fd1 general

Question 1

If the Examiner requires a supplementary search, what are the Applicant’s options?

Answer 1

-Amend to render search unnecessary
-Pay further search fee
-Argue successfully otherwise

Question 2

Is there a grant fee for GB patents?

Answer 2

No.
But do need to pay any excess page or claims fees (if added during prosecution) within 2mo from s18(4) Comm, otherwise appl deemed w/d (extendable by 2mo - form/fee)

Question 3

Scenario: Your client has a PCT/EP application in German, but has become aware of an infringer in the UK.

Answer 3

Can get s69 rights either by:
-Entering GB national phase early (request early processing) and request accelerated publication of the application
-Send a translation directly to infringer (warn that objections may be raised as its an appl still…)
-Can use EPO procedure to get certified transL of the claims published in Eng early

Question 4

What are the two ways to apply for restoration of priority (i.e. late declaration of priority) for PCT appls?

Answer 4

i) Apply in the int. phase (rO)
ii) Apply within 1mo of entering national phase (form/fee for UK)

Question 5

Explain innocent infringement in terms of damagets/account of profits.

Answer 5

Damages/account of profits are NOT awarded to a defendant who can provide they were unaware and had no reasonable grounds for supposing that a patent existed and was in force at the time of the infringement.

(Burden of proof here higher for large corporations compared to SMEs/individuals)

Question 6

Can licensees bring infringement proceedings for previous acts?

Answer 6

An assignment, share or licence may confer the right to bring infringement proceedings for earlier acts.

Question 7

When will a request not to re-date after filing a missing part fail?

Answer 7

If either:
i) the earlier application does not contain any of the missing material;
ii) a certified copy of the earlier appl (in English) is not provided by the earlier of 16mo from priority date or 4mo from date of request to keep original filing date

Question 8

A preliminary examination report is issued and there is no indication of missing parts, but you recognise a missing part…

Answer 8

Can still file the missing part as if you were notified of it using R108(2)

Question 9

Can you file missing pages after preliminary examination completed?

Answer 9

No.

Question 10

What is meant by “enabling”?

Answer 10

Disclosure provides enough info for the skilled person to work the invention

Question 11

What is meant by “sufficiency”? (in its broadest sense)

Answer 11

Tests whether the claims are defined by the description clearly & completely enough for the skilled person to replicate/perform the invention without undue burden.

Question 12

Scenario: Applicant has forgotten to send certified copy of P1 doc to UKIPO within 16mo (GB appl)

Answer 12

• UKIPO will send a loss of priority comm to Applicant
  -can request 2mo extension as of right (form/fee) if within 2mo from missed deadline
  -if above deadline has passed then can request discretional extension of time under R108(3) + evidence

Question 13

What is the deadline for correcting/adding a priority claim to a PCT application?

Answer 13

Earliest of:
- Original P1
-or where there is a change in priority date, P1 as changed
But always at least 4mo from IFD

Question 14

Scenario: Clerical/translation error in Applicant details

Answer 14

File request in writing to correct PF1 or, if correction of Applicant name/address, file form (no evidence required, but good practice to provide it)

Question 15

Scenario: Applicant details are incorrect, but not due to a clerical error

Answer 15

File request in writing to correct PF1 with evidence

Question 16

Scenario: PF7 not filed & UKIPO not expecting one

Answer 16

Within 16mo period: file PF7
16mo period passed: request amendment of appl

Question 17

Things to consider for contractors…

Answer 17

-check contract
-do they work full time or just when needed
-would invention be expected to arise from duties under contract

Question 18

When will 3P rights not accrue after lapse of the patent?

Answer 18

Only when the UKIPO made an error (check: did UKIPO make you aware of the loss of rights?)

Question 19

Scenario: Application was refused after R30 period due to not responding to s18(3), then reinstated

Answer 19

Both the R30 period and OL response deadline will be extended by reinstatement - applicant then has a single opportunity to get the application in order

Question 20

What is resusitation?

Answer 20

Bringing an erroneously withdrawn appl back to life (file form + evidence of error)

Question 21

When will the Comptroller publish a request for resusitation?

Answer 21

If correction relates to erroneous withdrawal, and:
i) application published
ii) withdrawal published, then Comptroller will publish the request for correction.

Question 22

What is the compliance period where a third part files observations within the last 3 months of the compliance period?

Answer 22

3 months (beginning immediately after the date on which the report is sent)

Question 23

Until when can you file missing pages/figs with the ro?

Answer 23

Up to 30 days late, but note that IFD changes so may lose priority.

Question 24

Who needs to sign a Chapter II Demand?

Answer 24

All applicants, common representative, or agent if he/she has a PoA from all Applicants

Question 25

What fees are required for Chapt II Demand and when are these due?

Answer 25

-Preliminary examination fee -Handling fee within 1mo of filing Demand (can be paid with late fee within 1mo from invitation from IPEA)

Question 26

What sort of experiments fall under s60(5) exemption?

Answer 26

Scientific technical goal = acceptable Experiments can ultimately have commercial purpose, but excludes: - demonstration or comparison for 3rd parties - expmts for immediate purpose of generating revenue -expmts to test the market

Question 27

When is repairing a product considered making?

Answer 27

Owner of patented product has implied licence to repair their product Consider: - Size of part - Relative lifespan of the part - Does the part confer inventiveness or value -Is the part a SCP? If replacing/making the inventive concept then that is NOT repair.

Question 28

When answering an FD1 Q where your client's patent is infringed, what do you need to consider?

Answer 28

-Identify all infringers and all infringing acts - suggest buying or analysing an infringing product - Consider amicable solutions - Check patent is granted and in force - Prior art search / check patent is valid - if not, suggest amending before enforcing as not doing so may affect damages - Send copy of patent/application to infringer to put them on notice, but NB this may result in 3POs/revocation action.

Question 29

What is a factor to consider when advising a client to pay a renewal fee + surcharge in grace period?

Answer 29

Advise to do so ASAP because comp/court has discretion to refuse award of damages/account of profits for acts done in the intervening period

Question 30

What is required for farmers' use exemption to apply?

Answer 30

Only applies where the patent holder supplied/sold the propagating material (e.g. seeds) to farmer (or with proprietor's consent) for agricultural use.

Question 31

What does "temporarily" mean with regard to s60(5)(g), i.e. use of product/process on ship, aircraft or vehicle temporarily or accidently in UK + parts thereon

Answer 31

Vessel engaged in essentially internal operation? --> not temporary Travelling between countries = temporary.

Question 32

What does s60(5)(g) apply to?

Answer 32

Applies to the vessel/aircraft/vehicle itself as well as any parts used on them.

Question 33

What does "continue" mean in terms of prior use?

Answer 33

"Continue" implies that significant divergence or expansion of the acts are not allowed.

Question 34

What happens if joint Applicants disagree on how to prosecute a case (e.g. if one of the Applicant's wants to drop the application)?

Answer 34

Comp can be asked by any of the parties to arbitrate & direct on how to proceed and/or alter the number of Applicants

Question 35

When must a certified copy of priority doc be supplied on a PCT appl?

Answer 35

Certified copy should be submitted to rO or IB not later than 16mo from priority date (NB - still considered received on the last day of that period if received by the IB before publication)

Question 36

How can you submit priority doc? (pct)

Answer 36

- Applicant can submit it themselves - Can ask rO to transmit a copy to IB (for a fee) before 16mo - Can request that IB obtain it from digital library (prior to the date of publication)

Question 37

When any amendment of a patent has been allowed, what is taken into account when considering damages?

Answer 37

i) at the date of infringement, whether the defendant knew, or had reasonable grounds to know, that they were infringing; ii) whether the patent as published was prepared in good faith and with reasonable skill & knowledge (i.e. didn't ignore the art); and iii) whether the current proceedings were brought in good faith So advise to amendment ASAP before enforcing

Question 38

What are the conditions set out for the six-month grace period in s2(4)?

Answer 38

Disclosure was made within the 6-months preceding the filing date and was due to the invention being obtained unlawfully or in breach of confidence: (i) from the inventor, anyone in confidence to the inventor, or anyone who obtained it from the inventor because they thought they were entitled (ii) anyone told in confidence by anyone in (i) OR Display at internationally recognised exhibition

Question 39

Where an amendment of a patent has been allowed, what is taken into account when considering damages?

Answer 39

i) at the date of infringement, whether the defendant knew or had reasonable grounds to know that they were infringing ii) whether the patent as published was prepared in good faith and with reasonable skill and knowledge (i.e. didn't ignore the prior art) iii) whether the current proceedings are brought in good faith. --> Advise to amend ASAP before enforcing.