1
Q
What are the requirements to get a filing date for a UK patent?
A
- Indicate patent sought
- Information identifying applicant (or sufficient to enable that person to be contacted)
- Either [something which appears to be a description] or [a reference to an earlier relevant application]
2
Q
What are the filing requirements of a UK patent filing OTHER than those required to get a filing date, and when are they due?
A
- Prescribed form PF1 filed at UKIPO in prescribed manner
- Application fee
- Request search and search fee (inc XS claims fees)
- Specification comprising description, claims, and abstract and drawings if referred to
All due later of 12m from priority or 2m from filing. - Formal drawings due 15m from priority
- (Declaration of inventorship within 16m from priority)
3
Q
What requirements must claims meet?
A
- Define matter to be protected
- Be clear and concise
- Be supported by the description
- Be unified (relate to 1 invention or a group so linked as to form a single inventive concept)
4
Q
What is sufficiency?
A
The SPECIFICATION must disclose the invention in a manner which is clear enough and complete enough to enable the invention to be performed by a person skilled in the art.
5
Q
When can a divisional of a UK patent application be filed?
A
Must be filed before the parent’s compliance deadline minus 3m. The parent’s compliance deadline can be extended as of right plus further discretionary R108(2,3).
The divisional deadline itself can be extended by 2m DISCRETIONARY ONLY.
A divisional can’t be filed once the parent has been withdrawn/refused/granted.
6
Q
What is the parent’s compliance period?
A
The later of:
- 4y6m from earliest priority
- 1y from the first substantive exam report
- 3m from third party observations if give rise to issue of exam report (under s18(3))
7
Q
What are the filing requirements for a divisional in the UK and when are they due?
A
- Description, claims, abstract, drawings
- Filing fee and request for search and search fee
- Statement of inventorship (if different to parent)
[i.e. all the stuff you’d need to get an application filed and searched]
All due later of [whenever they’re due for the parent] or 2m from initiation; OR if filing within the last 6m of compliance period, must be filed ON initiation.
Request exam and pay exam fee due later of 2y from priority or 2m from initiation; OR, if filing within the last 6m of compliance period, must be filed ON initiation.
8
Q
When is declaration of inventorship due?
A
16m from priority
9
Q
Describe the different procedures for getting an extension of a deadline in the UK.
A
R108(1) - most deadlines can be extended at discretion (except, generally, those relating to priority or 3rd party rights; and excluding any deadlines provided for by the following…).
R108(2): as-of-right 2m extension, form and fee, must request before end of the extended 2m period.
R108(3): additional discretionary extension (must request within 2m of elapsed (extended) deadline. Need to provide evidence why extension should be granted, and fee.
S117B: extension of time limits set by the comptroller (e.g. exam response). as-of-right, Limited to 2m, can’t extend beyond compliance date. Request w/in 2m of missing deadline. No form, no fee.
S20A allows for REINSTATEMENT. Apply within 12m of missed act, form and fee, evidence of “unintentional”. Remedy cause of refusal/effective withdrawal within a period specified by comptroller (at least 2m)
10
Q
What is the exception to R108(3) in relation to filing certified copies of priority documents?
A
For FILING CERTIFIED COPIES OF PRIORITY DOCUMENTS, this extension can be requested any time after lapse of the deadline.
11
Q
What acts must be completed after the publication of a UK patent application, and by when?
A
Publication sets a 6m deadline to request examination (with a form), pay examination fee including XS page fees. Extendable under R108(2,3).
12
Q
How long do you have to respond to a UK exam report? How is this period extended?
A
Deadline for responding to an exam report is set by the comptroller so has a special procedure for extension. Entitled to a 2m AOR extension (request in writing, no form no fee), plus further discretionary extension.
13
Q
What’s the deadline for entering the UK national phase of a PCT and what needs to be completed by this date?
A
31m from priority.
- National phase form (NP1) and fee
- Translation into English or Welsh if required.
14
Q
What else needs to be done if a PCT(GB) has validly entered the regional phase?
A
- Request search, pay search fee (inc XS claims)
- Request exam, pay exam fee (inc XS pages)
- Declaration of inventorship (if not in PCT)
All due within 2m from national phase entry [or their normal due dates from priority if later - very unlikely].
15
Q
What are the requirements for claiming priority from an earlier application in the UK?
A
- File priority-claiming app within 12m. Then have up to 16m from priority date to claim priority (and provide certi copies of priority docs, unless available to comptroller)
- File priority-claiming app up to 14m. “Late declaration of priority”. Form and fee, evidence of unintentional.
16
Q
When is a patent infringed?
A
Patent in force, do in UK without consent:
- PRODUCT: make, offer to dispose, dispose, use, import or keep (for disposal or otherwise) …the product
- PROCESS: use or offer to use the process where obvious to reasonable person in circumstances that such use would infringe.
OR
offer to dispose of, dispose of, use, import or keep (for disp or otherwise) a product obtain directly by means of that process.
17
Q
What’s contributory infringement?
A
While patent in force, and without consent of proprietor:
Supply in the UK a person other than a licensee (or other person entitled to work the invention)… w/ any means…relating to essential element of invention… for putting the invention into effect… where know or obvious to RPIC… that those means suitable for putting and intended to put invention into effect IN THE UK.
18
Q
What’s the exception to contributory infringement?
A
Where the “means for putting the invention into effect” is a staple commercial product - UNLESS the supply/offer is made for the purposes of inducing a person to infringe.
19
Q
Name 5 acts in relation to which a patent is NOT infringed.
A
- Private non/commercial
- Experimental purposes
- Extemporaneous preparation of medicine in a pharmacy in accordance with an individual’s prescrip
- Use FOR the needs of a ship temporarily or accidentally in the UK
- Use IN an aircraft, hovercraft or vehicle temporarily or accidentally in the UK
20
Q
When might damages be restricted in relation to patent infringement?
A
- INNOCENT INFRINGEMENT - where a person was not aware and had no reasonable grounds for suspecting that a patent EXISTED - no damages or accounts can be ordered.
- Damages “may” not be awarded for infringing a patent in the 6m grace period for renewal.
- Damages may be restricted if you had to amend your patent to make it valid before enforcing (S62(3))
21
Q
When can a patent application be amended?
A
- Applicattion form PF1 can be amended any time before grant
S19 says: - The spec can be amended freely between search report (including ISR, from national entry) and exam report.
- The spec can be amended on response to a negative exam report
- If ‘positive’ exam report, applicant gets one chance to amend w/in 2m
- If exam report received before publication (i.e. combined search and exam report), can keep on making voluntary amendments before actually replying to the report.
- LIMBO. No amendment between “administrative” notification of grant and publication of grant in journal.
S.27 says: - Post grant amendment may be allowed by the comptroller. Not allowed if proceedings pending that may question validity. Retroactive to grant. No claim broadening. Anyone can oppose.
22
Q
What are the general requirements for amendment of a patent spec?
A
- No added matter (and no claim broadening post grant)
- Made in writing, identifying amendment proposed, stating reason.
23
Q
What errors can the comptroller correct?
A
- Translation
- Clerical
- Mistake
- Transcription
Note for any correction to a PATENT SPECIFICATION it must be immediately evident that nothing else (but the correction) could have been intended)
24
Q
What’s resuscitation of a patent application?
A
Correction of an erroneous withdrawal. This can only be corrected by “order” - essentially this means that the correction will also get published in the journal.
25
What acts can co-owners do independently in relation to a patent?
Independent: work invention, source essential means
Need agreement:
-license
-assign
-mortgage
-revoke
-amend
26
What are the requirements of an assignment of a patent?
- Made in writing
- Signed by the assignor
27
How and why should you register an assignment?
Form, fee. Evidence of assignment if form not signed by both parties (e.g. copy of assignment doc).
- Any person who acquires a later right in or under a patent/application is not affected by an earlier transaction if he did not know of it at the time of his own acquisition AND if it had not been registered or notified to the controller.
- If a person becomes proprietor or exclusive licensee before an act of infringement takes place, they can't be awarded COSTS or EXPENSES unless they've registered the transaction prior to the infringement (unless it's registered within 6m, or registration within that period wasn't practicable but it's registered as soon as possible afterwards)
28
By when should an assignment be registered and why?
If not registered within 6m (or as soon as practicable after that), costs and expenses are not awarded for infringing acts that occur prior to registration.
29
When and how can you apply to make licences of right available?
- Proprietor can apply for comptroller to make an entry in register than licences are avail as of right, ANY TIME after grant.
30
What are the effects of a licence of right?
- Renewal fees halved (need to repay if later cancel licenses of right)
- If infringer takes a licence of right (during infringement proceedings) damages are limited to 2x what would have been payable for a licence; and no injunction available.
- Licensee of right can request that proprietor defend themselves against infringement. If they don't , the licensee of right can bring proceedings under their own name.
31
What are the grounds for revocation of a patent?
1. Not a patentable invention (S1-4A and sched A2)
2. Entitlement *(can only be brought by a person w/ proprietary interest, can only be brought within 2y of grant unless show proprietor KNEW they weren't entitled)
3. Sufficiency (spec clearly and completely enough... PSITA)
4. Added matter
5. Claim broadening (result of amendment that shouldn't have been allowed)
32
In what proceedings might the validity of a patent be put in issue?
1. Infringement
2. Revocation
3. Actionable threat
4. Declaration of non-infringement
5. Disputed crown use
33
On what issues can the comptroller issue an opinion?
- Whether an act constitutes infringement
- Whether/to what extent a patent falls foul of novelty or inventive step
- Sufficiency
- Added matter
- Claim broadening
34
What documents can count as "novelty only" prior art?
- GB applications with an earlier priority date and published after. NB the abstract doesn't count as prior art!
- EP apps similarly (since they automatically designate GB - EPs even count if GB designation withdrawn before pub)
- PCT application which has entered the UK national phase
35
Who can apply for a patent?
Any person
36
Who is entitled to a patent?
- Primarily the inventor/joint inventors.
- In preference, anyone who is entitled to the property in the invention by virtue of [enactment or rule of law, or enforceable term of any agreement entered into before making of the invention]
- and to no other person
37
Who's the "inventor" of an invention?
The "actual deviser" of the invention
38
When is an invention made by an employee taken to belong to the employer?
- Where it was made in the course of the NORMAL DUTIES of the employee or in the course of specifically assigned duties and an invention might be reasonably expected to result.
OR
- Where it was made the course of DUTIES of the employee and, at the time, b/c of the nature of duties and particular responsibilities arising from them, they had a SPECIAL OBLIGATION to further the interests of the employer's undertaking.
39
When might an employee be compensated for an invention?
- Where the employee has made an invention belonging to the employer (for which a patent has been granted): having regard to the size and nature of the employer's undertaking, the invention/patent is of OUTSTANDING BENEFIT to the employer.
- Where the employee has made an invention that would belong to them BUT they've ASSIGNED it to the employer, if BENEFIT DERIVED BY THE EMPLOYEE is INADEQUATE in relation to the benefit derived by the employer (from the patent/invention), the comptroller may award compo.
40
What factors are taken into account when determining the amount of compensation awarded to an employee?
Compo shall be such as will secure the employee a FAIR SHARE OF THE BENEFIT WHICH THE EMPLOYER HAS DERIVED from the invention/patent or the assignment thereof.
Take into account:
- nature of employee's duties and remuneration
- effort and skill in inventing
- any other person's effort and skill/advice/assistance
- the employer's contribution (by provision of advice, facilities, opportunities and by managerial and commercial skill and activities)
41
Under what conditions may a UK resident not file a patent application overseas?
- If it might be prejudicial to national security or public safety
UNLESS
a UK application was filed for the same invention at least 6 weeks ago and there's no restriction under S22.
42
Under what conditions may a UK resident not file a patent application overseas?
If it might be prejudicial to national security or public safety, unless an application for the same invention has been filed more than 6 weeks ago in the UK, and there's no prevention order under S22.
43
When can publication of an application be restricted?
Publication can be restricted under S22 if it is considered prejudicial to national security, for up to 3 months from the due publication date.
44
When can a later filing be considered a 'first filing' for claiming priority?
A later filing can be considered a 'first filing' if the earlier filing was withdrawn, not used as a basis for priority, not published, and the later application has the same subject matter, state, and applicant.
45
When do monopoly rights begin in relation to a patent?
Monopoly rights begin on the date the grant of the patent is published in the patent journal.
46
When is the first renewal fee payable?
The first renewal fee is payable on the 4th anniversary of filing, due at the end of the month, with valid payment possible in the 3 months preceding and a 6-month grace period following.
47
What's the 'restoration period'?
The restoration period is 13 months following the 6-month grace period for payment of a renewal fee, during which the patent can be restored.
48
How is a patent surrendered and what are the effects?
- Proprietor can apply any time, in writing, specify no pending action for revocation or infringement (since this could result in RETROACTIVE loss of rights) or, if there is, provide full details of such action.
- Comptroller advertises in the journal
- Third parties can oppose
- If accepted, takes effect from date when NOTICE OF ACCEPTANCE (of surrender) IS PUBLISHED IN THE JOURNAL.
- Can no longer sue for prior infringements
- No right to compensation for any prior crown use
What information can be recorded in the register?
49
What information can be recorded in the register?
- assignment of a patent or application (or a right in it)
- mortgage of a patent or application (granting security over it)
- grant/assignment/mortgage of a licence or sub-licence under a patent
- death of a proprietor (and vesting of rights via assent)
- Any order or directions of a court or other competent authority transferring a patent/application (or rights in it) to any person
50
What events can you request to be notified in relation to a patent?
- Publication of application
- Notice of grant
- Patent not renewed
- Patent renewed within grace period
- Patent restored
- Application terminated or withdrawn
also:
- request for examination filed
- notice of grant published
- request for an opinion
- entry in register
- document became available for inspection
51
What's the deal with infringement that occurs between publication and grant?
Applicant has the same right to bring DAMAGES ONLY as if the patent had been granted. Can only bring proceedings once granted.
Infringer must have infringed claims as published and as granted.
Note innocent infringement defence - this would prevent damages from being awarded too. So best to notify infringer of you published patent (send them a copy) before bringing proceedings.
52
State three biotechnological inventions which aren't patentable.
1. Processes for cloning human beings.
2. Processes for modifying the germ line genetic identity of human beings.
3. Uses of human embryos for industrial or commercial purposes.
4. - Processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal, and the animals resulting from such processes
53
What are the exceptions around public disclosure?
A disclosure shall not be considered part of the state of the art if it occurred during a six month period preceding the filing in the UK of a patent app if:
a) disclosure resulting from obtaining invention unlawfully or in breach of confidence; or
b) disclosure at an officially recognised international exhibition (requires stating on filing and confirmatory evidence filed within four months of filing
54
What's an Arrow Declaration and when might you use one?
Declaration by a UK court that a certain product or process is obvious at a certain date (and therefore unpatentable). Provides certainty for clients wishing to operate in a certain area.
55
What can the Comptroller do if referred a question of entitlement?
Comptroller may "make such order as he thinks fit", but for example:
- Refuse grant (if not yet granted)
- Amend/excise contested parts
- Replace applicant/proprietor names w new party
- Order a licence of transfer a right in the application to the new party
- Order proprietor to comply
56
Why might the Comptroller allow a party to file a new application following entitlement proceedings?
If the application is refused, relevant subject matter is excised, or the patent is revoked.
57
How long does a party have to file a new application after entitlement proceedings?
The party has 3 months from the entitlement decision or the end of the appeal of that decision.
58
What is the effective filing date of a new application ordered by the Comptroller?
The new application effectively takes the filing date of the older application.
59
How can UK patent prosecution be accelerated?
- Request combined search and examination (by filing requests for search and examination simultaneously). No reason required.
- Request accelerated search and/or examination. In writing, needs reason. No fee.
- Request early publication
60
If requesting accelerated publication, when will the application be published?
The application will be published about 6 weeks from the request, provided the search is done and formal requirements are met.
61
How soon after publication can a patent, in theory, be granted?
3 months (to allow for third-party observations).
62
What are the four steps of the Aerotel/Macrossan test?
1. Construe the claim. 2. Identify the 'actual contribution'. 3. Check if the contribution falls solely within excluded subject matter. 4. Final check: Is the contribution technical?
63
What is reinstatement?
bringing a patent APPLICATION back to life after missing a deadline.
64
When will the Comptroller reinstate an application?
- Requested by applicant
- Failure to meet deadline unintentional
...UNLESS:
- a deadline extension is still available
- the missed deadline relates to:
1. proceedings before the Comptroller
2. a late declaration of priority with late filing
3. a reinstatement itself
65
What's the deal with acts that occur after lapse and prior to resuscitation?
| Resuscitation is correction of erroneous withdrawal
- any acts done under or in relation to application are valid
- a person who began in good faith to do an act which would have constituted an infringement (if the termination hadn't taken place) OR made serious and effective preparations to do so has the right to continue
66
Who can bring proceedings in respect of a Threat of infringement proceedings? (i.e. who can action a threat)
Any aggrieved person
67
When is a communication considered to contain a "threat of infringement proceedings"?
when the **recipient** would **reasonably** understand that
a) a patent (or published application) exists; and
b) someone intends to bring proceedings in respect of an act (or intent to do an act) in the UK
68
When can a threat **not** be actioned?
1) the threat is made in respect of:
- **making** or
- **importing** a product for disposal or
- **using a process** or
- **intent** to do any of the above
2) the threat is made to a person who **has performed or intends to perform** the above
3) The threat is **not an express threat** AND is contained in a **permitted communication**
69
In the context of threats of infringement proceedings, what is a "permitted communication"?
| ...and what is a "permitted purpose"?
A communication is a permitted communication if:
- the information that relates to the threat is for a **permitted purpose**; and
- that information is **necessary for that purpose** (and the person making the communication believes it to be true.
A **permitted purpose** is one of:
1) giving notice that a patent (or published application) **exists**
2) discovering **whether** or **by whom** a patent (or pub'd app) has been infringed by a manufacturer, importer or process-user
3) giving notice that a person has a right in or under a patent or pub'd app, where the recipient's awareness of that right may be relevant to any future proceedings
**Also, the court can treat any purpose as a permitted purpose if it is "just to do so" lmao**
70
In the context of threats, what is "necessary information"?
| hint: information necessary for a "permitted purpose"
Examples:
1) a statement that a patent is in force (or an app has been filed)
2) details of a patent or pub'd app or a right in/under it - that are **accurate** and **not misleading**
3) identification of a product or process related to an alleged infringement
71
You receive a notification of intention to grant. How long until the patent grants?
- If the notification of intention to grant is issued at first examination: two months (allows amendment or divisional filing)
- Otherwise: one month.
72
What's the test for interim injunctions set out in American Cyanamid vs Ethicon?
1. Is it a serious matter?
2. Where does the balance of convenience lie? (i.e. compare the inconvenience to the patentee if interim injunction *not* granted vs inconvenience to defendent if it *is* granted. **Prefer to maintain the status quo**
3. Would damages be an adequate remedy?
73
What are the deadlines for entering the national/regional phase of a PCT application in: UK, USA, Europe, Germany and Japan?
UK, Europe and Germany: 31 months from earliest priority
USA and Japan: 30 months from earliest priority
74
WHEN were the rules changed regarding the compliance deadlines of divisionals? What was the change?
Previously: if the compliance deadline of a parent application was extended, any divisional application would inherit that compliance deadline (as their *unextended* compliance deadline).
**For applications filed on or after 1st May 2023**, any divisional applications will inherit the *unextended* compliance period of the parent. This means that it's no longer possible to file "cascading" divisionals.
75
What's the deadline for filing missing parts of a UK application?
(Between filing and) **the preliminary exam**, OR within 2m of notification that a part is found to be missing.
NB extendable under R108(2). So if you receive a preliminary exam report that doesn't identify a missing part, you can still file one using R108(2) extension.
76
What UK deadlines are non-extendable?
- Declaration of priority (though you can make a request for *late declaration of priority* in some circumstances, this deadline isn't extendable per se)
- renewal deadline
- renewal grace period
- restoration
- application to reinstate a terminated application (1y)
77
FD1
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