UK Patents Act Flashcards
(111 cards)
1
Q
What are the requirements for a patent to be granted for an invention (4)
A
New
Inventive step
Industrially applicable
Not excluded subject matter
2
Q
What is excluded as patentable inventions? (5)
A
Discovery, scientific theory or mathematical method
Literature, drama, music, art or other aesthetic creations
Scheme, rule or method for performing mental act, playing game, doing business or a computer programme
Presentation of information
As such
Commercial exploitation of invention would be immoral or contradict public policy
3
Q
What does “as such” mean
A
Aerotol [2006] and [2007]
1. Properly construe claims
2. Identify actual contribution
3. Ask if falls solely within exclusion
4. Check if actual contribution is technical
4
Q
When is an invention novel?
A
When it does not form part of the state of the art
5
Q
What is the state of the art
A
All matter made available to the public before the priority date. To be novelty destroying the disclosure must be enabling.
6
Q
What is section 2(3) prior art
A
Matter in a patent application with an earlier priority date which is validly published after the priority date of the inventions application. The earlier application must be a GB, EP, PCT(GB) or PCT(EP) application
7
Q
When is a disclosure not considered part of the state of the art
A
If it occurred within 6 months before the filing date in the UK and either
a) the disclosure was due to or resulted from the invention being obtained by anyone unlawfully or in breach of confidence, from the inventor or anyone to whom the matter was disclosed in confidence, or
b) the disclosure was made in breach of confidence, or
c) disclosure was due to or resulted from the inventor displaying the invention at an officially recognised international exhibition which was stated on filing and confirmatory evidence was filed within 4 months
8
Q
What is inventive step
A
An invention comprises an inventive step if it is not obvious to a person skilled in the art who knows all matter in the art (excluding section 2(3) prior art)
9
Q
What are the Pozzoli steps
A
1a) identify the person skilled in the art
1b) identify the common general knowledge
2) identify or construe the inventive concept of the claim
3) identify any differences between the state of the art and the inventive concept of the claim
4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
10
Q
What is industrial applicability
A
An invention is industrially applicable if it can be used in any kind of industry, including agriculture
11
Q
What shall a patent not be granted for?
A
Method of treatment of the human or animal body during surgery or therapy or method if diagnosis practised on human or animal body. Substances and compositions for use in such methods are allowed and the use is considered new if the substance or composition itself is known in the art, or if the specific use is new
12
Q
What is the priority date?
A
The filing date by default or the filing date of an earlier application if the priority requirements are met
13
Q
What are the requirements for claiming priority?
A
- Later application must be filed by the applicant or their predecessor in title of the earliest priority document,
- Within 12 months from the filing date of the earliest priority application (unless late declaration), and
- The later application invention is supported by the priority document
14
Q
What are the requirements for late declaration of priority
A
If the application is filed within 2 months of the end of the priority year, the applicant can request late declaration, file a form, pay a fee, and provide evidence that the failure to file the application within the priority period was unintentional (with evidence)
Must file declaration of priority on filing
15
Q
When will the first application be disregarded for priority?
A
If it is withdrawn leaving no rights outstanding before publication, including the right to act as priority for any application anywhere, before the day the second application was filed in the same country as the first
16
Q
When to file a declaration of priority
A
-On filing or
-Within 16 months of the priority date if no request for early publication (must be withdrawn before declaration), or
- If PCT(GB), within 1 month of national phase entry, or
- If divisional or application filed after dispute then request on filing date
If no request for early publication
17
Q
What is required for a declaration of priority?
A
Country, date of filing and application number of earlier application, and a certified copy of earlier application unless a copy is already available to the comptroller
18
Q
Who has the right to apply for a patent
A
Any person (a natural or legal person) either singly or jointly with another
19
Q
Who has the right to obtain a patent
A
The patent may be granted to
1. The inventor (person who made an inventive contribution)
2. In preference a person entitled by agreement, law or treaty or
3. A successor in title to either of the above
And no other person
20
Q
Who is the inventor
A
An actual deviser of the invention
21
Q
How to change applicant details
A
File a request in writing with written evidence of reasons or request a correction of errors if a clerical or translation error
22
Q
Excluded biotechnology inventions
A
Human body and gene sequences within it
Cloning humans
Modifying the germ line
Industrial or commercial exploitation of human embryos
Genetic modification of animals likely to cause suffering without significant medical benefits
Plant and animal varieties
23
Q
Who can question entitlement before grant? (S8)
A
Any party or one or more co-applicants
24
Q
What can happen after question of entitlement is raised for a patent application (S8)
A
The comptroller can
A. Replace some or all of the applicant names with new parties
B. Refuse to grant a patnet
C. Amend to excise contested elements of a patent, or
D. Order a licence or transfer of a right in the application to new party(s)
25
If application is excised, refused or withdrawn following entitlement dispute, what is the deadline for filing a new application? (S8) what is it's filing date
3 months from the decision or end of appeal. Filing date is the filing date of the older application.
26
If comptroller orders a transfer of right following entitlement dispute (S8), what happens if it's ignored
After 14 days, the comptroller can permit the other party to implement the order and potentially affected parties are informed or the comptroller can pass the matter on to the courts
27
Deadline for declaring inventorship and priority documents for new application following entitlement dispute
Later of 2 months after filing or 16 months after priority
If within 6 months of the compliance period then must supply on filing
28
Amicable ways to resolve entitlement disputes
Assignment
Comfort letter
Early settlement (money)
29
What happens if jount applicants disagree with how to prosecute a case
The comptroller can be asked by any of the parties to arbitrage and direct how to proceed and/or alter the number of applicants
30
Effect of transfer of application following entitlement dispute on licences
If one or more of the original applicants remain, then the extant rights granted to others continues
If none of the original applicants remain, the rights lapse upon registration of the new applicant BUT if the licencees were working or made serious and effective preparations to work the invention in good faith in the UK prior to entitlement dispute then they are entitled to be granted a licence from new applicants if requested within 2 months from comptroller decisions
31
Who can question entitlement for foreign applications? (S12)
Any person or one or more co-applicants
If EP application, then subject to applicant being resident in UK or an employee who is employed in the UK
32
When can a new application be filed following entitlement dispute for foreign application
EP application or GB designation withdrawn or refused during normal prosecution before entitlement questioned OR refused by request of the entitled person OR PCT(GB) or GB designation withdrawn or refused during normal prosecution before or after ant question is referred then within 3 months of comptroller decision (no added matter) and then treated as if filed on date of original application
33
What actions should be done for EP application entitlement dispute?
Request suspension of EP proceedings
Provide proof of entitlement proceedings begun in UK
If successful then UK decision can be used to transfer rights of an EP application
34
What is the impact on other national phase states if UK entitlement dispute for PCT application?
Cannot suspend proceedings and not all states are signatories to rhe protocol on recognition so may need to re-apply decision in each state
35
Inventors rights and by when
Inventor has eight to be mentioned in a granted patent
Applicant must provide inventors identity within 16 months from priority date and derivation of rights if application is not the inventor or the application will be deemed withdrawn
Use form
Use form for divisional or new applications following entitlement
PCT(GB) - later of 16 months from priority or 2 months from start of national phase
36
When can inventors' rights be waived?
If requested before preparations for publication are complete. The inventor must give a reason.
37
When can inventors' rights be waived?
If requested before preparations for publication are complete. The inventor must give a reason.
38
What to co-ownership allow
Default arrangement is equal undivided share subject to agreements to the contrary, each entitled to independently work the invention without infringing
Anyone may supply a co-owner with essential means to validly work the patent without being classed as a secondary infringer
39
What must all parties agree to (co-ownership)
Amend, revoke, licence, assign, mortgage or otherwise secure against the patent
40
Rights to sue for infringement (co-ownership)
Either party can start infringement proceedings without permission from other co-owners. All parties are brought into proceedings by only liable for costs if take an active part in proceedings.
41
When can entitlement dispute after grant be started (Section 37)
Within 2 years after grant until one of the grantees knew they were not entitled at the time of grant
42
What can be the effect of entitlement dispute of a granted patent
If patent is revoked unconditionally then claimant can apply for a patent to the whole of the spec or excluded matter if conditionally revoked (if entitled and within 3 months of comptroller decision)
Claimant may be added as an extra or replacement proprietor
Comptroller may require registration of transfer, grant of a licence or other right
43
When does an invention belong to an employer?
If made by employee in the course of normal duties or specifically assigned duties or if an invention was reasonably expected to arise from them or if the employee had a special obligation to further the interest of the employer
44
Overlapping rights of employee and employer copyright or design rights
If invention belongs to the employee then a patent can be applied for and worked within infringing any copyright or design rights that may belong to the employer
45
When can an employee apply for compensation?
When the patent is in force or within 1 year after it's lapse
46
Under what circumstances can an employee apply for compensation
When a patent is granted for an invention made by the employee and belonging to the employer and the invention and/or patent is of outstanding benefit to the employer (factoring in size and nature of company) so it is just that the employer compensates the employer, then the court or comptroller may award compensation
OR
If the patent was exclusively licensed to the employer and the benefit was inadequate in relation to the benefit to the employer in relation to the invention or patent
47
Under what circumstances can an employee apply for compensation
When a patent is granted for an invention made by the employee and belonging to the employer and the invention and/or patent is of outstanding benefit to the employer (factoring in size and nature of company), OR, the patent has been exclusively licensed to the employer and the benefit to the employee is inadequate,
so it is just that the employer compensates the employer, then the court or comptroller may award compensation
48
When can employees not apply for compensation?
If they are in a trade union that negotiated a pay settlement regarding such inventions
49
How much compensation may the employee get?
A fair share of the benefit to the employer from the invention, the patent or application or assignment of any rights whilst taking into account the:
Employees duties and existing pay/benefits
Effort and skill in inventing
Any co-inventors contribution
The employers contribution
50
Can an employee claim compensation for overseas patent benefits?
Yes, if they are mainly employed in the UK
51
What must a patent application contain
Form PF1 filed at the UKIPO
Request for grant of patent
A specification clear enough to be enabling and comprising a description, a claim, drawings if referred to and an abstract
52
When must the application fee be paid? Consequence
The later of 12 months from priority or 2 months from filing. Consequence of not paying is withdrawal
53
What must the claims include
Definition of the matter to be protected, must be clear and concise, must be supported by the description and must relate to one invention or a group linked to form 1 inventive concept
54
What is the abstract?
Gives technical information and contains the technical field and an explanation and main use of the invention, but does not form part of the state of the art
55
What is required to obtain a filing date? And any deadlines associated?
Application documents indicating a patent is sought
Identify the applicant and a method of contacting them (2 months from notification to supply if missing)
Something that appears to be a description or a reference to an earlier application (4 months to supply certified copy if required)
56
Effect to adding "missing parts"
If application has a filing date and drawing or some text of description is added before preliminary examination, or within 2 months fo notification by the preliminary examiner, then unless it is withdrawn again, rhe missing pert will be treated as included and the filing date re-dated
UNLESS
Priority document declared on or before the initial filing date and it contains the missing parts and a request to not re-date the application is made within the before preliminary examination, or within 2 months fo notification by the preliminary examiner
57
Filing date of subsequent application (after dispute or divisional)
If filed before parent application grants then filing date is the same as the filing date of the parent application
58
Deadline for filing claims and abstract
Later of 12 months from priority or 2 months from filing date
59
Deadline to file description if referenced earlier application on filing
Later of 12 months from priority or 2 months from filing date
60
Deadline for filing translation (if needed)
4 months from filing date
61
Deadline for requesting search and paying fee
Later of 12 months from priority or 2 months from filing date
For PCT(GB) - later of above or 2 months after national phase entry. National phase entry must be paid at national phase deadline
62
Deadline for filing divisional application
If parent has not been terminated or withdrawn and has not yet granted, and not last 3 months of the compliance period.
If filed following dispute then have 3 months from comptroller order or end of any appeal unless shortened by comptroller.
If filed within last 6 months of compliance period, must file declaration of inventor and priority documents on filing (or within 2 months)
63
When does the preliminary examination take place
When the application has a filing date, the application fee has been paid, and the application has not been withdrawn or treated as such
64
What does the preliminary examination determine
That the application complies with the formal requirements and if declaration of inventorship, claims, abstract, description, translations, certified copies of referenced documents or fees need complying with
65
Deadline to correct erroneous priority date in declaration
2 months from notification
66
When is an application published
18 months after the priority date. Also published if withdrawn after preparations to publish are complete (5 weeks before)
67
Requirements for a search to be done
Preliminary exam complete
Application not refused or deemed withdrawn
Search requested and fee paid within later of 12 months from priority date or 2 months from filing date AND excess claims fee
Application includes description and claim(s) in English or Welsh
68
Deadline for requesting further searches
Before 3 months before the end of the compliance period (request and fee)
69
Deadline for requesting substantive examination and how to request Nd the consequence
Within 6 months of publication
Form and fee, AND excess page fee
Consequence: deemed withdrawn
70
What is the compliance period?
Later of 4 and a half years after priority date or 12 months from first exam report
For new applications following dispute: later of compliance period of parent or 18 months from filing date of new application
For divisionals: same as parent
If 3rd party observations filed within 3 months of compliance period then applicant has 3 months to respond.
71
PCT(GB) application deadline to request examination
33 months from priority or 2 months from national phase entry
72
What is a section 18(4) communication?
Positive exam report, acts as a notification of intention to grant with 1 month window to file divisional or make amendments, unless first communication and then have 2 months
73
What happens if an application does not comply with requirements for grant within compliance period?
Treated as refused
If within time period to file an appeal, can still file appeal and extend compliance period (28 days from decision)
2 month extension as of right available
74
Requirements to reinstate an application
If application refused or treated as withdrawn due to missed deadline then, within 12 months from missed deadline, applicant (or one of) can request reinstatement
Form and fee
Evidence was unintentional (or within period specified by comptroller)
Or, 1 month to request hearing
Unless extension still available or missed deadline related to proceedings before comptroller, declaration of priority with late filing or reinstatement itself
75
Effects of reinstatement
Anything done with or to application between loss and reinstatement is treated as valid
If application published infringing acts done in bad faith are treated as such if done during potential extension period or continuing/repeating earlier infringement
If application published, anyone who begins in good faith to effectively infringe or makes serious and effective preparations to do so between termination (plus extension) and notice of request for reinstatement may continue the act or business partners may continue the act, or the act may be transferred as part of the business itself
76
How to request a first extension of time
In writing, within 2 months of missing a deadline - extends deadline by 2 months or compliance period if earlier
77
Discretionary extensions of time
Some statutory deadlines can be extended discretionarily if requested in writing for form and fee within 2 months of deadline
Further extension also form and fee but must provide evidence as to why the extension should be granted
(Not for deadlines related to priority)
78
When can an applicant voluntary amend the application
After the search report and any number of times until the first exam report is issued and then:
once within 2 months of an 18(4) report
Once in response to an 18(3) report as part of the reply if 18(3) issued after publication
Or
If 18(3) before publication then any number of times until replying
Unless
Comptroller consents to amendment or amendment concerns actual request for grant when applicant must provide reasons
79
Conditions for amending before grant
Must request in writing and must not add matter to application as filed
80
Condition for amending after grant
No added matter or broadening of the claims
81
When can an applicant amend after grant
On request unless any proceedings are pending that may question validity
Comptroller may amend to acknowledge a registered trade mark
Must request in writing with reasons
82
Affect of post grant amendment
Retroactive to date of grant
If not amended in good faith (I.e. know of relevant prior art) then could affect consideration of damages
83
Affect of amending during revocation or infringement proceedings
Comptroller may permit an amendment in response to validity question
Any person may oppose the amendment
Amendment is retroactive to date of grant
My submit request in writing with reasons
84
What is added matter and what must be done to it?
Matter that extends beyond the application as filed - mist be removed
Also can't broaden claims after grant
85
What errors can be corrected (S117)
Errors in translation or copying or other clerical errors or mistakes in the patent spec or any associated documents and forms
86
Requirements for correcting errors
Request in writing, clearly specifying correction, must be immediately evident that nothing else could have been intended
87
What happens if there is an irregularity of procedure before the UKIPO
Comptroller may correct it and if UKIPO contributed wholly or partly to the irregularity, they may extend the due date of any missed deadlines
88
Effect of resuscitation of withdrawn application withdrawn by mistake (and corrected S177)
Anything done with the application during the period between withdrawal and resuscitation will be treated as valid
If notification of request to correct error published then any continuation or repulsion of act during withdrawal and resuscitation are treated as infringement
If notice published but between withdrawal and notice a person began in good faith an infringing act or makes serious and effective preparations to do so then they may continue the act or business partners may continue the act, or the act may be transferred as part of the business itself
89
What happens on grant
Notice of grant published in OJ asap
Grant certificate sent asap
B spec with inventor and proprietor details published at same time
90
Term of a patent
20 years from filing date
If renewed annually within renewal period
91
When to pay the first renewal fee
3 months up to and including the 4th anniversary of the filing date (up to end of month)
Unless not granted or grants within 3 months of 4th anniversary, then
3 months after grant date, pay period is to the end of the month
92
What is the renewal period and grace period
Renewal period: 3 months up to and including the anniversary of the filing date
Grace period: 6 months to end of month from anniversary of filing, must pay with late fee
93
Effect of paying renewal fee in the grace period
Patent treated as if never lapsed so anything done with or to the patent is still valid and infringing acts are still infringement and infringing crown use is still crown use
94
When is a renewal notice received
If payment is overdue, within 6 weeks after renewal period expires - states overdue payment and consequences of non-payment
If grace period ended then within 6 weeks to point out possibility of restoration
95
How to apply for restoration
Proprietor(s) must apply using form and fee within 13 months after the grace period of 6 months
Must state that failure to pay renewal fee was unintentional with evidence (or comptroller will ask for evidence)
1 month from notice to request hearing if denied, or patent is lost
96
Effect of restoration
Anything done in respect of the patent during the period between expiry and restoration will be treated as valid
Any infringement done in that period shall be infringement f done when grace period was still possible and/or continuation of earlier action
If, after grace period expired and before notice of application to restore was published, a person began in good faith an otherwise infringing act or makes serious and effective preparations to do so then they may continue the act or business partners may continue the act, or the act may be transferred as part of the business itself
97
Who can surrender a patent and what is the effect?
The proprietor at any time (can be opposed) and has effect from date of notice of surrender in the OJ and one cannot sue afterwards for prior infringement
98
What are SPCs
Supplementary protection certificates for inve tions subject to regulatory approval that may take an appreciable proportion of a patents life to complete (only for embodiment for which approval is gained)
99
How to apply for SPCs and duration
Within 6 months of valid authorisation with fee and renewal fee
Maximum 5 years (+6 months in certain circumstances)
100
What is documented in the register
Patents and published applications
Transactions, instruments and events affecting patent rights
Opinions on validity or infringement
Relevant evident or documentation
Correction of errors
Changes to entries in the register
101
What is not documented in the register
Unpublished applications
Trusts (express, implied or constructive)
102
How to obtain copies of register entries
Form and a fee
Can be certified or uncertified
103
What are the requirements for claiming priority
Later application must be filed by same applicant or predecessor in title of earlier application
Within 12 months
In the UK or any convention country
Same invention
Earlier application must be the first disclosure of the invention
104
When must the declaration of priority be filed?
Either at time of filing or within 16m of priority date if no effective request for early publication
Country, date of filing of earlier application
105
When can late declaration of priority be filed for a UK application?
Up to 2 months after end of priority year
Form, late fee
Proof that unintentional to file application late (or provide proof on request)
Must declare priority at same time as filing request for late declaration
106
When can declaration for priority for an application filed after dispute be filed?
On day of filing, even after 14 months
107
When can declaration of priority for PCT(GB) application be filed?
1 months after national phase begins
108
When is a second filing subject matter ok for use as basis of priority
When first filing is withdrawn leaving no rights outstanding before publication, including the right to act as priority for any application anywhere on or before the day the second application was filed in the same country
109
What happens if an application first filed in the UK is found to be prejudicial to national security?
Comptroller can restrict any dissemination for invention up to 3 months after application due for publication (application is suspended but can be prosecuted)
Application notified to secretary of state who determines if prejudicial to safety/security and if so, extends above period and reviews within 9m + FD and every 12m after, restriction can then be lifted if no longer deemed prejudicial
Renewal fee is waived whilst prevention in place
110
What is the punishment for breaching the national security prevention
Fine up to £1000
Two years in prison
If convicted
111
What is the requirement for applications relating to military technology or national security?
First file in UK
Wait 6 weeks and no prevention order (foreign filing clearance)
Then can file internationally
Liable to fine/prison if breached and if knew would contravene S23 or were reckless with it
