Topics Flashcards

Question

Definition of sufficiency

Answer 1

The application must disclose the invention in a manner which is complete enough for the invention to be performed by a person skilled in the art (1 mark). An objection can arise if the patent does not support that which it specifically purports to deliver (1 mark). An objection can also arise where the claim is cast more widely than the teaching of the patent enables (1 mark). The test is whether the patent imposes an undue burden on the skilled man to arrive at a workable prototype of the invention (1 mark).

Answer 2

For first Examination Report is issued more than 3 ½ years from the filing date, deadline for response may be set by the examiner as two months from date of report. If issued before 3.5 years, the deadline is four months from the date of report. Request a two month extension of time (1 mark) in writing at UKIPO today (1 mark). Ring the examiner and ask for a further discretionary extension of time (1 mark) with reasons (1 mark). If accepted then file a response by the new deadline (0.5 marks), otherwise file a holding response today (0.5 marks).

Answer 3

Apply in writing (0.5 marks) identifying the proposed correction (0.5 marks). Provide evidence that it is ‘immediately evident’ that nothing else could have been intended (1 mark). Explain reason based on qn (1'). May file another application with corrected specification as fall back (1'), but cannot have late declaration of priority claim because there is no "unintentional" defence (1').

Answer 4

request discretionary extention (1') with explanation why the deadline was missed (1'). Discuss whether the extension of time is likely to be granted (1'). File a response to the examination report (1'). Discussion on compliance period (1'). Discuss possibility of filing a divisional application (1'). General requirements for filing a div (1')

Answer 5

too late to request an as of right extension (1'). Request re-instatement (1') within 12 months from missed deadline (1') and provide explanation why the deadline was missed (1'). Reason why it was unintentional (1'). File a response to the examination report (1'). discuss the compliance period (1')

Answer 6

request extension of time under Rule 111, provide supporting evidence

Answer 7

Excess claims fees: (1) less than 25 claims at the time of requesting search and more than 25 claims at the time of grant; (2) there is an increase in the number of excess claims compared to the excess claims at the time of search Excess pages fees: (1) less than 35 pages of description at the time of requesting examination and more than 35 pages of description at the time of grant; (2) there is an increase in the number of excess excess pages of description compared to the excess pages at the time of requesting examination paid within two months from the date of notification of intention to grant two months as of right extension, file Form 52 and pay fee

Answer 8

A divisional application is a separate application in its own right (1 mark). Prosecuted independently of the parent application (1 mark). It obtains the same effective filing date as the parent application (1 mark). Typically filed when UKIPO raised an objection on the grounds that the parent application has claims to more than one invention (1 mark).

Answer 9

The later of: 4.5 years (4 years and 6 months) beginning immediately after priority date or filing date; 12 months after the first examination report; 18 months from first observations report; if the first observations report is sent within 3 months from the end of period, the period is extended to 3 months from the issue date of the report

Answer 10

S33(3) - assignment of a patent or application, or a right in it; - mortgage of a patent or application or the granting of security over it; - grant, assignment of a licence or sub-licence under a patent or application; - the death of the proprietor, the vesting by an assent of personal representatives; - court-ordered transfer of a patent or that an application should proceed in the name of any person use PF21

Answer 11

Advantages Renewal fees reduced by half (1 mark) Can be cancelled when finances improve (1 mark) Disadvantages Third party can obtain a licence on request (1 mark) Fee reductions must be paid back after the licence of right is terminated (1 mark) Limit on damages in infringement proceedings (1 mark) to twice what would have been payable under the licence of right (1 mark), infringer can take a licence during infringement proceeding to avoid injunction Better terms for existing licensees (1 mark), holder of licence granted before the entry was made may apply to exchange the previous licence with a licence of right Cancellation of LoR can be opposed (1 mark) Licensees can bring infringement proceedings (1 mark) if the proprietor refuses or neglects to act on request from licensee to bring infringement two months after such request is made, licensee may bring proceedings of the infringement in his own name and make the proprietor as a defendant; A proprietor so added as defendant shall not be liable for costs or expenses unless he enters an appearance and takes part in the proceedings. UKIPO may refuse such application: When it is precluded by contract (1 mark)

Answer 12

Any person who acquires the property in, or a right in or under, a patent or patent application is not affected by an earlier transaction, instrument or event if (1) he did not know of it at the time of his own acquisition (1 mark) and (2) if at that time it had not been registered or notified to the Comptroller (1 mark). If a person became a proprietor or exclusive licensee before a particular infringement occurred, he cannot be awarded costs (0.5 marks) or expenses (0.5 marks) if the relevant transaction, instrument or event was not registered before the date of the infringement (1 mark), unless (S68): - The conditions are that registration occurs within six months of the date of the transaction, instrument or event (0.5 marks), or - it is established that registration within that period was not practicable but occurred as soon as practicable thereafter (0.5 marks).

Answer 13

An exclusive licence excludes the patent proprietor whereas a sole licence does not (1 mark). An exclusive licensee can bring proceedings for infringement whereas a sole licensee may not (1 mark), depending on the terms of the licence (1 mark).

Answer 14

If renewal fee was overdue for less than 6 months (0.5 mark): pay renewal fee with surcharge (0.5 mark). Still valid to bring infringement proceedings (1 mark); If renewal fee was overdue between 6 to 19 months, apply for restoration (1 mark). Must show failure to pay was unintensional (1 mark) with evidence provided (1 mark). Apply to the situation in question (1 mark) More than 19 months overdue (1 mark): nothing can be done to revive the patent (1 mark)

Answer 15

A patent in force is infringed if any of the following acts are carried out in the UK without the consent of the proprietor: - where the invention is a product, a person (or company) makes, disposes of, offers to dispose of, uses or imports the product or keeps it, whether for disposal or otherwise; - where the invention is a process, a person (or company) uses the process or offers it for use in the United Kingdom when it is known, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; - where the invention is a process, a person (or company) disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product, whether for disposal or otherwise.

Answer 16

Acts of 'indirect' infringement occur when, while the patent is in force, without the consent of the proprietor, a person (or company): supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he or she knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

Answer 17

Related to patent of a process: if manufacture started in the six months when the renewal fee could have been paid late there are no third party rights (1 mark). If use began after notification of non-payment (1 mark) but before publication of the application for restoration (1 mark) then if this was done in good faith (1 mark) the competitor can continue to do the act (1 mark). Some discussion of ‘the act’ with reference to the infringing product (1 mark). Does not extend to granting a licence (1 mark) but customers can deal in the product (1 mark). The right extends to any partners of the third party for the time being in the business (1'); The third party may assign the right (or transmit it on death) to any person who acquires that part of the business in the course of which the act was done or preparations made (1')

Answer 18

supply or offer of a staple commercial product unless the supply or the offer is made for the purpose of inducing the person supplied or, as the case maybe, the person to whom the offer is made, to do an act which constitutes an infringement of the patent under S60(1)

Answer 19

at the date of infringement the alleged infringer was unaware of the existence of the patent (1') and had no reasonable grounds for supposing the patent existed (1'). Making a product with the word "patent" or "patented" is insufficient notice of the existence of the patent (1') unless the patent number is indicated (1')

Answer 20

The court will assume the same product is made by the patented method for producing the new product unless the alleged infringer can show otherwise (1 mark). Alleged infringer not required to disclose if unreasonable to do so (1 mark).

Answer 21

threat is justified if S70A(2): - the invention is a product, alleged infringement is making a product for disposal, or importing a product for disposal - the invention is a process, alleged infringement is using a process S70(5): the threat is contained in a permitted communication

Answer 22

It is possible for there to be a product/process/article which infringes the broader claim but not the narrower claim

Answer 23

The authentic text is the text in the language of the proceedings before the EPO (1 mark). However, the authentic text is the English language translation (1 mark) if the translation confers protection which is narrower than that conferred by the original text (1 mark). In revocation proceedings the original text is the authentic text (1 mark).

Answer 24

Prepare a correct translation (1 mark). File a request for publication at UKIPO (1 mark). Send a copy to the alleged infringer (1 mark). Defences – the proprietor cannot bring infringement proceedings for ‘new’ acts unless before the day of the act (1 mark) the corrected translation is published by UKIPO (1 mark) or is sent to the infringer (1 mark). Even then, the infringer may have a defence that they have third party rights if (a) they began in good faith (1 mark) to do an act which would not constitute an infringement of the patent as originally translated but would do so under the amended translation (1 mark); or (b) they made in good faith (1 mark) serious (1 mark) and effective (1 mark) preparations to do such an act.

Answer 25

(a) done privately and for purposes which are not commercial; (b) done for experimental purposes relating to the subject-matter of the invention; (c) consists of the extemporaneous preparation in a pharmacy of a medicine for an individual in accordance with a prescription given by a registered medical or dental practitioner or consists of dealing with a medicine so prepared

Answer 26

third party rights if (a) they began in good faith (1 mark) to do an act which would constitute an infringement of the patent if it were in force (1 mark); or (b) they made in good faith (1 mark) serious (1 mark) and effective (1 mark) preparations to do such an act, has the right to continue to do the act. This right does not extend to granting a licence to another person to do the act. (validity of the patent may be questioned depending on whether prior use is available to public) The product produced under the above right shall be considered in the same way as if it had been disposed of by the registered proprietor of the patent.

Answer 27

Invention is not patentable; The patent was granted to a person who was not entitled to be granted the patent; The specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art; The matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed; The protection conferred by the patent has been extended by an amendment which should not have been allowed.

Answer 28

1. if the invention for which the patent has been granted forms part of the state of the art by virtue of Section 2(3) - novelty only prior art; 2. when the comptroller issues an opinion that the invention is not novel or inventive; 3. that a patent under the Act and a European patent (UK) have been granted for the same invention having the same priority date and same applicant (or successor)

Answer 29

1. infringement proceedings (Section 61); 2. infringement proceedings conferred by the publication of an application (Section 69); 3. proceedings in respect of an actionable threat (Section 70A); 4. proceedings in respect of non-infringement (Section 71); 5. proceedings in respect of revocation of a patent (Section 72); 6. proceedings in respect to disputes as to Crown use (Section 58)

Answer 30

any person (1'), including the proprietor (1'), at any time after grant (1'); EXCEPTION: revocation on the ground that the patent was granted to a person not entitled to the patent: may only be made by a person found by the court to be entitled to be granted the patent or granted a patent for part of the matter (1'); must be made within two years of grant (1') unless it is shown the regitstered proprietor knew at the time of grant or transfer (0.5') of the patent to him that he was not entitled to the patent (0.5')

Answer 31

file request form (0.5 marks) and pay fees, accompanied by a statement setting out the question (0.5 marks), the requesters submissions on the question (0.5 marks) and any matters of fact to be taken into account (0.5 marks). The statement must be accompanied by a list of persons having an interest in the question (0.5 marks) and particulars of any relevant proceedings (0.5 marks). The statement is further accompanied by any evidence referred to in the statement (0.5 marks). The comptroller notifies the patent holder (0.5 marks), holder of a licence or sub-licence (0.5 marks), any person in the ‘list of persons’ (0.5 marks) and anyone else that appears to the Comptroller to be likely to have an interest (0.5 marks). The request is advertised (0.5 marks). Within four weeks of advertisement (0.5 marks) any person (0.5 marks) may file observations. These must be sent to the patent holder and requester (0.5 marks). The patent holder/requester has two weeks (0.5 marks) to file observations in reply. The matter is then referred to an examiner for preparation of an opinion (0.5 marks). The opinion is then issued to the patent holder (0.5 marks), the requester (0.5 marks) and any party who filed observations (0.5 marks) and published online.

Answer 32

1. There is a patent for the product; 2. The representation was made after the patent expired/revoked and before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure the representation is not made/continue to be made; 3. Used due diligence to prevent the commission of the offence

Answer 33

No action for infringement (1 mark) and no claim in respect to the services of the Crown (1 mark) lies in respect of any act done before the date of advertisement of the acceptance of the offer to surrender the patent (1 mark). Surrender does not terminate revocation proceedings (1 mark) nor does it terminate entitlement proceedings (1 mark). Surrender of a GB patent does not allow one to avoid the double patenting provisions (1 mark).

Answer 34

0. pay regional processing fee and file NP1; 1. File PCT specification, use EN translation if original not in E ; 2. If there were claim amendments, file the amend+B2:C70ed claims; 3. File a request for search and pay search fee; 4. file a request for examination and pay examination fee; Do the above asap and before the 31-month deadline 5. To expedite prosecution: request early national phase processing, file a response addressing prior art in the international phase, request expedited examination (may cite infringer as a reason), request early publication to get provisional protection;

Answer 35

(1) parties to the case: Pozzoli SpA v BDMO SA; (2) summary of facts: Pozzoli held a patent for a CD case in which two CDs could be stored, which was smaller in height than a standard case for storing two CDs, as the Pozzoli case overlapped the CDs and spaced them apart axially so they would not come into contact. Pozzoli accused BDMO of infringement and brought proceedings. BDMO brought a counter-claim of invalidity on the basis of lack of inventive step; (3) summary of decision: Pozzoli argued that there was a prejudice in the industry against staking CDs. However, the court did not believe there was a long-felt need for CD storage cases that were shorter than 2:1 height to width ratio. Once the skilled person considered that the height needed to be reduced, it was obvious to overlap the CDs. Further, it was obvious to space the CDs axially such that they could be removed individually. The Pozzoli patent was invalidated due to lack of inventive step. The court also suggested that the Windsurfer questions needed reformulating; (4) precedent set by the case: the precedent set by this case is the Pozzoli/Windsurfer approach to determining whether an invention possesses inventive step. The steps should be carried out in order as follows: (a) identify the person skilled in the art and their relevant common general knowledge; (b) identify the inventive concept of the claim in question or if that cannot readily be done, construe it; (c) identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept; (d) viewed without any knowledge of the alleged invention claimed, do those differences constitute steps which would have been obvious to the person skilled in the art? If no, there is no inventive step

Answer 36

(1) parties to the case: Actavis v Eli Lilly (2) Summary of the facts of the case: Actavis sought a declaration for non-infringement for salts of pemetrexed, and the free acid, with the vitamin B12 for use as a medicament. Eli Lilly's patent had a claim to pemetrexed disodium in combination with vitamin B12 for use as a medicament; (3) Summary of the decision: The decision found that Actavis did infringe Eli Lilly's patent and this decision was arrived at by the re-formulation of a 3-part test as decided by the judge; (4) Precedent set by the case: The UK supreme court stated that the problem of infringement is best approached by addressing the following two issues considered through the eyes of the person skilled in the art: (a) Does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (b) Does the variant nonetheless infringe because it varies from the invention in a way which is immaterial? If the answer to either issue is "yes", there is an infringement, otherwise there is not. It was decided that purposive construction was not the best way as was previously (e.g., Improver v Remington) to review this case as it put too much emphasis on what was obvious to the skilled person at publication. The test was re-formulated from Imrpover to the following: 1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e., the inventive concept revealed by the patent? 2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? 3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? If the answers to the above are "yes, yes, no", then the variant infringes Test for whether prosecution history may be considered: - The point at issue is truly unclear if one confines oneself to the specification and claims of the patent (1'), and the contents of the file unambiguously resolve the point (1'); - It would be contrary to the public interest for the contents of the file to be ignored (1')

Answer 37

new, involves an inventive step, and is capable of industrial application

Answer 38

(1) parties to the case: Improver v Remington; (2) summary of facts: Improver held a patent for an epilator which used a helical steel spring to remove hairs from skin. Remington sold a product which comprised an arcuate rubber rod with slits along its length which could grip hairs to remove them. Improver brought infringement proceedings in respect of Remington's product. Remington made a counter-claim of invalidity on the basis of lack of sufficiency and lack of inventive step; (3) summary of decision: The independent claim of the Improver patent was worded such that the helical steel spring was an essential element of the invention. Therefore, because the Remington epilator did not include a helical steel spring, it was not infringing. The Improver patent was upheld to be sufficient and possess inventive step; (4) precedent set by the case: Improver questions were formulated as follows for purposive construction: (a) does the variant have a material effect upon the way the invention works? if yes, the variant falls outside the claim, if no: (b) would this fact have been obvious to the person skilled in the art at the date of publication of the patent? if no, the variant falls outside the claim. if yes: (c) would the person skilled in the art nevertheless have understood from the language of the claim that the patentee intended that the strict compliance with the primary meaning was an essential requirement of the invention? if yes, the variant is outside the claim. If no, the variant falls withing the scope of the claim.

Answer 39

define the matter for which the applicant seeks protection ('), be clear and concise (1'), be supported by the description ('), relate to one invention or a group of inventions (') which are so linked so as to form a single inventive concept (')

Answer 40

special technical features are features which define a contribution which the invention makes over the prior art (1'). Single inventive concept: there exists between the inventions a technical relationship (1') which involves one or more of the same or corresponding technical features (1')

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