed to designate the inventor on PF7?

Answer 73

No

Question 74

What form is needed to file a patent application?

Answer 74

PF1

Question 75

When is the application fee due? How do you minimise costs for application fee?

Answer 75

• No priority claim - 12 months from filing
• Priority claim - the later of 12 months from priority or 2 months from filing
• Cheaper to pay on filing (£60 vs £75)

Question 76

What must an application comprise?

Answer 76

• Request for a grant of a patent (PF1)
• A spec comprising - a description; one or more claims (optional at filing); drawings if referred to;
• An abstract (optional at filing)

Question 77

Can a withdrawal of a patent application be reversed by the applicant?

Answer 77

No, but the Comptroller may correct any error or mistake in the withdrawal of the application (so effectively yes)

Question 78

Does the abstract form part of the state of the art?

Answer 78

No

Question 79

If the applicant’s name and address are not provided in the request for grant, they will be requested by the Comptroller with how long to comply?

Answer 79

• 2 months from the request;
• Failure to comply - application deemed withdrawn

Question 80

Can the claims rely on references to technical features disclosed in the description or figures?

Answer 80

• No;
• UNLESS - these cannot be clearly and precisely defined in writing or using a mathematical method or chemical formula

Question 81

If application documents are filed in a foreign language and no translation is provided, they will be requested by the Comptroller with how long to comply?

Answer 81

2 months

Question 82

An application referring to a sequence must include a sequence listing. If not included, what happens?

Answer 82

• Comptroller will request it and set a time limit for responding;
• If not provided, the application may be refused;
• A late filed sequence listing must be accompanied by a declaration that it does not add matter

Question 83

What format must sequence listing be file in?

Answer 83

From 1 July 2022: XML file format required in all WIPO states for:

• any nucleic acid sequences (DNA, RNA) having 10 or more fully defined residues; and
• any peptide sequences (including cyclic peptides) having four or more fully defined residue

Question 84

Are black and white photographs permitted? Is shading permitted?

Answer 84

• Yes
• Yes - where this assists in representing a shape and does not obscure elements of the drawing

Question 85

What is ex post facto non-unity?

Answer 85

Where prior art is found that renders the existing unifying characteristic known

Question 86

What is a lack of enablement?

Answer 86

Description does not provide enough information for the PSA to work the invention over the full scope of the claim

Question 87

How may enablement be interpreted differently for medical use claims?

Answer 87

The disclosure should at least make the claim scope plausible

Question 88

What is sufficiency?

Answer 88

Whether the full scope of the invention is clearly and completely disclosed by the description

Question 89

What is support?

Answer 89

Pre-grant question of whether there is enough technical information in the application to support the text of the claims

Question 90

When are two or more inventions considered to have unity?

Answer 90

When they share a technical relationship based on matching or complementary special technical features that, when considered together as a whole, define a contribution over the prior art (e.g. a plug and socket)

Question 91

Can an application be amended to overcome a lack of enablement?

Answer 91

The description can’t, but the claims may be limited

Question 92

What is required to obtain a filing date?

Answer 92

• Indication that a patent is sought;
• Identify applicant or enable contact with them;

AND:

• Something that appears to be a description; OR
• a reference to an earlier application of the applicant or their predecessor (incl date of filing, app. no. and country of filing)

Question 93

What happens if an application is insufficient to obtain a filing date?

Answer 93

• The Comptroller will alert the applicant to what needs fixing;

From notification, applicant will then have:

• 2 months to comply with the identification of the applicant or file a verified translation of text; or
• 4 months to provide a certified copy of the earlier referenced application and translation if needed

Question 94

What is the time limit for filing missing parts?

Answer 94

• Any time between filing and preliminary examination; OR
• 2 months from notification by preliminary examiner

Question 95

Under what circumstances will filing missing parts lead to an unchanged filing date?

Answer 95

• The missing parts are contained in a priority application; and
• A request is made to not redate - the request must be in writing and must contain enough info to identify the source material in the priority document

Question 96

Under what circumstances would a request to not redate following filing of missing parts fail?

Answer 96

• The priority document referred to is missing any of the added material
• The certified priority document is not filed within the earlier of the normal 16 months period or four months from the date of the request to keep the priority date

Question 97

Where an application has a date of filing, what 5 things would lead to the application being treated as withdrawn?

Answer 97

No priority: within 12 months from filing; Priority: the later of 12 months from priority or 2 months from filing:

1. No claims/abstract filed
2. No description filed (if an earlier application is referenced)
3. No application fee paid
4. No request and fee for search

Within 4 months from filing:

5. No certified copy filed (and translation if needed) if earlier application is referenced

Question 98

When is a divisional unable to be filed?

Answer 98

• If the parent has granted, terminated or withdrawn
• Within the last 3 months of the compliance period (later of 4yr 3m from priority or 9m from first exam report)

Question 99

When can a new application following a dispute be filed?

Answer 99

• Within 3 months of Comptroller’s orders or the end of any appeal of that order
• The Comptroller can give notice to shorten this period

Question 100

Divisionals and new applications following a dispute have how long to comply with the designation of inventor and filing of priority document requirements?

Answer 100

• The later of 2 months from filing or the usual deadline (16m from priority)
• UNLESS - filing within the last 6 months of compliance period, in which case they must comply on filing

Question 101

Do Welsh texts require a translation?

Answer 101

No - they will be translated by the Comptroller

Question 102

For a PCT(GB) entering the national phase, when is the search fee payable?

Answer 102

• 12m from priority or
• 2m from NPE

Question 103

For a PCT(GB) entering the national phase, when is the national fee (which replaced the application fee) payable?

Answer 103

On entry to national phase

Question 104

When filing a divisional late in the compliance period, what should you advise?

Answer 104

Mark as urgent

Question 105

What are the conditions for getting a preliminary examination?

Answer 105

• The application has a filing date
• The application has not been withdrawn or treated as such
• The application fee has been paid

Question 106

What is the period for fixing issues found by the preliminary examination?

Answer 106

Period specified by Comptroller (usually 2m)

Question 107

What is the time limit for correcting an erroneous priority date in the declaration?

Answer 107

2 months from notification from preliminary examination

Question 108

When are pending applications published?

Answer 108

• ASAP after 18 months from priority; or
• earlier if requested

Question 109

Applications are published after withdrawn after preparations to publish are complete - when is this?

Answer 109

• Typically 5 weeks prior to publication
• In this case, the application would not count as s2(3) prior art for other applications

Question 110

What time period does the publicised date in the OJ start?

Answer 110

• The 6 month period to request substantive examination

Question 111

Why may early publication be desirable?

Answer 111

• Extends the period before grant during which damages may accrue

Question 112

What are the 5 conditions (17(1)a)-e)) that must be met for a search to be performed?

Answer 112

1. A preliminary examination has been performed
2. The application has not been refused, withdrawn or deemed as such
3. Search is requested before the later of 12m from the PD or 2 months from filing, using the relevant form and paying the fee
4. The application includes a description and one or more claims
5. The description and claims comply with the rules of language

Question 113

What happens to the search if the examiner considers the claims to lack unity?

Answer 113

• Only the first invention will be searched

Question 114

What is the deadline for paying further search fee to search for further inventions in a single application?

Answer 114

• 3 months before the end of the compliance period

Question 115

What are the difference search fees?

Answer 115

• Basic search fee
• Slightly higher search fee if RfS filed on paper
• Excess claims fees for each claim over 25 to be paid together with search fee
• Additional search fee if examiner determined non-unity

Question 116

When are search and substantive examination combined?

Answer 116

• When search and exam request forms are submitted together (unless you specify you don’t want combined search/exam)

Question 117

Why may it be advisable to request second search (in case of non-unity objection) in advance of 3 months before the compliance date?

Answer 117

As it will be too late to file divisional if left to the deadline

Question 118

When may the search fee be refunded?

Answer 118

• For an application withdrawn after the search fee is paid but before a search starts
• For a divisional application if a search fee was paid for claims in a parent that was then divided out

Question 119

When are voluntary amendments possible?

Answer 119

After the search report

Question 120

Can you request accelerated/early search?

Answer 120

Yes, but must include a reason (e.g. you wish to see results before foreign filing)

Question 121

How do you request substantive examianation?

Answer 121

• Request examination, file form and pay fee within 6 months of publication (if not done already)
• Excess pages fees must be paid with exam fee for each page above 35

Question 122

When would a supplementary search be required?

Answer 122

• Examiner finds non-unity; or
• due to amendment following the search

Question 123

What must an applicant do if the examiner requires a supplementary search?

Answer 123

• pay search fee;
• amend to render the search unnecessary;
• or successfully argue otherwise

Question 124

If under a secrecy order (i.e. no publication), when does examination need to be requested by?

Answer 124

2 years from priority

Question 125

For divisionals or applications filed following a dispute, when does examination need to be requested by?

Answer 125

• The later of the usual date for the parent application i.e. within 6 months of publication; or
• 2 months from filing UNLESS within 6 months of compliance date, in which case it must be requested at filing

Question 126

How many opportunities to comply with any defects or argue against them is the applicant entitled to following an exam report?

Answer 126

One

Question 127

Excess claims fees are due for every page in excess of ___?

When are these fees due?

Answer 127

• Each additional page over 35
• Due with examination fee (usually due within 6 months of publication)

Question 128

How long is the compliance period for normal filings?

Answer 128

The later of:

• 4.5 years from priority; or
• 12 months from the first examination report

Question 129

How long is the compliance period for new applications following a dispute?

Answer 129

The later of:

• 4.5 years from priority
• 12 months from the first exam report; or
• 18 months from filing date of new applicaiton

Question 130

How long is the compliance period for divisionals?

Answer 130

Same as parent i.e. the later of

• 4.5 years from priority
• 12 months from first exam report

NB - must file divisionals before 3 months from the end of the compliance period

Question 131

For the specific case in which the examiner uses TPOs for an examination report within the last 3 months of the compliance period, how long does the applicant have to respond?

Answer 131

3 months

Question 132

If, during examination, claims have increased in number over 25 and/or the description has increased in length over 35 pages, what must be paid and by when?

Answer 132

• Excess claims fees for each claim over 25
• Excess pages fees for each page over 35
• WITH the grant fee (i.e. the grant fee encompasses the excess claims and page fees)
• within 2 months of the notification of intent to grant

Question 133

Can the due date for requesting examination be extended?

Answer 133

• Yes - can be extended as of right by 2 months - file form, pay fee
• Can be further extended under comptroller discretion, if good reason is provided as to why failure was out of applicant and agent’s control - use form then if allowed, pay further fee
• If all else fails, can reinstate using s20A is loss was unintentional

Question 134

Can compliance period be extended?

Answer 134

• Yes - can be extended as of right by 2 months - file form, pay fee
• Can be further extended under comptroller discretion, if good reason is provided as to why failure was out of applicant and agent’s control - use form then if allowed, pay further fee

At end of compliance period, if appeal is pending/time to bring an appeal has not expired:

• If an appeal is pending, the court determines an extended compliance period
• If no appeal is pending, the compliance period is the end of 28 days from refusal

Question 135

Does an application have to grant by compliance date?

Answer 135

No, must be in order for grant

Question 136

For PCT(GB) entering the national phase, when must examination be requested and exam fee paid?

Answer 136

Later of:

• 33 months (i.e. 31 +2 months) from priority; or
• 2 months from entry to the national phase

Question 137

How does UK and EP due date for requesting examination differ?

Answer 137

• UK - 6 months from publication of application
• EP - 6 months from publication of search report

Question 138

If there are no further objections from the examiner prior to publication, can the patent proceed directly to grant?

Answer 138

NO:

• Patent is not granted until at least 3 months after publication, to allow TPOs to be filed
• In this case, it may be advisable to request early publication (nothing this impacts late priority filing provisions)

Question 139

Can you obtain a refund of the examination fee?

Answer 139

Maybe - if withdrawn before examination commences

Question 140

Are divisionals and voluntary amendments allows in the limbo period between the administrative grant date (grant date provided in notification of intention to grant letter) and notification of grant in the OJ?

Answer 140

No

Question 141

UKIPO provides how long between issue date of intention to grant letter and the administrative grant date provided in this letter?

Answer 141

• At least a 1 month window…; or
• where first communication is an intention to grant letter, at least a 2 month window…

…in which to file divisionals or make voluntary amendments while the application is still pending

Question 142

After grant of a GB patent, what 4 options are there to address double patenting with EP(GB)?

Answer 142

1. Amend cases to distinguish
2. withdrawn GB designation before grant of EP(GB)
3. Apply to surrender EP(GB) before GB grants
4. Keep EP(GB) and let it supplant the GB (in this case, will need to reagree existing licences etc)

Question 143

If EP(GB) case claiming priority to a corresponding GB case grants before the GB case, what will happen?

Answer 143

GB will likely be revoked, usually after end of EP opposition period/proceedings in case a successful opposition removes the patent ab initio

Question 144

When can you register a HK patent based on a GB, EP(GB) or CN patent?

Answer 144

• First stage - within 6 months of publication
• Second stage - within 6 months of grant

Question 145

If the first examination report is issued more than 3.5 years from priority, what is the effect on the time limit for response?

Answer 145

• Time limit to respond is only 2 months instead of 4
• Only extendable to 4 months instead of 6

Question 146

Can you request accelerated prosecution?

Answer 146

Yes - if you can demonstrate hardship (e.g. likely infringement), need to secure investment, or green innovation

Question 147

Can the comptroller amend of their own volition?

Answer 147

Yes - to add registered trademarks

Question 148

What are the conditions of voluntary amendment before grant?

Answer 148

• Request is made in writing (identify amendment and reasoning)
• Wait until notice of search report (unless PCT(GB) that has received an ISR) but can then keep on amending until the first substantive examination report issued

AFTER then…

• if the first report is an intention to grant, one voluntary amendment within 2 months
• If the first report is an exam report issued after publication, one voluntary amendment is allowed if it is part of a reply to the report; or
• if the first report is an exam report issued before publication, can keep on voluntarily amending before actually replying to the report

Above doesn’t apply if examiner consents to amendment or the amendment concerns the request to grant (PF1)

Question 149

Is the request for grant part of the application that may be voluntarily amended?

Answer 149

Yes

Question 150

Can you amend PF1 before the issue of the search report?

Answer 150

Yes - with reasons e.g. change of applicant

Question 151

When may an extended compliance period be determined by the courts?

Answer 151

• If an appeal is pending; or
• the time to bring an appeal (typically 28 days from refusal) has not expired by the end of the compliance period

Question 152

What is the time limit for appealing?

Answer 152

• 28 days from refusal; or
• 14 days if it is a point of procedure

Question 153

Can an applicant extend the compliance period?

Answer 153

• Yes - up to 2 months as of right (form + fee)
• Further extension with discretion (form + fee + evidence of why it should be extended)

Question 154

How does appeals extension to compliance period and as of right extension interact?

Answer 154

Run concurrently (i.e. total extension no more than 2 months)

Question 155

What is advisable close to the compliance date?

Answer 155

• Mark correspondence as urgent (particularly divisionals and PCT(GB) cases where the application number is not indicative of age)

Question 156

When does reinstatement apply?

Answer 156

Application has been refused or treated as withdrawn due to missing a deadline set by either the Comptroller or the Act itself

Question 157

Under what conditions can an application be reinstated?

Answer 157

• The applicant requests reinstatement
• Failure to meet deadline was unintentional
• An extension is still not available
• The missed deadline is not due to:
  
  • Proceedings before the Comptroller
  • late declaration of priority with late filing
  • reinstatement itself, or a requested extension

Question 158

Can reinstatement be requested by one of joint applicants?

Answer 158

Yes, with comptroller permission

Question 159

If reinstated, what is the time limit for remedying the failure (i.e. the action required by the missed deadline)?

Answer 159

• Time limit set by the Comprtoller;
• Will be at least 2 months

Question 160

What does the request for reinstatement need to include?

Answer 160

• Form and fee
• Evidence that failure was unintentional - if this is not supplied with request, Comptroller will specify a period to provide it

Question 161

What is the time limit for requesting reinstatement?

Answer 161

• 12 months beginning immediately after the date of termination of the applicaiton

Question 162

What happens if reinstatement is refused?

Answer 162

• Applicant is notified
• They then have one month to request a hearing

Question 163

Will a request for reinstatement be published in the OJ?

Answer 163

• Only for published applications;
• If request is published in OJ, decision to reinstate is also published in OJ

Question 164

Examples of “unintentional”?

Answer 164

• Anything outside the applicant’s control that conspired to prevent the applicant carrying out the omitted act;
• E.g. discovery of isolated mistake, external circumstances such as sudden illness, uncharacteristically long postal delivery times, or lack or money due to circumstances outside the applicant’s control (e.g. court order restricting access to finances)
• it does NOT include making a bad decision then changing one’s mind

Question 165

Are actions done with or to an application between the loss of rights and reinstatement treated as valid?

Answer 165

Yes

Question 166

For actions after publication which occur between termination and notice of a request for reinstatement, who can continue otherwise infringing acts?

When does this right become exercisable?

Answer 166

• Those who in good faith begin to effectively infringe;
• Those who make serious and effective preparations to do so
• Right becomes exercisable after any period in which an as of right extension could have been requested for a deadline

Question 167

For actions after publication which occur between termination and notice of a request for reinstatement, who can be sued for infringement?

Answer 167

• Those who in bad faith, carried out infringing acts during a potential extension period; or
• Those who in bad faith, continued/repeated an earlier infringement

Question 168

Can rights to continue otherwise infringing acts done in good faith between loss of rights and reinstatement be transferred/licensed?

Answer 168

• The right applies to partners in a business; but
• It can only be transferred as part of the business itself

Question 169

Do third party rights accrued between termination and restoration extend from the original infringing act to other acts?

Answer 169

• No - especially if it is a significant expansion or divergence from the original act

Question 170

Why should you request reinstatement ASAP?

Answer 170

• To stop third party rights accruing
• (but no need if not published)

Question 171

If an application is refused after the normal compliance period, what happens on reinstatement?

Answer 171

Both missed deadline and compliance period are extended

Question 172

When can third party observations be made?

Answer 172

Between publication and grant

Question 173

Does filing observations make you a party to proceedings?

Answer 173

No

Question 174

When are TPOs NOT sent to the examiner?

Answer 174

When the examiner has issued an intention to grant

Question 175

When are TPOs NOT sent to an applicant?

Answer 175

When the TPOs are:

• Offensively disparaging/libellous; or
• likely to incited cause offence, immoral or antisocial behaviour

Question 176

Can TPOs challenge entitlement?

Answer 176

• No - can only challenge patentability of application
• Use s8 for entitlement proceedings

Question 177

If observations are made in the last 3 months of the compliance period and result in an exam report, how long does the applicant have to put the application in order?

Answer 177

3 months

Question 178

Which applications are subject to UKIPO national security/public safety review?

Answer 178

• UK, EP or PCT applications first filed in UK

Question 179

If an application is deemed prejudicial to security/public safety, what can the Comptroller do?

Answer 179

• Prevent/restrict dissemination of the invention for up to 3 months from due date for publication (i.e. up to 21 months from priority); and
• Notify Secretary of State

Question 180

What happens whilst the prevention of publication of an application due to national security/public safety is in force?

Answer 180

• Application is not published but can still prosecute up to readiness to grant;
• If it’s an EP application, it is not sent to the EPO
• If it’s a PCT application, it is not sent to the IB or ISA

Question 181

After application deemed prejudicial security is notified to Secretary of State, what do they do?

Answer 181

• Determines is publication of application or invention would prejudice security/public safety
• if so, instructs the Comptroller to extend the period of the prevention of publication until instructed otherwise
• review the decision within 9 months of filing and every 12 months thereafter
• If no longer appears prejudicial, SoS informs the Comptroller who can lift restrictions, noyify applicant and provide any necessary extensions of time to complete prosecution

Question 182

If an invention in an application prejudicial to nat. security/pub. safety relates to atomic energy, the Secretary of State can…?

Answer 182

• Insect the application and any accompanying documents; or
• authorise a competent body to do this

Question 183

If an invention in an application prejudicial to nat. security/pub. safety relates to anything other than atomic energy, the Secretary of State can…?

Answer 183

• Inspect the application after the due date for publication i.e. after 18 months from priority; or
• before with the applicant’s permission

Question 184

If the government uses an invention prejudicial to security/safety whilst prevention from publication is in force, if an application is in order for grant, then…?

Answer 184

• Sections 55-59 apply - as if arranged under s55 (Crown Use); as if published; as if granted; and
• If hardship due to the restriction is shown, the government may make a hardship payment

Question 185

What happens to renewal fees whilst an application is prevented from being published due to being prejudicial to national security/public safety?

Answer 185

Waived

Question 186

What are the consequences for breaching the prevention of publication of an invention/application prejudicial to nat. security/public safety?

Answer 186

• liable to an unlimited fine; and
• up to 2 years in prison, if convicted

Question 187

When an application is finally released after its publication was prohibited due to nat security/pub safety, does it count as prior art during the time it was prevented from being published?

Answer 187

Yes - acts like normal s2(3) novelty only prior art

Question 188

For EP/PCT applications, what happens if an application which is prejudicial to nat security/pub safety is not received by the EPO of IB within 14 months?

Answer 188

• It may be possible to be converted to national applications

Question 189

To maximise damages for when an application prejudicial to nat security/public safety is released, what should be done?

Answer 189

The applicant may seek discretion to disclose to specified persons

Question 190

What else, beyond patent matters, should be considered by an applicant of an application prejudicial to nat security/pub safety?

Answer 190

Invention is likely to also be covered by official secrets act and/or the export of goods control act, hence this may affect the use of the invention regardless of its patent status

Question 191

Is it possible to file application prejudicial to nat security/pub safety in any other countries?

Answer 191

• Possibly some scope for foreign-file secret applications within NATO countries;
• Need permission from UKIPO first - request this in plenty time before end of priority period

Question 192

How should fees be paid for applications prejudicial to nat security/pub safety?

Answer 192

Separately to other applications to protect secrecy

Question 193

Can a secret application (prejudicial to nat sec/pub safety) be cross-referenced in a second application?

Answer 193

No, otherwise second application will become secret too

Question 194

Is an employee likely to be able to obtain compensation (s40) for a hardship payment made to an employer by the government due to application being secret (prejudicial to nat sec/pub safety)?

Answer 194

No, as s40 requires grant of the application first

Question 195

To what subject matter of application do restrictions on overseas filings apply?

Answer 195

• The application relates to military technology or may prejudice national security; or
• the information therein may prejudice public safety

Question 196

When do restrictions on overseas filings due to subject-matter (military tech, nat-sec, pub safety) not apply?

Answer 196

• When the application was filed in the UK 6 or more weeks ago; AND
• there is no prevention order under s22; or
• a non-UK resident previously filed the application overseas

Question 197

If an applicant breaches the restriction on overseas filings due to subject matter (military tehc, nat sec, pub safety), what are they liable for?

Answer 197

If convicted:

• An unlimited fine; and/or
• up to 2 years in prison

BUT only if:

• they knew the filing would contravene s23 (restrictions on overseas filings); or
• they were reckless with the possibility that it would

Question 198

When should you request foreign filing clearance from the UKIPO?

Answer 198

• If you suspect the invention falls under the restricted subject matter (military technology or prejudicial to national security/public safety)

Question 199

When is notice of grant given in the OJ?

Answer 199

As soon as practical after grant

Question 200

When is the grant certificate sent?

Answer 200

As soon as practical after the notice of grant is given

Question 201

What is published along with the notice of grant?

Answer 201

• B-spec
• inventor details (unless waived); and
• applicant details

Question 202

What does “pre-grant” refer to?

Answer 202

• Before administrative grant date i.e. the date provided by the notice of grant;
• Pre-grant procedures (i.e. s1-23) end on this date

Question 203

What does “post-grant” refer to?

Answer 203

• After notice of grant in OJ
• This is the date the monopoly rights are activated and post-grant procedures can begin

Question 204

What cannot be performed during the period between administrative grant and notice of grant in the OJ?

Answer 204

Amendment

Question 205

From when can a divisional no longer be filed?

Answer 205

From Administrative grant date (date given on notice of grant letter)

Question 206

How long is a patent term?

Answer 206

• 20 years from filing date
• Expires midnight at the end of the day preceding the 20th anniversary of the filing date

Question 207

When does a patent cease to have effect if a renewal payment is not made by the end of the renewal period?

Answer 207

• At the end of the renewal date (i.e. the anniversary of filing, not the end of the month)

UNLESS:

• Form + renewal fee + additional fee is paid within the 6 months grace period to the end of the calendar month after the last month of the renewal period
• Fee increases month to month

Question 208

What are the legal consequences if the additional fee is duly paid in the grace period following a missed renewal?

Answer 208

• Patent is treated as never having lapsed
• i.e. anything done with or to the patent during the grace period is valid, intervening infringements are still infringements, intervening Crown Use is still Crown Use

Question 209

Is the proprietor reminded if a renewal fee is not paid?

Answer 209

Yes, Comptroller must remind proprietor

Question 210

When is the reminder for renewal fees sent by the Comptroller following a missed renewal payment?

Answer 210

Sent within 6 weeks after the renewal period (i.e. the last day of the month in which the filing anniversary falls) ends

Question 211

When is the first renewal fee due?

Answer 211

The 4th anniversary of filing (i.e. the start of the 5th year)

Question 212

If a patent grants before the first renewal is due (and the two full months preceding that month), what is the renewal period for paying the first renewal?

Answer 212

• During the three calendar months preceding and including the fourth anniversary of filing
• i.e. the start of 46th to end of 48th calendar month, with the renewal date falling within the 48th calendar month

Question 213

When is the due date for the first renewal fee if a GB patent grants within the 3 months period preceding the 4th anniversary of filing, or later?

Answer 213

• The renewal date is 3 months after the grant date; and
• the renewal period is until the end of the calendar month in which that modified renewal date falls

Question 214

When is the due date for the first renewal fee if a EP(GB) patent grants WITHIN the 3 months period preceding the 4th anniversary of filing?

Answer 214

• The renewal date is 3 months after the grant date; and
• the renewal period is until the end of the calendar month in which that modified renewal date falls

Question 215

When is the due date for the first renewal fee if a EP(GB) patent grants LATER THAN the 3 months period preceding the 4th anniversary of filing?

Answer 215

• The renewal date is the next anniversary of filing; and
• the renewal period is 3 calendar months preceding and including the next anniversary of the mention of the grant

Question 216

What is the renewal date for paying subsequent renewals (i.e. after the first)?

Answer 216

• The second renewal date is the next anniversary of filing to occur after the first renewal date; and
• Each subsequent renewal date is the anniversary of the preceding renewal date

Question 217

What is the renewal period for paying subsequent renewals (after the first)?

Answer 217

3 calendar months leading up to and including the renewal date in the third month

Question 218

What does the Comptroller do if the renewal and late fees are not paid by the end of the 6 month grace period?

Answer 218

The Comptroller sends a notice to that effect within 6 weeks and points out the possibility of restoration

Question 219

Do SPCs extend the patent term?

Answer 219

No - they act as a supplement which gives similar protection to a patent

Question 220

What is the renewal period for a case wherein the EPO revokes and then restores a EP(UK) patent and in the intervening period a UK renewal would have been due?

Answer 220

• 2 months after restoration

Question 221

If a GB patent grants after second or subsequent renewal, what renewal fees are due?

Answer 221

All outstanding renewal fees

Question 222

Can renewal fees be paid up front for additional years?

Answer 222

No

Question 223

How can renewal fees be discounted by 50%?

Answer 223

Licences of right confer a 50% reduction, but cancellation of the right means you have to pay all the discounts back again

Question 224

How can a licensee check if all renewals have been paid?

Answer 224

• Filing a form (PF49 “caveat”); or
• Check register

Question 225

Can the renewal period be extended by R108 (as of right extension)?

Answer 225

No - as there is a grace period instead

Question 226

Can grace period be extended by R108 (extension as of right)?

Answer 226

No

Question 227

What happens if the Comptroller fails to send a payment reminder following a missed grace period renewal payment?

Answer 227

This could be interpreted as a procedural irregularity under R107, allowing for the possibility of additional time to pay the fees

Question 228

Can a granted patent be objected to on grounds of unity (both as the claims currently stand or as proposed to be amended)?

Answer 228

• No
• NB scope of a granted patent cannot be extended, so there is no risk of importing additional inventions from the description post-grant

Question 229

When are post-grant amendments not allowed?

Answer 229

• When the amendment adds matter/broadens claims
• When proceedings are pending that may question validity

Question 230

When are post-grant amendments considered as having been made?

Answer 230

They are retroactive to the date of grant

Question 231

When may the Comptroller amend a patent (post-grant) of their own volition?

Answer 231

To acknowledge a registered trademark

Question 232

A third party can oppose a request for post-grant amendment under what grounds?

Answer 232

• Amendment adds matter or broadens scope
• Amendment would still leave the patent invalid

Question 233

What is the process for a proprietor to amend a patent post-grant?

Answer 233

• Request the amendment in writing
• Identify the proposed amendment; and
• give reasons for it

For EP(GB) patents originally published in another language, in addition…

• provide a translation of the original and amended portions of text (NB Comptroller may give subsequent directions if they see fit e.g. ask for full translation)

Question 234

How may a third party find out about post-grant amendment?

Answer 234

Request to amend is posted in OJ

Question 235

Can you amend an EP(GB) post-grant at the EPO?

Answer 235

• Yes, can perform central post grant amendment under Art 105a
• This may be more cost-effective

Question 235

Can you amend an EP(GB) post-grant at the EPO?

Answer 235

• Yes, can perform central post grant amendment under Art 105a
• This may be more cost-effective

Question 236

Are post-grant amendments generally allowed?

Answer 236

• Yes, whilst discretionary, amendment will generally be allowed to echo EPO position that amendment should be allowed if it enables a patent to persist in a restricted form

Question 237

When is post-grant amendment most often used?

Answer 237

• New art is cited against a corresponding case; or
• An infringer/third party cites art against a patent and the patentee wants to strengthen their patent prior to bringing infringement action likely to result in a countering revocation action*
• *NB in this case, the infringer may infringe the patent to different extents between publication → grant vs after grant, since s27 amendments are only retroactive to the grant date

Question 238

When and how can a patent be restored after failure to pay a renewal fee?

Answer 238

• When: Before the end of 13 calendar months from the end of the 6 month grace period
• How: Form + fee; evidence that failure was unintentional (if not supplied, Comptroller will specify a period to provide it)

Question 239

Who may apply to restore a patent?

Answer 239

• Proprietor;
• a person who would otherwise be the proprietor; or
• with Comptroller’s permission, one of several joint proprietors

Question 240

If request for restoration for missed renewal fee is accepted, when is the patent restored?

Answer 240

• Upton filing of form and payment of fee (and additional fee if failure to pay was in grace period)
• Time limit for these actions: typically 2 months

Question 241

Can restoration be conditional?

Answer 241

• Yes - e.g. on sorting out registration by a new proprietor or securing rights of third parties

Question 242

What are the possible actions if the Comprtoller issues a negative decision on restoration following a missed renewal?

Answer 242

• Can request hearing within one month of notice (otherwise patent is lost)

Question 243

Can SPCs be restored?

Answer 243

No

Question 244

What should always be considered in the exam when advising on restoration?

Answer 244

third party rights accruing

Question 245

What are third party rights between end of 6m grace period and publication of application for restoration?

Answer 245

• If, after the grace period has expired and before the notice of application to restore was published, an otherwise infringing act or serious and effective preparation to do so is begun in good faith by a third party, they may continue to do so
• “continue” does not allow for significant expansion or divergence from original act

Question 246

Can a person allowed to work the invention between grace period and pub. of application extend this right to others?

Answer 246

• They can allow partners within their business to have third party rights; BUT
• They cannot assign or bequeath the third party rights to another unless it is with part of the business itself

Question 247

When do third party rights between end of 6m grace period and pub. of application for restoration NOT accrue?

Answer 247

• If the act was a continuation or repetition of an earlier infringement

Question 248

In view of third party rights, what should you advise a client with a lapsed patent following missed renewal?

Answer 248

Request restoration ASAP to prevent third party rights accruing

Question 249

Can a proprietor offer to surrender a patent?

Answer 249

Yes - at any time

Question 250

Can a third party oppose the surrender of a patent?

Answer 250

Yes

Question 251

How can a proprietor request surrender of a patent?

Answer 251

• File form and provide:
  
  • Statement that no pending action for revocation or infringement (e.g. likely to question validity, which can result in retroactive loss of patent); or
  • Where an action is pending, full details of the action

Question 252

If a patent is surrendered, from when does this have effect?

Answer 252

• The date of notification of surrender in the OK
• NB you cannot sue afterwards for prior infringement

Question 253

An assignment or mortgage of a patent right must be signed on behalf of…?

Answer 253

The assignor or mortgagor

Question 254

If the proprietor is overseas, what is required to transfer rights of a patent?

Answer 254

A UK representative

Question 255

When should transactions be entered into the register?

Answer 255

• Within 6 months; or
• As soon as practicably possible

Question 256

Can an assignment, share or an exclusive license of a patent confer the right to bring infringement proceedings for earlier acts?

Answer 256

Yes

Question 257

Is consideration required in an assignment?

Answer 257

No, unless assignment includes any other terms

Question 258

What are the consequences of not registering an assignment/exclusive license of a patent?

Answer 258

• Costs of expenses for infringement proceedings will not be awarded to the assignees or exclusive licensees

Question 259

Is a signature required to assign a patent?

Answer 259

Yes - personal ones require a witness, corporate ones require a seal

Question 260

How can public obtain certified/uncertified copies of register entries of documents?

Answer 260

• Form and fee
• NB “certified” means by the Comptroller with the UKIPO seal

Question 261

How is a transaction (e.g. assignment) registered?

Answer 261

• Form + fee
• evidence establishing the transaction (at least grantor of transaction’s signature)

Question 262

Where must address for service be?

Answer 262

• UK, EEA or Channel Islands

Question 263

How is a correction in the Register rectified?

Answer 263

• Request for correction relating to registration must be made in writing, and may be made by anyone
• Sufficient information must be provided to identify the error and the correction
• Comptroller may require an explanation if they have doubts

Question 264

What must an entry in the Register include?

Answer 264

• Name and address of applicant, and the address for service;
• name and address of the inventor (can be omitted if requested)
• title, filing date, application no, date of publication; and
• where claiming priority, the date, application no, and country of each priority document

Question 265

How is a correction of name or address (due to error or change in circumstance) done?

Answer 265

• Anyone can request (in writing) correction of their name, their address or their address for service;
• Proof may be required if the Comptroller has doubts

Question 266

How long is the wait for any document filed at the UKIPO to be put on the register?

Answer 266

14 days

Question 267

Does UKIPO maintain register for pending EP(GB) cases?

Answer 267

No, so assignments of such cases must use EPO register

Question 268

Can you register an assignment/license of a PCT application?

Answer 268

• The PCT does not have a register as such, so a license cannot be registered;
• However, assignments and licenses can be notified to the IB during the international phase

Question 269

What is the time limit for assigning a EP patent?

Answer 269

• End of opposition period (9m from grant)
• BUT cannot assign if opposition proceedings are pending

Question 270

How do you register yourself as an agent for a new client’s applicaiton?

Answer 270

• In writing; or
• Using form if the agent is appointed by a person already in proceedings

Question 271

If no address for service is provided for a new application (but applicant or representative is still contactable) what is the consequence?

Answer 271

• Comptroller allows two months to provide address
• Two month extension of this period possible
• Otherwise application is deemed withdrawn

Question 272

Is an unregistered transaction enforceable against a subsequent bona fide transaction conducted in good faith by a later party?

Answer 272

No

Question 273

When is a transaction invalid?

Answer 273

If it is not done with the correct owner. If incorrect, advise correction by the actual owner then re-assign.

Question 274

When does a later transaction or event have priority over an earlier transaction?

Answer 274

• If the earlier transaction or event was not registered; or
• If notification was not given to the Comptroller (if the transaction or event occurred before publication); and
• In either case, the later (subsequent) transacting party did not know about the earlier transaction

Question 275

When is the effective date of registration of a transaction?

Answer 275

The date of the application to register

Question 276

What is rectification of the register?

Answer 276

A court order (on behalf of an aggreived party) for Comptroller to rectify register. Court can decide what needs rectifying

Question 277

Where is an application for rectification of the register made?

Answer 277

Patents court, with copies send to other parties and the Comptroller

Question 278

What is the default agreement for co-ownership?

Answer 278

• Equal, undivided share
• Each party is entitled to work the invention independently without it being classed as infringing each others’ rights (subject to agreement to the contrary)

Question 279

Co-owners of patents and applications must agree in order to…?

Answer 279

• Amend the patent (ore request amendment)
• Apply to revoke the patent
• License, assign or mortgage

NB - this can be altered by an agreement

Question 280

Would a third party supplying a co-owner with essential means to work the patent be classed as a secondary infringer?

Answer 280

No

Question 281

Can one co-owner of a patent sue for infringement without asking permission from the others?

Answer 281

• Yes
• However - the other parties are automatically brought into these proceedings - they are only liable for costs if they take an active part in them

Question 282

What happens to patent rights upon death or dissolution of a co-owner?

Answer 282

• The property passes to their successor in title
• It does not aggregate with the surviving co-owners

Question 283

For a capital investor, why might co-ownership be unsuitable?

Answer 283

• Does not allow them to freely deal in the patent
• Consider an explicit agreement allowing the investor to freely deal in the patent, or have part-ownership of the company that owns the patent

Question 284

What might be advisable for a co-owner with no interest in exploiting the patent?

Answer 284

Agree to allow the other parties to deal with the application without their further consent

Question 285

What is a possible solution for joint ownership arising from an employee moving jobs whilst developing an invention (resulting in two employers being joint-applicants)?

Answer 285

• Reach an agreement to allow free dealing in the patent by one or more of the parties;
• assignment; or
• attempt to get application under s8 (entitlement) or s72 (revocation)

Question 286

If an employee improves upon an invention made earlier with a previous employer, what would be advisable?

Answer 286

• Obtain patent
• Cross-license with previous employer to avoid infringement

Question 287

Under s37, who may initiate proceedings to a right to a patent after grant?

Answer 287

Anyone having or claiming a proprietary interest

Question 288

Under s37, after grant, anyone having or claiming a proprietary interest in a patent may ask the Comptroller…?

Answer 288

• Who is/are the true proprietor(s) of the patent
• Should the patent have been granted to the grantee(s)
• Should any right be granted or transferred to other person(s)

Question 289

Under s37 entitlement proceedings, the Comptroller may issue an order (e.g. a transfer) to a person and they must comply by when?

Answer 289

• Within 14 days
• If not, the claimant may apply to the Comptroller to do it themselves

Question 290

Following s37 entitlement proceedings (after grant), where the result was revocation due to ownership by an incorrect grantee, what can the claimant do?

Answer 290

Apply for a patent in:

• the whole matter of the spec if revocation was unconditional; or
• whatever matter was excluded if a revocation was conditional;

Within 3 months from the decision or end of appeal.

The new application will keep the same filing date.

Question 291

When is a transfer of a patent under s37 entitlement proceedings not actionable?

Answer 291

• If more than 2 years after grant
• UNLESS one of the grantees knew they were not entitled at the time of grant

Question 292

What is the difference between s37 and s8 entitlement proceedings?

Answer 292

• s8 - before grant; s37 - after grant with 2 year window unless the proprietor knew they weren’t entitled at the time of grant
• s8 - anyone can initiate proceedings; s37 - anyone with a proprietary interest may initiate proceedings
• s8 is for GB patent applications only; s37 is for GB and EP(GB) patents

Question 293

Following s37 entitlement proceedings (after grant), are licenses considered to be issued by the updated proprietors?

Answer 293

• Yes
• UNLESS the transfer is to entirely new parties (since in this case there is no continuity of licensors, and thus no continuity of licences)

Question 294

After a transfer of ownership of a patent to a new party following s37 proceedings, or following revocation and the filing of a new application by the new party, what happens to rights of old proprietors/existing licensees?

Answer 294

• Old proprietors and licensees are entitled to a license to continue working the invention, or to start if serious preparations had been made;
• if they were acting in good faith in the UK
• must request a license within 2 months of order to transfer

Question 295

When does an invention belonging to an employee belong to their employer?

Answer 295

a) it was made in the course of normal duties of the employee OR in the course of additional specifically assigned duties, AND an invention might reasonably be expected to arise from them; or
b) it was made in the course of normal duties and implicit in these duties is a special obligation to further the interests of the employer;

Any other invention belongs to the employee.

Question 296

If an invention belongs to an employee, what happens to overlapping rights?

Answer 296

If an invention belongs to an employee;

• a patent can be applied for; and
• the invention can be worked

without infringing any copyright or design right that may belong to the employer as a consequence of the employee making the invention

NB - no immunity for registered designs, but registered designs exclude any design dictated by technical function, so should not overlap

Question 297

To which employees does s39 apply (right to employees inventions)?

Answer 297

• Employees normally resident in UK; and
• Normally employed in UK

Question 298

Does s39 override agreements between an employee and employer?

Answer 298

In principle, yes since an agreement should not diminish employee’s rights

Question 299

Can s39 result in joint ownership between an employee and employer?

Answer 299

No

Question 300

Who has the burden of proof to show that an employer/employee has rights in an invention?

Answer 300

Employer, as default ownership is employee (inventor)

Question 301

Does “normal duties” in s39 preclude employees WFH, or outside normal working hours, or using their own equipment?

Answer 301

No - Prosyscor v Netsweeper [2019]

Question 302

Is a person who merely assists or advises the inventor a co-inventor?

Answer 302

No

Question 303

For non-employee inventors (e.g. contractors, PhD students, shareholders), what is advisable?

Answer 303

• Check exact employment status
• Check whether there is a contract or funding/grant agreement that deals with ownership- request a copy to inspect it. If not, draw one up ASAP with clear IP ownership clause

Question 304

When can an employee apply for compensation? Can this period be extended?

Answer 304

• While patent is in force,
• within 1 year of lapse; or
• for a lapsed patent that has failed to be restored - the later of 1 year from lapse of 6 months from refusal to restore

This can be extended at Comptroller’s discretion under R108(1)

Question 305

How can an employee find out when a patent lapses?

Answer 305

• File a caveat (form + fee)

Question 306

What are the conditions under which an employee may be awarded compensation for a granted patent belonging to the EMPLOYER?

Answer 306

• A patent has been granted for an invention made by the employee and beloning to the employer; and
• the invention and/or patent is of outstanding benefit to the employer (factoring in the size/nature of the company); and so
• It is just that the employer compensates the employee

Question 307

What are the conditions under which an employee may be awarded compensation for a granted patent belonging to the EMPLOYEE?

Answer 307

• A patent has been granted for an invention made by and belonging to the employee; and
• it is 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; and so
• It is just that the employer (further) compensates the employee

NB - this overrides any contract or agreement relating to the invention

Question 308

When can an employee not be awarded compensation under s39?

Answer 308

When the employee is in a trade union that has negotiated a pay settlement regarding their invention

Question 309

Define “outstanding benefit” from s39 (employee compensation)?

Answer 309

• Not merely substantial, but out of the ordinary
• Future benefit is not included, but foreign rights can be taken into account
• Must factor in contributions of adverts, other features etc in sales
• The benefit is the actual, not theoretical, benefit
• Onus is on the applicant for compensation (the employee) to prove it is outstanding
• For an undertaking formed of a groups or divisions, its effective size should at least encompass the extent of the groups alleged to have benefitted from the invention, and reflect the economic realities of the invention
• An employer may be a subsidiary group, and the outstanding benefit is assessed relative to the subsidiary - Shanks v Uniliver [2019]

Question 310

Define “inadequate” benefit to the employee (patent belonging to employee - s39)?

Answer 310

• When benefit to employer diverges significantly from that understood at the time the employee → employer patent agreement was made

Question 311

Other factors that contribute to it being “just” for the Comptroller to award employee compensation under s39?

Answer 311

• If the employer played dirty (equity requires clean hands); or
• Where the balance of power forced an unjust compensation level

Question 312

The amount of employee compensation should be…? Whilst taking into account…?

Answer 312

A fair share of the benefit to the employer from the invention, the patent/application and/or the assignment of, or any rights in, the invention or the patent/application whilst taking into account:

• The employee’s duties and existing pay
• The effort and skill in inventing
• Any co-inventor contribution (esp other employees) and
• the employer’s contribution

Question 313

Employee compensation may be paid as…?

Answer 313

• A lump sum; or
• periodic payments

Question 314

What terms in a contract relating to inventions made by an employee are unenforceable?

Answer 314

• Any term diminishing the employee’s rights
• This does NOT extend to any duty of confidentiality (e.g. a MOD inventor)

Question 315

What type of employees is s39-42 limited to?

Answer 315

• Those mainly employed in the UK (otherwise consult overseas associated);
• If unclear where mainly employed, then if they are attached to a UK place of business.

Question 316

Can an employee claim compensation under s39-42 for the benefit to the employer ensuing from overseas patents and other protections (e.g. SPCs) arising from the invention?

Answer 316

Yes

Question 317

Does the calculated benefit (money or money’s worth) extend beyond the period that the patent is in force?

Answer 317

No

Question 318

Can employee compensation be pursued by an employee’s inheritors?

Answer 318

Yes

Question 319

How is a license of right registered?

Answer 319

After grant:

• Apply using form
• Declare that no registered agreements exists that preclude licensing of right
• Comptroller will inform any current right holders of the change and ensure there are no contractual obligations prohibiting licencing (and advertise in OJ)

Question 320

What are the consequences of registering a license as of right?

Answer 320

• Any person is entitled to a license on agreed terms, or if no agreement, on terms of Comptroller
• Comptroller may exchange current license with licenses of right (if these have more favourable terms)
• Any infringer who take a license may then only pay damages up to 2x a retrospective license - avoids injunction (this can occur at any time during proceedings w/o the infringer admitting liability; exception = importation from outside EEA)
• Renewal fee is halved after registration

Question 321

A licensee of right may (unless license expressly says otherwise) request the proprietor to defend against infringement. If the proprietor does not, what can be done and by when?

Answer 321

• After 2 months from such a request, the licensee can act themselves; and
• the proprietor is drawn in as a co-claimant that is not liable to costs unless they actively participate

Question 322

When must license of right be registered to get renewal fee reduction?

Answer 322

• Up to and including the renewal date (i.e. anniversary of filing)
• But in practice - at least 10 days before fee is due

Question 323

How can a proprietor cancel a license of right?

Answer 323

• Form
• Pay balance of all discounted renewal fees
• All licensees must consent to cancellation

Question 324

How and when can a third party cancel a license of right?

Answer 324

• Form
• Supporting material showing that they have existing agreement that precludes licenses of right
• Within 2 months of entry of license of right

Question 325

If a license of right is cancelled by a third party, does the proprietor still have to balance all discounted renewal fees?

Answer 325

Yes

Question 326

If a license of right is cancelled, are the proprietor’s rights and liabilities as if the entry was never made?

Answer 326

Yes

Question 327

Can an application for cancellation of license of right be opposed?

Answer 327

Yes - within 2 months (e.g. by non-licensees such as potential infringer, or by the proprietor themselves if applied for by a third party)

Question 328

When does a person directly infringe a patent claiming a product (s60(1))?

Answer 328

A person infringes a patent, if, while it is in force, they do any of the following in the UK without the proprietor’s consent:

• Make
• Offer to dispose of
• Dispose of
• Use
• Import; or
• Keep the product

*MODUIK

Question 329

When does a person directly infringe a patent claiming a process (s60(1))?

Answer 329

A person infringes a patent to a process, if, while it is in force, they do any of the following in the UK without the proprietor’s consent:

• Use it; or
• Offer it for use

*UO

…in the UK when it is known or would be obvious that it would infringe to do so; or

• Offer to dispose
• Dispose
• Use
• Import; or
• Keep…

*ODUIK

…any product obtained directly by the process.

Question 330

When does a person indirectly infringe a patent (s60(2))?

Answer 330

If they:

• Supply; or
• Offer to supply
• In the UK
• an Unauthorised party 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

SO-UK-UMEE-KOSFI-UK

Question 331

What are the exemptions to infringement?

Answer 331

• Private, non-commercial acts
• Experimental purposes
• A medicine prepared in a pharmacy in response to an individual’s prescription
• Use for ship/aircraft/vehicle temporarily in UK waters/territory/airspace
• Certain exempt aircraft lawfully in UK and their parts and accessories
• Farm use: propagating the product of a harvest on on holding
• Farm use: breeding livestock (for farmer’s agricultural activity but NOT for commercial reproductive activity)
• Human and vet health trials for market authorisation

Question 332

Do exemptions to infringement for private non-commercial acts, experimental purposes, and medicine prepared in pharmacy in response to a person’s prescription excuse acts of indirect infringement s60(2)?

Answer 332

• No
• Except persons supplying the crown or prior inventors; or
• pre-restoration/reinstatement rights holders

Question 333

When does a person supplying/offering to supply means relating to an essential element of an invention not indirectly infringe (s60(3))?

Answer 333

• If the means is a staple commercial product; and
• is not used to induce infringement under s60(1)

Question 334

Where must ships/aircraft be registered to gain temporary entry exemption to infringement?

Answer 334

Outside the UK

Question 335

Under what circumstances does the onus of proof shift from the patent owner to the alleged infringer?

Answer 335

• In the case of a process producing a new product, where the existence of the product causes a presumption of infringement

Question 336

When does a product lose its identity as a direct product of a patented process?

Answer 336

When a subsequent process has materially altered the testable property such that it loses its identity as a direct product

Question 337

What 3 things are considered as patented products?

Answer 337

1. a patented product;
2. a direct result of a patented process; or
3. a product to which a relevant patented process has been applied

Question 338

Is disposal equivalent to selling?

Answer 338

No - it is broader e.g. encompasses giving a product away in a promotion or as a sample

Question 339

Is listing or stocking a product an offer to dispose?

Answer 339

• No - it is an invitation to treat i.e. willingness to sell if a reasonable price offered, so falls outside of scope of s60(1)
• Injunction could be obtained to prevent actual sale
• Could advise actually purchasing the item to provide evidence of infringement

Question 340

When does infringement of importation not apply?

Answer 340

• When there has been an exhaustion of rights (i.e. the imported product has already been sold with the proprietor’s consent in another EEA country)

Question 341

What is the contributory (indirect) infringement test?

Answer 341

1. Are the supply and recipient in the UK? (double territorial requirement); or
2. Is the offer to supply in the UK (offer is unilateral) to an unauthorised party?
3. Do the means relate to an essential element of the invention?
4. Is it known or obvious that the means are suitable for and are intended for putting the invention into effect in the UK?

If satisfied, contributory infringement may have occurred, UNLESS…

5. Means are a staple commercial product;

UNLESS…

6. They are used to induce infringement

SO-UK-UMEE- KOSFI-UK..SCP/I

Question 342

Is providing someone with info about a product an offer to supply?

Answer 342

No - must have flavour of negotiation

Question 343

Does supply of coffee pods, ink toner etc for use in patented products constitute contributory infringement?

Answer 343

• No
• Items may be considered means relating to an essential element;
• HOWEVER - purchasers of coffee machines/printers are NOT unauthorised parties as they have implied license to use machines as they wish
• Nestec v Duralit [2013] - Nespresso Pods

Question 344

Define staple commercial product?

Answer 344

Has at least one other use

Question 345

Can experiments with a commercial purpose in terms of improving a business fall under an exemption to infringement?

Answer 345

• Yes, if they have a scientific or technical goal;
• BUT experiments for sale or marketing (e.g. comparison experiments) are not exempt

Question 346

Can vehicles which are not registered anywhere meet the temporary entry exclusion?

Answer 346

No

Question 347

What is the territorial scope of s60 (infringement)?

Answer 347

• UK, Isle of Man and territorial waters;
• NOT channel islands

Question 348

For importation, what are the key considerations in working out who has potentially infringed?

Answer 348

• Where the transfer of title of ownership occurred - overseas or in the UK?
• Person paying the transport costs is most likely to be responsible at point of entry into the UK, and is therefore the infringer.
• However, other parties may be joint torfeasors

Question 349

When does double territorial requirement apply?

Answer 349

• For s60(2) - indirect infringement
• Both supply/offer to supply AND receipt must be in the UK
• Supply of essential means for export is therefore NOT covered by s60(2) - check whether recipient is overseas

Question 350

What does it mean if an offer to supply under s60(2) is unilateral?

Answer 350

• No specific recipient in the UK needs to be identified in order for the offer to be infringing
• The offer (e.g. an advert targeting the UK marker) can therefore be unilateral and an injunction to prevent subsequent supply from happening can be obtained

Question 351

Can consent and/or an implied license from a proprietor be used as a defence to infringement?

Answer 351

Yes

Question 352

What can implied consent lead to?

Answer 352

• An estoppel (i.e. preventing claims to a lack of consent)
• e.g. due to undue delay in bringing actions

Question 353

Who has burden of proof in establishing implied consent/license?

Answer 353

Defendant

Question 354

When does an implied license to use or resell a product arise?

Answer 354

During an ordinary sale of a product

Question 355

What is the test for deciding whether the repair or remanufacture consists of making the product?

Answer 355

1. Is the part replaced a subsidiary part?
2. Does the replaced part have significantly lower life expectancy than the retained part?
3. Does the replaced part include any aspect of the inventive concept/core element of the patent?

Question 356

If your client is concerned with infringing unspecified patent(s), what might you suggest?

Answer 356

FTO search

Question 357

If your client is concerned with infringing a specific patent, what might you suggest?

Answer 357

Obtain declaration of non-infringement

Question 358

What remedies may be requested during civil proceedings brought by a patent proprietor?

Answer 358

• Injunction or interdict restraining the defendant from committing the infringing act
• Order to deliver up or destroy any product that infringes
• Damages (recover losses to patentee)
• Account of profits (recover benefits from infringer) and/or
• a declaration of validity and infringement
• (costs)

II-DUD-DAD-C

Question 359

Can a patent proprietor be awarded damages and an account of profits?

Answer 359

No - the two are mutually exclusive

Question 360

If the parties allow the Comptroller to decide on infringement (saving court costs), what remedies are available?

Answer 360

• Damages; or
• Declaration of infringement and validity

Question 361

What does the Limitations Act state re infringement proceedings?

Answer 361

• One can only claim damages up to 6 years ago in England, Wales and NI; or
• up to 5 years ago in Scotland

Question 362

What are some examples of amicable solutions to infringement proceedings?

Answer 362

• Offer a license (possibly on preferable terms if infringer might bring revocation proceedings)
• Offer to sell the relevant product or provide the relevant service
• Cross-license in the event the infringer has refined your invention or developed a complimentary invention

Question 363

How are proceedings expedited in the UK to achieve a swift grant?

Answer 363

• Request combined search and examination by filing two forms simultaneously;
• Request accelerated prosecution and give a reason e.g. infringement; and
• Request early publication to obtain s69 rights (conferred by pub) ASAP

Question 364

How are proceedings expedited at the EPO to achieve a swift grant?

Answer 364

• Use PACE (accelerated prosecution);
• Request early publication;
• Pay exam and designation fees early and waive right to confirm proceeding with with examination;
• Prepare translations early and send to EPO and desired designated states (some states only confer protection once claims are published in their own language)

Question 365

How are PCT proceedings expedited?

Answer 365

• Request early publication;
• Request early entry into national phases

Question 366

If you send a copy of an application to an infringer to ensure no defence of ignorance, what should be noted to the client?

Answer 366

• Risks inviting observations before grant; or
• Opposition/revocation proceedings after grant

Question 367

What else might you advise to further accelerate exam process in EP and UK to obtain quick grant to enforce rights against an infringer?

Answer 367

• Amend application to a narrow claim directed towards the particular infringement;
• file a divisional application to the remaining broader material

Question 368

For small clients/infringements under £10k, what may be advisable?

Answer 368

Use small claims track in IPEC to save costs

Question 369

What is the test for an interim injunction?

Answer 369

1. Is there a serious case to be tried?
2. Can the potential harm not be adequately compensated for by eventual damages?*
3. Is there a balance of convenience?**

SC-PHACD-BoC

• *if you have licensee, unlikely to be able to get interim injunction as model exists for calculating damages
• *damages are unlikely to be adequate if your exclusive market position will be irreparably damaged by entry of a competitor
• **court takes into account other relevant details e.g. avoiding imposition of possible hardship such as bankruptcy by granting/non-granting of interim injunction

Question 370

What may be required if an interim injunction is granted?

Answer 370

• A financial cross-undertaking to compensate the other side if the injunction was wrongly granted
• NB - ability to pay may be a factor in the balance of convenience assessment

Question 371

Where evidence and funds are likely to be ‘misplaced’ by the infringer, what further relief may be available?

Answer 371

• Search order (Anton Piller order) to search for evidence
• Freezing injunction to freeze assets
• Only used in exceptional cases

Question 372

Can an infringer view an unpublished patent?

Answer 372

Yes

Question 373

Other than patent rights, what else should you consider if someone is passing off goods of your client as their own?

Answer 373

• Other rights e.g. TMs, designs, copyright
• Possible to infringe a registered design right by exporting (not available for patents)

Question 374

If client is infringer, what should you consider?

Answer 374

1. Identify the parties e.g. all possible infringers, direct and indirect
2. Amicable/pragmatic solutions - in return for not bringing infringement proceedings
3. Defensive actions - check patent in force; note alleged infringer can view unpub patent; consider request for declaration of non-infringement from proprietor then from Comptroller/court; consider settlement; offer to indemnify commercial clients etc if situ threatens business - could be costly if you lose
4. Offensive actions - prior art search against patent, file observations (NB patentee has more scope to amend before grant), revocation/opposition proceedings after grant
5. Risk assessment - consider what amendments that patentee could make which would still read onto your client’s activities; can patentee affect any current/future activities in other jurisdictions?

Question 375

Why might telling your (infringing) client to offer a settlement be advisable?

Answer 375

• Save court costs (if they’re in a weak position); and
• If a claimant recovers less than what was offered prior to proceedings, then they pay full costs

Question 376

When are damages/account of profits NOT awarded against a defendant?

Answer 376

• When they can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement
• “Innocent infringer”

Question 377

Is the word “patented” on a product enough to confer awareness to an otherwise innocent infringer?

Answer 377

• No
• UNLESS - in conjunction with patent number or weblink

Question 378

Does the burden of proof for innocent infringement change depending on the size of the company?

Answer 378

• Yes - for larger companies, there is often a presumption that it is reasonable for them to have been aware
• e.g. if they have in-house patent attorneys

Question 379

Can damages be awarded for infringement during a renewal fee grace period?

Answer 379

• Yes, but they are discretionary

Question 380

If a patent has been amended to make a claim valid prior to enforcement, what are the consequences for damages?

Answer 380

Damages are awarded based on the following factors:

• Whether the defendant knew or had reasonable grounds to know that they were infringing;
• Whether the patent as published was prepared in good faith (e.g. didn’t ignore art); and
• whether the current proceedings are brought in good faith
• whether the infringement fell within the scope of the claim in each form (pre- and post- amendment)

Question 381

What is advisable if a client wants to enforce a patent that may be invalid?

Answer 381

• Amend ASAP

Question 382

How does the existence of a license of right limit damages?

Answer 382

• Limits damages to 2x retrospective license fee

Question 383

How are costs limited by registration of transactions?

Answer 383

• Cannot claim costs/expenses for proceedings relating to infringements occurring prior to registration of a transaction IF
• the registration was more than 6 months after the transaction or ASAP otherwise

Question 384

If validify is contested during infringement proceedings and the patent is found to be only partially valid, what will be taken into account when awarding damages?

Answer 384

• Whether the infringer knew or would reasonably suspect they were infringing
• Whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant art); and
• whether infringement proceedings were brought in good faith (did the proprietor believe in the validity of the patent themselves?)

Question 385

If validify is contested during infringement proceedings and the patent is found to be only partially valid, what will be taken into account when awarding damages?

Answer 385

• Whether the infringer knew or would reasonably suspect they were infringing
• Whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant art); and
• whether infringement proceedings were brought in good faith (did the proprietor believe in the validity of the patent themselves?)

Question 386

Can damages be conditional on amending under s75 to recover partial validity?

Answer 386

Yes

Question 387

Define prior use?

Answer 387

A person in the UK who, before the priority date

• in good faith did an act that would infringe the patent had it been in force, or
• in good faith made serious and effective preparations to do so

may continue to do so.. but CANNOT license others to do so

Question 388

If prior use occurred in the course of business, what happens to the right to continue?

Answer 388

• It may be used to authorise partners in the business; and
• it may be assigned or bequeathed as part of the business

Question 389

Can the resulting products of prior use rights be dealt in freely?

Answer 389

Yes

Question 390

Does “continuing” prior user rights encompass significant expansion or diversion from the original otherwise infringing act?

Answer 390

No

Question 391

If your client has prior user rights, what should you consider?

Answer 391

• Whether their prior use could also act as prior art (i.e. if not secret prior use)
• Consider whether any preparations are ongoing - a pause in or shelving of preparations may suggest they are no longer serious/effective

Question 392

If during court/Comptroller proceedings, a contested patent is found to be wholly or partially valid, what (other than remedies) can be awarded?

Answer 392

A certificate of contested validity

Question 393

What are the consequences if someone contests a patent with an existing certificate of contested validity?

Answer 393

• If validity is unsuccessfully contested, the proprietor is entitled to costs from the other party on an indemnity basis instead of a standard basis
• i.e. the reasonable legal costs of the proprietor must be paid

Question 394

Can a co-owner initiate proceedings for infringement?

Answer 394

• Yes
• but the other co-owner must be made party to proceedings
• they aren’t liable for costs unless they actively take part

Question 395

Can a holder of an exclusive license bring infringement proceedings?

Answer 395

• Yes - they have the same rights as the proprietor to bring proceedings for any act that occurs after the date of the license

Question 396

Does damages/relief take account of an exclusive licensee’s losses?

Answer 396

Yes

Question 397

Is a proprietor party to proceedings if an exclusive licensee brings proceedings?

Answer 397

Yes, but they are not liable for costs unless they actively take part

Question 398

Can a sole licensee bring infringement proceedings?

Answer 398

No - they cannot bring proceedings by themselves w/o proprietor

Question 399

What is the effect of non-registration of a transaction on subsequent infringement proceedings?

Answer 399

Where a transaction occurred and the patent is then infringed before the transaction is registered:

• Costs or expenses relating to the proceedings will not be awarded
• UNLESS The transaction was registered within 6 months or if it can be proved it was registered as soon as practicable thereafter

Question 400

What are the conditions for bringing infringement against an act occurring between publication and grant that would infringe the (eventual) patent?

Answer 400

• Proceedings must begin after the patent has granted; and
• the infringing act must infringe the claims as originally published as well as in the final granted patent

Question 401

What is taken into account when assessing damages for infringing acts between publication and grant?

Answer 401

• Whether it would have been reasonable to expect that infringement would eventually occur given the published contents of the application

Question 402

What is the relevant publication date for a PCT(GB) or EP(GB) patent originally published in another language, to initiate rights conferred by publication?

Answer 402

• The publication date in English
• For PCT(GB) - usually NPE publication date
• For EP(GB) - when translated claims are published - this is usually at grant but a certified copy can be published earlier; or
• the date a proprietor sends a translation of such a publication to an infringer

Question 403

From when can damages be awarded for infringement between publication and grant prior to publication of an English translation?

Answer 403

When proprietor sends a translation to the infringer

Question 404

When is a communication considered to contain a threat of infringement proceedings?

Answer 404

If its recipient would reasonably understand that:

1. A patent (or published application) exists; and
2. someone intends to bring proceedings (anywhere) in respect of an act done/which would be done in the UK

RRU-PE-IP-UK

Question 405

Under what circumstances is a threat of infringement proceedings actionable?

Answer 405

Actionable by a person aggrieved by the threat; UNLESS:

• the threat is in respect of an act of making or importing a product for disposal, or using a process; or
• the threat is in respect of intending to perform such an act;
• the threat was made to a person who has performed or intends to perform any such act; or
• the threat is not an express threat and is contained in a permitted communication

PA-U-MIPD-UP-I-P-NETPC

Question 406

When is a communication considered a permitted communication?

Answer 406

• The information in it that relates to the threat is for a permitted purpose, and
• That information is necessary for that purpose, and
• the person making the communication reasonably believes it is true

Question 407

What are permitted purposes for sending a permitted communication?

Answer 407

• Giving notice that a patent (or published application) exists;
• Discovering whether, or by whom, a patent or published application has been infringed by an act from s70A(2) i.e. making or importing a product for disposal or using a process (MIPD-UP)
• Giving notice that a person has a right in or under a patent/published app, when a third party’s awareness might be relevant to future proceedings
• The court can treat any purpose as a permitted purpose if it is just to do so

Question 408

What are NOT permitted purposes for sending a communication with a threat?

Answer 408

• Requesting a person ceases commercial activities in relation to a product or process;
• Requesting a person delivers up or destroys a product; or
• Requesting a person gives an undertaking relating to a product or process

CCA-DUD-GA

Question 409

What can necessary information (wrt permitted communications) include?

Answer 409

• Statement that a patent is in force or an application has been filed
• Details of a patent or published application or a right in or under it that are accurate and do not mislead
• Identification of a product or process relating to an alleged infringement relegating to an act from s70A(2) (making or importing a product for disposal, or using a process - MIPD-UP)

Question 410

What remedies can be sought for an actionable threat against the threatener?

Answer 410

• A declaration that the threat was unjustified
• An injunction against continued threats
• Damages in respect of any loss sustained by the aggrieved person as a consequence of the threat

Question 411

What is a defence for a a person who has sent an actionable threat?

Answer 411

• Show that the action for which proceedings were threatened does (or would, if done) constitute an infringement of the patent/published app; or
• Show that despite taking reasonable steps, the threatener failed to identify a person who has committed the relevant act, and notified the recipient of the steps taken before or when making the threat
• (e.g. comm sent to secondary infringer, failed to find primary infringer and you notify secondary infringer of your attempts)

Question 412

Are professional advisors liable to a threats action?

Answer 412

• Not if the adviser is acting on the instructions of the threatener, and identifies the threatener in the communication

Question 413

Who is a professional advisor (wrt threats)?

Answer 413

• Provider of legal, trademark or patent services in a professional capacity, and
• is regulated by one or more regulatory bodies e.g. IPReg

Question 414

Does professional indemnity affect the liability of the person who issued the instructions to make a threat?

Answer 414

No

Question 415

Who is the burden of proof on to show that the professional advisor was acting on behalf of a threatener’s instructions?

Answer 415

The professional advisor

Question 416

Is the threat in terms of the recipient or author’s understanding of what has been sent?

Answer 416

The recipient’s

Question 417

s70A exemptions to actionable threats follow a what/who format…

Answer 417

• WHAT act is alleged (MIPD-UP)
• WHO is threatened (MIPD-UP or someone intending to do those things)

→ In the latter case, the threat can relate to any type of infringement and need not be limited to MIPD-UP e.g. sales can be targeted

Question 418

What advice would you provide to a party aggrieved by a threat?

Answer 418

• Ensure that proof of the threat is available
• Ask client to prepare submission explaining how/why they are an aggrieved party (e.g. loss of business/clients due to circulation of threat)
• Depending on facts, consider the tort of malicious falsehood as an alternative or additional basis for action if s70 threat remedy is not possible

Question 419

Under what conditions can a declaration of non-infringement be ordered from a proprietor by the court?

Answer 419

• A person seeking the declaration has already written to the proprietor requesting such a declaration and giving full particulars of their activities; and
• the proprietor has refused or failed to give acknowledgement

Question 420

Can the Comptroller give a declaration of non-infringement?

Answer 420

• Yes
• NB - this does not bind the court in future infringement proceedings

Question 421

Does a finding of invalidity by the Comptroller in a declaration of non-infringement assessment automatically lead to revocation of a patent?

Answer 421

• No
• This must be brought under s72

Question 422

Who can make an application for revocation of a patent?

Answer 422

any person

Question 423

What are the 5 grounds for revocation of a patent?

Answer 423

1. Lack of patentability (s1-4A - new, inventive, industrially applicable, not excluded)
2. Lack of entitlement to grant of the patent (s37)
3. Insufficiently enabled description (s14(3), 125A(4))
4. Added matter (s76(2)), and
5. An amendment extending protection after grant (s76(3))

Question 424

Under what conditions may an application for revocation for lack of entitlement be made?

Answer 424

• only by those with a proprietory interest through s37; or
• by a declaration to be the entitled party referred by the courts
• must be made within 2 years from grant UNLESS
• It can be shown that the current proprietor knew they were not entitled

Question 425

Where a patent is found to be partially invalid, revocation will occur unless…?

Answer 425

• Suitable amendments are provided (via s75 of EPO central limitation)
• Within a specified period

Question 426

Do revocation proceedings affect the right to challenge validity during parallel infringement proceedings?

Answer 426

No

Question 427

If revocation is refused, can a third party make repeated applications for revocation?

Answer 427

No, UNLESS:

• by leave of court
• by way of appeal; or
• in separate parallel infringement proceedings

Question 428

Can one go to court for revocation proceedings if the Comptroller has yet to make a decision?

Answer 428

Only if:

• The proprietor agrees, or
• The Comptroller certifies that the court is preferable

Question 429

Are clarity and non-unity grounds for revocation?

Answer 429

No

Question 430

Can the Comptroller continue revocation proceedings if the original applicant for revocation drops out?

Answer 430

Yes, if it is considered to be in the public interest

Question 431

What are the different consequences for revocation and surrender under s29?

Answer 431

• Revocation is retroactive, surrender is not
• NB licensees may sue for refund of licences after revocation

Question 432

If you believe a patent may be partially invalid, what should you note/consider?

Answer 432

• Consider amending under s27 before asserting the patent and inviting a revocation action, as partial validity can affect damages (if you don’t amend, this might be interpreted as bad faith)
• However, balance this against need to act quickly e.g. when seeking an interim injunction or to avoid estoppel

Question 433

When can the Comptroller revoke a patent after grant?

Answer 433

• When they determine that a prior art document denies novelty by s2(3)
• Proprietor can object and amend if possible, subject to added matter

Question 434

When can the Comptroller revoke a patent following the issuance of an infringement/validity opinion under s74A?

Answer 434

• When they find the patent to lack novelty or an inventive step
• After the period for requesting a review has elapsed, or
• after a subsequent appeal has occurred
• NB the proprietor can object and amend if possible, subject to added matter

Question 435

When an EP(GB) notice of grant is given, what happens to a corresponding GB patent? (double patenting)

Answer 435

• It will be revoked by the Comptroller after the opposition period/proceedings UNLESS
• the proprietor can show them to have different claimed matter; or
• one is amended to achieve this

Question 436

When is a later granted GB patent revoked due to double patenting vis-a-vis an EP(GB patent)?

Answer 436

• After grant, UNLESS
• an application to surrender the EP(GB) patent is received before the date of grant of the GB patent

Question 437

Can the Comptroller refuse grant of a GB patent on grounds of double patenting with EP(GB)?

Answer 437

No - but failure to differentiate the applications will result in subsequent revocation

Question 438

Can you argue/amend to overcome double patenting objections?

Answer 438

Yes

Question 439

Under which 5 types of proceedings may validity be put at issue?

Answer 439

• s61 or s69 - defence for infringing acts in a patent/from publication
• s70A - actionable threats
• s71 - declaration of non-infringement
• s72 - revocation
• s58 - disputed Crown use

Question 440

If proceedings against the validity of a patent are currently pending in court, when can separate proceedings which can also assess validity before the Comptroller commence?

Answer 440

Following leave of the court

Question 441

When can estoppel against validity proceedings occur?

Answer 441

• Where the same party has unsuccessfully challenged validity before, either wholly or in considering certain issues; or
• if an agreement to not challenge exists (other than a license agreement) - although this may be considered as an abuse of dominance

Question 442

When may validity proceedings be stayed?

Answer 442

• If there is parallel opposition proceedings at the EPO
• However, a factor against this is if the opposition proceedings would take significantly longer as this would prevent access to revocation in the UK

Question 443

What 7 things can a proprietor request an opinion on from the Comptroller?

Answer 443

1. Whether an act is/would be an infringement
2. Whether a patent falls foul of novelty/inventive step
3. Whether the patent provides a sufficiently enabling disclosure
4. Whether a patent application contains added matter
5. Whether a claim in a granted patent has been broadened
6. Whether a medicines SPC is invalid;
7. Whether a plant SPC is invalid

Question 444

Can opinions re validity/infringement from the Comptroller be given for expired or surrendered patents?

Answer 444

Yes

Question 445

How is an opinion from the Comptroller requested?

Answer 445

• Form + fee
• Statement outlining question, facts and relevant details

Question 446

Under what circumstances will the Comptroller not provide an opinion?

Answer 446

• Circumstances are excluded by the rules; or
• The Comptroller thinks the request is inappropriate (frivolous or vexatious, or dealt with in other proceedings)

Question 447

Following the issuance of an opinion, who is entitled to a hearing on the matter?

Answer 447

• Only the person requesting the opinion, if the opinion goes against the requester’s interests; and
• only the person requesting it can appeal the opinion

Question 448

Is anyone notified following a request for an opinion?

Answer 448

• Yes - the patentee and registered licensees
• Requests are noted in the register

Question 449

Can others file observations on issues raised in a request for an opinion?

Answer 449

• Yes - anyone can
• within 4 weeks of advertisement in the register

Question 450

Can the patentee/licensee make observations on a request for an opinion following notification of the request?

Answer 450

Yes - within 2 weeks after 4 week period of advertisement in the register

Question 451

Can requests for an opinion be withdrawn?

Answer 451

Yes - in which case no opinion is issued

Question 452

Can revocation proceedings be invoked by the UKIPO following an opinion?

Answer 452

• Yes, but only in clear cut cases; and
• after the patentee has had an opportunity to apply for review of opinion and/or amend the patent

Question 453

Who can apply for a review of an opinion issued by the Comptroller?

Answer 453

• Proprietors; or
• exclusive licensees

Question 454

When is the application for a review of an opinion issued by a Comptroller allowed?

Answer 454

• File form
• When requested within 3 months of issuance of opinion
• If no other proceedings have decided the issue under review

Question 455

What are the grounds for a review of an opinion issued by the Comptroller?

Answer 455

• An opinion wrongly concludes that a patent is wholly or partially invalid;
• an opinion concludes non-infringement based on its construction of the specification

Question 456

Is amendment of a patent during revocation or infringement proceedings always allowed?

Answer 456

No - only at discretion of court/Comptroller

Question 457

Is an amendment during revocation/infringement proceedings retroactive?

Answer 457

Yes - to date of grant

Question 458

Can anyone oppose an amendment during revocation/infringement proceedings?

Answer 458

Yes

Question 459

What are the steps required to amend a patent (s75 - amendment during revocation/infringement proceedings; and s27 - post-grant amendment)?

Answer 459

• Request the amendment in writing
• Identify the proposed amendment; and
• give the reasons for it

Question 460

If a request for an amendment is made to the court, what additional step must be taken?

Answer 460

Notify the Comptroller

Question 461

If not already in revocation or infringement proceedings, what should you advise the client re amendment of granted patent?

Answer 461

• Use more liberal s27; or
• Use EPO central limitation (but this will affect all EP patents)

Question 462

What is the test for added matter?

Answer 462

• Within the limits of what a PSA would have derived
• directly and unambiguously
• using CGK
• and seen objectively and relative to the date of filing
• from the whole document as filed

Question 463

What is the London agreement?

Answer 463

• First case: a state has at least one of DE, FR or GB as an official language and does not require a translation of any EP patent;
• Second case: a state does not have an official EPO language as an official state language, but will not require a translation if the patent if published in one of the EPO official languages by the specified date;
• However, the latter states can also require a translation of the claims in an official language of the state, and
• any state can require a translation of the whole patent in the event of a dispute

Question 464

What is the authentic text for EP applications?

Answer 464

• At the EPO, the text in the language of proceedings; BUT
• for GB domestic purposes, it is the GB translation of an FR or DE text except in revocation proceedings

Question 465

If a translation error has resulted in narrower GB protection than that of the granted EP patent, what can be done?

Answer 465

• A corrected translation can be supplied and published, BUT
• the now wider protection is NOT retroactive and people in good faith who now infringe the wider coverage can continue working the invention

Question 466

When can an EP(GB) application be converted to a UK application?

Answer 466

If the application was NOT received by the EPO within 14 months of priority (e.g. due to PCT RO error), provided that:

• The applicant requests conversion within 3 months from notification of loss (non-extendable) directly with UKIPO and pays application fee and if necessary, translates application and any existing amendments into English within 2 months of filing; or
• Such a request is relayed from another patent office of an EP convention country within 20 months from priority, the applicant pays the application fee and if necessary, translates the application and any existing amendments into English within 4 months

Question 467

When can the court or Comptroller determine jurisdictions as to right to a patent (EP) other than employee/employer disputes?

Answer 467

• if either the applicant has residence or principal place of business in the UK; or
• other party has residence/principal place of business in UK and the applicant does not have res/PoB in any state that is signatory to the Protocol on Recognition; and
• provided the parties have not agreed in writing to submit to the jurisdiction to a different state

Question 468

When can the court or Comptroller determine jurisdictions as to right to a patent (EP) FOR employee/employer disputes?

Answer 468

• 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

Question 469

When are entitlement proceedings under s12 for an EP patent stayed?

Answer 469

If the same issue is already undergoing proceedings abroad (i.e. in a country signed up to EPC Protocol on Recognition), s12 proceedings are stayed until other proceedings conclude

Question 470

Does the UK accept rulings of competent authorities of other EP states?

Answer 470

Yes - UNLESS it is appealed… BUT may not recognise the ruling if:

• It was uncontested because the applicant was not adequately notified; or
• It was in conflict with a parallel decision elsewhere

Question 471

When might a PCT application with a withdrawn/deemed withdrawn GB designation be treated as a valid GB application?

Answer 471

• If the GB designation withdrawal was due to an error by a PCT body, or failure of the RO to forward the application to the IB on time; or
• where a corresponding missed deadline could have been extended under R107 or R108

Question 472

What filing date is a PCT(GB) application given if it is refused a filing date due to an error by a PCT body?

Answer 472

The Comptroller can decide to allow a GB filing with a date as they direct

Question 473

When does the GB national phase begin?

Answer 473

• When the 31 month period expires and (if needed) an English translation is filed with the UKIPO; or
• When there is a request for early entry into the national phase and (if needed) an English translation is filed with the UKIPO;
• AND the national fee is paid (£30 + £12 for any translation)
• Otherwise, the application is considered withdrawn

Question 474

If an amendment is filed during the international phase, and the application is in another language, what must be done on entering the GB phase?

Answer 474

• A translation of the amendment into English must be filed within 3 months from notification of Comptroller
• otherwise the amendment is disregarded

Question 475

When must the national phase be entered in JP and US?

Answer 475

Within 30 months from priority

Question 476

What deadlines are due 2 months after NPE?

Answer 476

1. Filing an exhibition certificate
2. filing designation of inventor
3. payment of search fee (+excess claim fees)
4. payment of examination fee (+excess page fees)

Question 477

For PCT applications, when are rights conferred by publication?

Answer 477

• When application is published in English, or
• when a translation is given to an infringing party

Question 478

Can entry into national phase be delayed?

Answer 478

Yes, by 2 months using R108(2)

Question 479

Is reinstatement possible for applications deemed withdrawn due to unintentional failure to meet requirements of GB NPE?

Answer 479

Yes

Question 480

What is the principal of reversal of the burden of proof?

Answer 480

• If a patented process creates a new product, then production of the same product by an unauthorised party is prima facie evidence of the same process, unless it can be proved to the contrary;
• NB this does not require the other party to reveal commercial secrets if unreasonable to do so (e.g. it may be done confidentially w/o disclosure to the patent proprietor)

Question 481

What happens if a person falsely claims that a product they sell is patented/patent pending?

Answer 481

• Liable for a fine (up to £1000)

Question 482

Following lapse, expiry or revocation of a patent, is a person liable for falsely claiming that a product they sell is patented/patent pending?

Answer 482

• A reasonable period is provided in which to respond to the lapse, expiry or revocation of a patent, without being liable to pay a fine
• Defence? Use of due diligence to avoid the claim (e.g. false marketing done without the person’s consent, or an inability to control another’s sale of existing marked stock after a reasonable period)

Question 483

If a person gifts a product falsely labelled with “patented/patent pending”, are they liable for a fine?

Answer 483

No - only applies to disposal for value

Question 484

What errors can be corrected under s117?

Answer 484

Errors in:

• Translation
• copying
• other clerical errors or mistakes

In a patent specification or any associated documents and forms

NB does NOT apply to names and addresses - use R49(s2)

Question 485

Can a requested correction under s117 be opposed?

Answer 485

Yes

Question 486

Can an erroneous withdrawal of an application be corrected under s117?

Answer 486

• Yes
• NB - Where the application has been published; and
• withdrawal was published;
• →The Comptroller will also publish the request for correction

Question 487

How do you request a correction under s117?

Answer 487

• Request in writing
• clearly specify the correction(s) to be made

Question 488

What is the test for the correction of an error in a patent specification?

Answer 488

• Must be immediately evidence that nothing else could have been intended;
• UNLESS the error is due to corruption during electronic transmission

Question 489

Can the Comptroller correct any irregularities of procedure?

Answer 489

• Yes - under their discretion
• e.g. any length extension of due date where irregularity leading to missed due date was UKIPO’s fault

Question 490

What are the effects on the actions of third parties for an application that is resuscitated following a corrected error of withdrawal?

Answer 490

• Same as for reinstatement
• Actions/serious and effective preparations in good faith - can continue use, authorise their business partners, and assign/bequeath right as part of the business
• Actions in bad faith - continuation/repetition of an infringing act will be treated as infringement
• Therefore, should resuscitate ASAP to prevent third party rights accruing

Question 491

Describe as of right extension to time limits specified by the Comptroller s117B?

Answer 491

• As of right 2 month extension (or prescribed period under s20 - compliance period or an extension thereof for appeal)
• will be granted if applicant requests it in writing within 2 months of expiry of the missed time limit
• No form of fee

Question 492

Does reinstatement apply to errors in s117B process (extension of time limits specified by Comptroller)?

Answer 492

• No, as application is not withdrawn if time limit is set by comptroller (and extension period) is missed, but instead is dormant
• Have to rely on discretionary extension

Question 493

Rule 108 provides for extensions to what deadlines?

Answer 493

• Some statutory deadlines (as opposed to those set by the Comptroller)
• E.g. procedural steps of prosecution e.g. time limits for submitting documents/requests

Question 494

How long is the as of right R108(2) extension?

Answer 494

• 2 months
• Must be requested by end of extended 2 month period
• Form + fee

Question 495

How do you obtain a further discretionary extension R108(3) to the as of right 2 month extension R108(2)?

Answer 495

• Form (+ fee if request is granted)
• Evidence why extension should be granted
• Usually needs to be requested within 2 months of missed due date (i.e. if you foresee you will need more time), but extension may be allowed even after the 2 month deadline to extend has expired
• Usually if you miss the as of right 2 month extension you will not get a discretionary extension

Question 496

When are documents available before publication without the consent of the applicant?

Answer 496

• providing relevant info to EPO
• Sharing info needed for inter-office work sharing schemes to commence prior to publication
• providing bibliographic info about the application
• allowing the Secretary of State to review an application under a secrecy order, BUT
• this only relates to requests under agreed patent office workshare schemes, and the provided info must be kept confidential

Question 497

If a person is notified that they will infringe an as yet unpublished application, what rights do they have?

Answer 497

They can request info/inspect documents as if the application was published

Question 498

If a first unpublished application is replaced by a second application (re-filing), what can be done when the second application publishes?

Answer 498

A person can request to inspect the first application

Question 499

How long after a document is filed can it be inspected?

Answer 499

14 days

Question 500

What happens on closed and interrupted days at the UKIPO?

Answer 500

• If an act is performed on a closed day, the act is deemed to have taken place the following day
• If a deadline falls on a close or interrupted date, it is extended to the next open day

Question 501

When can the Comptroller certify a day as an interrupted day? How can you find out about this?

Answer 501

• When there is an interruption to normal operation at the UKIPO;
• When there is an interruption of postal services in the UK
• Certification will appear in OJ

Question 502

If failure to meet a deadline was due to a delay or failure in a communication service (post, email, courier external to the applicant), what should you advise?

Answer 502

• Request Comptroller extends time limit under R111
• Good practice to use registered post as proof

Question 503

How is the extend of protection defined?

Answer 503

By the claims as they are interpreted by the description and drawings

Question 504

When can one use the contents of the prosecution file to interpret the extent of the invention?

Answer 504

• If they resolve a clear ambiguity; or
• if it would be contrary to public interest for the contents of the file to be ignored
• Actavis v Eli Lilly [2017]

Question 505

What is the test for equivalence in the assessment of extend of protection - Actavis v Eli Lilly [2017]?

Answer 505

1. Does the variant achieve substantially the same result in substantially the same way as the invention (i.e. the inventive concept)?
2. Would it be obvious to the PSA, 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?
3. Would such a reader have concluded that the patentee intended that strict compliance with the literal meaning of the claims was an essential requirement of the invention?

SSR-SSW? O-PD-KSSR-SSW? PISC-LM-ER?

Question 506

What is an SPC?

Answer 506

• A separate right that provides protection for medical and plant protection products that are subject to regulatory approval and may take an appreciable proportion of a patent’s life to complete

Question 507

How do you apply for an SPC?

Answer 507

Apply within the later of 6 months from:

• receiving valid marketing authorisation to put the product on the market; or
• within grant

Application fee and renewal fee due in advance of SPC coming into effect

NB has 6m grace period like patent renewals

Question 508

What is the term of an SPC?

Answer 508

The lesser of:

• 5 years; and
• (the period between date of filing patent and date of product authorisation) minus 5 years

Question 509

Are intervening rights with respect to SPCs possible?

Answer 509

• Yes - if SPC is not granted until after the original patent has expired

Question 510

What are the three positions that can be taken by a defendant in a counter-statement to allegations in proceedings?

Answer 510

1. Deny allegation
2. Require claimant to prove allegation
3. Accept allegation

Must also include - a statement of truth

Lack of comment on allegation → assume that defendant agrees