Study Guide to the Patents Acts (2021)

Study Guide to the Patents Acts 13th Edition

STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

Doug Ealey 2021

0_Cover_Ealey_Spread.indd 1

13th Edition 28/06/2021 12:24:57

STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

13th Edition

The moral rights of the author have been asserted.

All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. © Doug Ealey, 2008-2021 Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20 – 23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-71-4 Printed and bound by Mimeo – www.mimeo.co.uk v.1-200621

For James, with thanks

Foreword to the 13th Edition This book sets out to achieve the opposite of such books as Visser and Hoekstra.

Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a straightforward reference that can be readily learnt by students taking the closed-book UK exams, and in particular FD1.

Hence it tries to replicate what (and how) a good student would remember the relevant law and practice after reading the source texts.

References to the Black Book are to the 9th edition, with further references to the first supplement as applicable.

It will be appreciated that a book which seeks to streamline and selectively present aspects of the law omits many subtleties, and is not itself a basis for legal advice. In spite of the care taken during the preparation of the book, the author does not accept any responsibility for errors.

Any comments on errors, or suggestions for improvement, are welcomed at the ‘P2 / FD1 Study Guide’ group on LinkedIn. This group, which is open to anyone to browse / join, also provides the opportunity to discuss exam issues with fellow students, and includes links to further resources and suggested revision time-tables to help synchronise the discussion process.

This 13th edition coincides with changes to the IP world caused by Brexit; as a result updates have been made throughout the book, and in particular to the designs section.

Finally, as ever my gratitude goes to Iain Ross for his work in publishing the book, and to the Patent Examination Board for their permission to reproduce exam questions.

Doug Ealey Southampton, April 2021

Contents

Part 1 UK Law...............................................................1 Table of Rules.................................................2 UK Patents Act...............................................3 Designs........................................................ 135 Part 2 Overseas Law.............................................159 Paris Convention....................................... 161 European Patent Convention................162 Patent Co-operation Treaty................... 177 United States.............................................182 Japan............................................................193 Part 3 Guidelines to Taking P2.......................... 199 Revision.......................................................201 Reading a P2 question............................204 Writing a P2 answer................................. 224 Worked Example....................................... 237 On the day.................................................. 245 Part 4 Common forms.........................................250 Amendment and Correction..................251 PCT Timelines...........................................256 GB Timelines..............................................259 EP Timelines.............................................. 263

Part 1 UK Law Table of Rules............................................ 2 1.1 UK Patents Act ................................... 3 1.2 Designs.......................................... 135

Study Guide to the Patents Acts (2021 edition)

1

Table of Rules Key: Rule No, Recited in section No, Referenced in Section No R3 5 R6 5, tables R7 5, 18 R8 5, 8 R9 5 R10 13 R11 13, 24, 32 R12 14 R15 14 R16 14 R17 15 R18 15 R19 15, 18 R20 8, 37 R21 8, 15, 17 R22 15, 17 R23 15A R24 15A R26 13, 16 R27 17 R28 18, 16 R29 18 R30 18, 8, 15-17, 20, 21, 117B, tables R31 19, 7, tables R32 20A R33 21 R34 24 R35 27, 75 R36 25, 46 R37 25 R38 25 R39 25 R40 28 R41 25 R42 29

2

R43 R44 R45 R46 R47 R48 R49 R50 R51-55 R58 R65 R66 R67 R68 R69 R70 R72 R73-87 R89 R90 R91 R92-97 R98-100 R101 R103 R104 R105 R107 R108 R109 R110 R111 R113 R114 R115

46, 47 32 32 32 32, 7, 13 32 32, 34, 117, tables 32, 7, 34, tables 118 81 89B 5 2 13, 15, 17, 18, 89A 89A 89A 89 Proceedings Proceedings, 46, 47 Proceedings, 11, 38 Proceedings, 40 74A 74B 32 32 32 117, 7, R75, tables 117 117B, 13, 15, 18, 77, 117, tables 117B 120 120, 119 15, 81 Proceedings Proceedings

Part 1: UK Law

UK Patents Act · section 1

1.1 UK Patents Act This first part of the book provides a simplified version of the UK patents act that is written to be easy to understand and memorise. It aims to replicate what a good candidate would remember from the source texts for the closed-book FD1 exam. In addition, legal and practical matters relevant to the exam are discussed as appropriate in notes for each section of the act.

Section 1: Patentability 1) A patent will only be granted for an invention that: a) is new; b) has an inventive step; c) is industrially applicable; and d) is not excluded by subsections (2) or (3) below or section 4A (method of treatment or diagnosis).

2) At least the following are excluded as patentable inventions: a) 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.

3) A patent won’t be granted where the commercial exploitation of the invention would be immoral or contradict public policy.

4) ‘Immoral’ and ‘contradict public policy’ do not necessarily equate with ‘illegal’. :

Legal Notes Definitions: • What is new, inventive and industrially applicable is defined by sections 2, 3, and 4 below respectively.

Other exclusions: • s1(2) is not an exhaustive list of exclusions.

• s4A outlines exclusions based upon methods of treatment or diagnosis.

• Schedule A2 (‘Biotechnological Inventions’), introduced by s76A, also excludes from patenting:

Study Guide to the Patents Acts (2021 edition)

3

UK Patents Act · section 1-2 – the human body and gene sequences discovered in it (though 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 where harvested from embryos – see also decisions G2/06 and C-34/10 for the EPC. – meanwhile parthenotes (being non-viable due to a lack of paternal DNA) are not excluded – see International Stem Cell Corporation v Comptroller C-364/13; – genetic modification of animals that is likely to cause suffering without giving rise to significant medical benefits; and patenting the resulting animals themselves; and – inventions relating to individual plant or animal varieties (covered by UPOV).

– Notably, however, Schedule A2 explicitly states that an invention shall not be considered unpatentable simply because it concerns a product comprising biological material, or a process using, producing or processing biological material. It similarly allows the patentability of biological material isolated from its natural environment by a technical process. See §76A.02 of the Black Book (BB) 9th Ed., and http://www.legislation.gov. uk/cy/uksi/2000/2037/made). Meanwhile see §76A.17 of the 9th Ed. for a summary of the patenting of plants and animals exclusively obtained by means of an essentially biological process.

‘As such’: • The exclusions in s1(2) are limited to where the invention relates to those things ‘as such’.

The current process for determining whether a claim is related to an excluded category as such is laid out in Aerotel / Macrossan [2006] EWCA Civ 1371 and Aerotel [2007] R.P.C.7: i. Properly construe the claim; ii. Identify the actual contribution; iii. Ask if this falls solely within an exclusion; iv. (Check if the actual contribution is technical).

Jacob LJ suggests that step ii. (which is basically where ‘as such’ gets decided) equates to ‘What the inventor really added to human knowledge’.

• The case law on patentability, particularly for the exclusions under s2(1)(c), changes frequently. The CIPA Journal is a good source of summaries on significant current case law.

See also BB 9th Ed, §1.06.

Section 2: Novelty 1) An invention is new if it does not form part of the state of the art.

2) The state of the art is all matter made available to the public at any time before the priority date of the invention’s application.

3) a)b) For the purposes of novelty only, the state of the art also comprises matter in a patent

4

Part 1: UK Law

UK Patents Act · section 2 or application having an earlier priority date than the invention’s application, but published on or after the priority date of the invention’s application.

4) A disclosure of the invention shall not be considered part of the state of the art if the disclosure occurred during a six-month period preceding the filing date in the UK of the invention’s application, and either: a) the disclosure was due to or resulted from the invention being obtained by anyone unlawfully or in breach of confidence… i) ii)… from the inventor or anyone holding the invention in confidence or to whom the matter was disclosed in confidence by either the inventor or someone already in confidence, or b) the disclosure was made in breach of confidence by anyone (already) holding the invention in confidence or to whom it was disclosed in confidence, or c) the disclosure was due to or resulted from the inventor displaying the invention at an officially recognised international exhibition, and the inventor subsequently states this on filing the application, and supplies confirmatory evidence within four months of filing (R5).

5) ‘Inventor’ includes ‘proprietor’ for the purpose of the above subsections.

Legal Notes Novelty-Only Prior Art: • s2(3) simply aims to prevent double patenting (i.e. multiple patents for the same invention in the same country), and is the only case where art not published before the priority date counts as novelty destroying.

• Type of prior filing published on or after your priority date: 1. GB application 2. EP application 3. PCT application validly entering GB national phase 4. PCT application not entering GB national phase 5. PCT entering EP regional phase 6. Any other non GB, EP or PCT application

s2(3) art?

Yes1 Yes2 Yes No Yes2 No

Except for its abstract, which is not part of the state of the art for the purposes of s2(3) – see s14(7).

For EP applications filed after 13/12/2007, even if the GB designation is withdrawn before publication then that publication is still s2(3) art as all states are automatically designated by default and hence any EP application with an earlier priority and later publication is treated as citable for s2(3). See s78(5A) and BB 9th Ed. §78.04. PCT filings are treated as EP filings in the EP regional phase. (Before 13/12/2007, old A54(4) applied and only overlapping states were citable under A54(3), whilst for s2(3) to apply the EP application had to be validly published with a GB designation).

1 2

Study Guide to the Patents Acts (2021 edition)

5

UK Patents Act · section 2 • Thus generally, where such a published application is or suggests it should become a GB patent application or patent, then it is likely to be citable as s2(3) prior art.

• Note that for s2(3) novelty-only prior art, ‘published’ means ‘validly published’ – an application is not validly published if a request for withdrawal of the application was received too late to prevent publication – see BB 9th Ed. §2.11. Recall that the purpose of s2(3) is only to prevent double patenting, which is still avoided by the withdrawal. However, for applications with priority dates after such an invalid publication it is still citable under s2(2), as it has nevertheless been made available to the public.

• Also note that s2(3) applies where an earlier application has been kept secret (i.e. prior publication was prevented) until after your priority date (see s22(3)(a)).

Six-month period: • Note that the deadline under s2(4) is six months before the filing date of the UK application, irrespective of any priority filing made elsewhere after the disclosure (see BB 9th Ed. §2.14).

– Notably the filing date of a PCT(GB) will count as the filing date of a resulting GB national phase application. However in this instance, specifically to make use of s2(4)(c) the applicant must have informed the receiving Office of any exhibition on filing, and must then provide the UKIPO with confirmatory evidence within two months of entry into the national phase (R67(2)).

– EP applications use corresponding Article 55 EPC, and similarly requires an EP (or PCT(EP)) filing date within six months of breach / exhibition.

Practice Notes General: • In FD1 there is frequently an ambiguous aspect to an infringement, ownership or disclosure scenario. Consequently, it is important to identify any questions you may need to ask the client. Sometimes there simply will not be enough information to reach a definitive conclusion and so it will be necessary to consider several outcomes to a greater or lesser extent, for example to give advice on the more likely outcome together with a hedging position.

– Hence where it is unclear whether a disclosure was in confidence, a reasonable approach is to write ‘If the disclosure was in confidence, then… [comment]. However, if the disclosure was not in confidence, then… [comment].’

Disclosure or the lack of it is a favourite FD1 Question: • For matter to be deemed ‘made available to the public’ it does not require that the public became aware of the matter as a result of the disclosure; a book on a library shelf is a public disclosure whether anyone reads it or not. However, it does require the disclosure to be enabling, which for example the public use of an invention may not always be (see Lux Traffic [1993] RPC 107 Ch D (Pat) or Asahi [BL O/98/89]). The test is whether enough information is revealed to enable a person in the relevant field to replicate the invention. Hence also

6

Part 1: UK Law

UK Patents Act · section 2

•

• •

•

availability to the public must be reasonable; for example if it required ‘the public’ to loiter deliberately or visit on multiple occasions in order to glean an enabling disclosure, then this would not be considered a public disclosure – see Emson v Hozelock [2019] EWHC 991 (Pat).

Similarly the library example above assumes reasonable accessibility to the book. However, for internet publications, accessibility and hence effective publication was questioned in the test case T1553/06 (Philips), which would likely be followed in the UK. In response to the possibility that the document may be online but unfindable by the public in practice, the following test was derived: A document having its own URL is available to the public if – i. it can be found using a public search engine and keyword(s) related to ‘the essence of the content of the document’; and ii. it remains online long enough for a member of the public to have direct and unambiguous access to the document.

By contrast, in sister case T2/09 (Philips), it was made clear that emails are not made available to the public by virtue of being conveyed via the internet.

More generally for Internet publications, where content can change subsequent to a supposed publication date, the UKIPO and EPO still require that evidence for a particular date is convincing, but do not require proof ‘up to the hilt’; rather, they use a balance of probabilities approach to the content and/or the marked date, based for example upon the reputation of the publisher and how any date is applied to the document (e.g. if generated automatically with a blog post it is likely reliable) – plus of course on any concrete evidence either way. See for example EPO Guidelines G-IV 7.5.2, and T 545/08 for a case where a cited online publication did not meet this standard.

It is a good practice to obtain proof of a claimed date of disclosure – while there is often a presumption that a date associated with a document is correct, this may not always be so. The exam often hints at this by only giving a month or a range of dates, or by saying a document is [merely] marked with a date. Be seen to investigate such ambiguities and consider the possible outcomes.

Non-disclosure: • A breach of confidence requires an ‘air of confidence’ at the time that the information is imparted or acquired that causes the recipient to understand that the information is confidential – therefore attempt to get proof of the given situation – preferably a signed NDA or an affidavit, although the latter may only confirm its author’s understanding of events and not those of other parties. If no proof is available or the situation is ambiguous, consider both disclosure and non-disclosure in your answer.

• An air of confidence is unlikely if a document is simply forgotten and left somewhere as a consequence of carelessness. Ask if the document was marked ‘confidential’. File an application ASAP before a verifiable publication of the information occurs, but warn the client that grant may not be possible depending on the facts.

– Sometimes in FD1 a partial or non-enabling version is published by a third party. Request your document is returned and no further publications are made. File an application

Study Guide to the Patents Acts (2021 edition)

7

UK Patents Act · section 2-3 with the UK or EP as soon as possible. Warn your client that grant may not be possible depending on the facts.

– Where there is no air of confidence, then an inventor may not get a patent in the UK or Europe (A55(1) EPC) under these provisions. However, recall that there is a one year grace period for UK and European designs (see part 1.2 below), which may provide some last-resort complementary protection.

• If you think someone will breach a confidence (e.g. a disgruntled employee is about to leave), preferably file an application immediately so as to forestall any problems; in principle in this situation you will have the six-month grace period of s2(4), but it is inadvisable to rely on this if a safer alternative is available; you may have no proof of the provenance of follow-on publications, making s2(4) hard to use, and it can complicate overseas filing if you have to rely on respective protections provided elsewhere for these – see for example Art 55 EPC in part 2.2 of this book.

• In FD1 such a person is also likely to file their own patent or work the invention, so monitor them (e.g. using a caveat, PF49) and in time consider use of s8 (entitlement proceedings) and/or s61 (infringement proceedings) as appropriate.

Section 3: Inventive Step An invention comprises an inventive step if it is not obvious to a person skilled in the art who knows all matter in the state of the art (excluding novelty-only art falling under s2(3)).

Legal Notes General: • Inventiveness and obviousness are never defined in concrete terms within the statute. This allows them to be responsive to the context of individual cases and current trends, resulting for example in the modification of the classic Windsurfer test: Windsurfer / Pozzoli: • The default assessment for inventiveness for years was Windsurfing v Tabur Marine [1985] RPC 59, which like most such tests places a carefully considered context around the original question in order to achieve a regularity of interpretation. The test was then slightly reformulated in Pozzoli v BDMO [2007] EWCA Civ 588.

• The steps are now: i. identify the notional person skilled in the art and the relevant common general knowledge of that person: ii. identify or construe the inventive concept in the claim; iii. identify what, if any, differences there are between the material forming the state of the art and the invention as identified or construed; and iv. decide, without any knowledge of the proposed invention as claimed, whether these differences would have been obvious to the skilled person or whether they required any degree of invention.

8

Part 1: UK Law

UK Patents Act · section 3-4 The skilled person: • … is a hypothetical person (or team of people, including people from interacting disciplines where this is applicable, such as in a multidisciplinary invention), who is of average skill in the art and is not themselves inventive, but who nevertheless knows all the prior art.

• Thus inventiveness is essentially a question of whether the skilled person would have a clear reason or direct motivation to make the particular modifications to the prior art required to arrive at the invention.

• In this regard there are a number of so-called ‘secondary indicia’ of inventiveness, such as prejudice in the art against an approach, or a long-felt want for the effect the invention achieves, which can be used to bias a consideration of reason or motivation. Generally these cannot be relied upon as evidence of inventiveness per se, though see Virgin Atlantic Airways v Premium Aircraft Interiors UK [2009] EWCA Civ 1062 for a case where the previous failure of anyone to implement a simple alternative seating pattern for aircraft suggested its inventiveness.

• For the European approach to inventive step (the problem-solution approach), see A56 in part 2.2 below.

Section 4: Industrial Applicability 1) An invention is industrially applicable if it can be used in any kind of industry, including agriculture.

Legal Notes Interpretation of ‘Industrially Applicable’: • s4 should conform with Article 57 EPC. EPO guidelines G-III 1 indicates that ‘industrial’ is ‘physical activity of “technical character”’ belonging to ‘useful or practical arts’. Therefore, it is not limited to ‘industrial’ activities like manufacture, but it does exclude the aesthetic arts.

• s4 is therefore unlikely to eliminate any invention not already caught by s1(2)(a-d) or the other exclusions noted previously.

• For the specific case of gene sequences, a plausible use for the resulting protein is required to confer industrial applicability – see Eli Lilly v Human Genome Sciences [2011] UKSC 51. The use must then actually occur in a subsequent product for that product to also be patentable – see Monsanto v Cefetra C-428/08.

• Medical treatments and diagnoses are dealt with in s4A below.

Section 4A: Methods of treatment or diagnosis 1) A patent shall not be granted for: a) a method of treatment of the human or animal body by surgery or therapy; or b) a method of diagnosis practised on the human or animal body.

2) However, substances and compositions for use in such methods are allowed.

Study Guide to the Patents Acts (2021 edition)

9

UK Patents Act · section 4A 3) The use of a substance or composition in such a method is considered new even if the substance or composition itself is known in the art.

4) A (further) specific use of a known substance for such a method is considered new if the specific use is new.

Legal Notes Definitions – Treatment • Treatment is ‘of the human or animal body’. Therefore a method of purifying donated blood plasma to go in packs does not fall under this exclusion, whilst purification of a patient’s blood through a dialysis machine does fall under this exclusion.

• s4A(1)(a) suggests that the purpose of a non-surgical treatment is to achieve a therapeutic effect. This is not limited to curative or preventative treatments, but to any treatment that alleviates a cause or symptom of a medical condition Purely cosmetic treatments by contrast are not considered therapeutic, and therefore do not fall under the exclusion. However, whilst there is also some European case law (e.g. T144/83) to suggest that treatments where the primary intent is purely cosmetic are allowable, any incidental or potential therapeutic effect can militate against this (see BB 9th Ed. §4A.04)).

• In general, a treatment comprising a step which requires or affects the action or supervision of a physician is not patentable, as the purpose of the exclusion is to allow the free practice of medicine.

By Surgery • Surgery can be defined as ‘non-insignificant intentional physical intervention’ and is not necessarily of an invasive nature (e.g. the application of butterfly stitches).

• Note that surgery is not explicitly limited to therapeutic surgery by s4A(1)(a) and so encompasses therapeutic and cosmetic surgery. However case law suggests that surgery should nevertheless be suitable for maintaining or restoring heath (i.e. ‘treatment by surgery’ has some inherent therapeutic aspect). Thus in T182/90 the removal of body hair for purely cosmetic purposes was not considered ‘treatment by surgery’. The decision of G1/07 generally affirmed this position.

By Therapy • A therapy can be corrective and/or preventative, or simply alleviate a medical condition.

• A therapy can address a symptom and/or an underlying cause.

• Pest control is a therapy for the pest’s victims (e.g. killing tapeworms or tics).

• Therapy assumes relief of a medical condition – therefore ‘Use of X to combat troublesome snoring’ is not considered therapy and so is allowable – c.f. cosmetic treatments above.

Diagnosis • A diagnosis is more than simply an acquisition of data, but also includes some medical decision phase.

10

Part 1: UK Law

UK Patents Act · section 4A-5 • In addition, it must be practiced on the body. Therefore extra-corporeal diagnoses such as cancer screening of smears can be patented, as can epidemiological analyses.

• Like therapy, diagnosis also assumes a medical condition (i.e. a pathology) – therefore for example pregnancy tests are not diagnoses and so are patentable.

Materials (substances, compositions, etc): • As noted above, substances and compositions for use in surgery, therapy and diagnosis are generally all patentable. In addition, surgical and other medical equipment is also generally patentable.

First and further medical uses: • s4A(3) and (4) distinguish the first and subsequent uses of a substance in medical methods.

• This allows a generalised purpose-based product claim for the first application of a substance, as in ‘Substance X for use as a medicament’; then in order to be novel, a second application has to specify a different medical use, as in ‘Substance X for use in the treatment of disease Y’, when X is already known as a medicament for conditions other than Y. • This format for such further medical use claims replaced the previously used ‘Swiss type claim’ as of 29/01/11, following the decision in G 2/08. Subsequently the UKIPO issued a practice note also adopting this ruling. As a transitional provision, pending applications could be amended from the ‘Swiss’ format to this new form of words. As such one no longer refers to ‘Swiss claims’ except in the context of previously granted patents using the format.

• The principle of second use has seen some limited overspill into non-medical areas, as in Mobil Oil – Friction Reducing Additive G2/88, where the additive was also a rust inhibitor.

Section 5: Priority 1) By default the priority date is the date of filing…

2) … but one can declare (Rule 6) one or more earlier relevant application(s) filed by the applicant or their predecessor in title as a priority document within the period specified below (see 2A). If so declared, then a)b) t he priority date of any matter, including any supported invention, is the filing date of the earliest disclosure (Rule 3) of that matter in the priority document(s).

2A) a) T he normal filing period for the application is 12 months from the earliest claimed priority, b) but with permission of the Comptroller under 2B below, this can be further extended by a prescribed period of two months.

2B) T he applicant can request a late declaration (for use with a ‘late’ filing under 2A(b)) from the Comptroller up to two months after the end of the priority year (i.e. two months after the 12-month period of subsection 2A(a)).

Study Guide to the Patents Acts (2021 edition)

11

UK Patents Act · section 5 2C) The Comptroller will grant the request under 2B, only if a) the request complies with the rules (use form PF3, within the two-month period), and b) the Comptroller agrees that the failure to file the application claiming priority within the normal time was unintentional (requires evidence).

3) A repeat filing of subject-matter will be disregarded as a basis for priority itself, unless the first filing lost all rights by withdrawal or refusal before publication, including the right to act as priority for any application anywhere – and hence has no rights outstanding – on or before the day the second application was filed in the same country as the first (see BB 9th Ed. §5.30).

4) Determination of the priority date is the same for applications and patents.

5) Related matter can be from a suitable application from the UK or any convention country.

Rules If filed up to the normal 12-month period of s5(2A)(a)…

R6 Declaration 1) Either declare priority at the time of filing…

2) … or within 16 months from the declared priority date (using PF3 and paying £40) 3) – provided in this latter case there is no effective request for early publication.

4) The declaration includes the country and date of filing of earlier application(s).

– The application number(s) and a certified copy are also required – see R8.

5) One cannot add (further) priorities when filing divisionals.

If filing late…

R7 Late Declaration 1) The period in s5(2A)(b) is two months after the normal 12-month priority period.

2) Subject to (4) below, a request under s5(2B) must be a. made on form PF3 (paying a late fee of £150), and b. supported by proof that it was unintentional to file the application late.

3) If no proof is given, the Comptroller will specify a period in which to file it.

4) For divisionals and applications filed following disputes (s15(9) and s8, 12(6) or 37(4)) the request under s5(2B) can simply be in writing, with no proof required.

5) A request must be made within the plus two months specified by s5(2A)(b)…

6) … but divisionals and applications following disputes that are filed after the plus two months may nevertheless make the request on the day they are filed.

7)8) The request can only be made if: a. there is no effective request for early publication of the application claiming priority (subsection 8); or b. the request is in relation to a PCT(GB) (included to conform with R49ter.2(f) PCT;

12

Part 1: UK Law

UK Patents Act · section 5 designated offices can restore priority), in which case one has one month after the national phase begins to make a late declaration (R66(3)).

9) When requesting late under s5(2B), one must declare priority at the same time as filing the request (i.e. no there is no 16-month option as in R6).

Legal Notes Priority Summarised: • If one files an application within or at 12 months from the earliest priority, one can declare priority at the same time (the normal procedure). Or: • If one files an application within or at 12 months from the earliest priority, then under s5(2) and 5(2A)(a) in conjunction with R6, alternatively one has up to 16 months from the earliest priority to declare priority using PF3 and a fee of £40. Or: • If one unintentionally misses the 12-month convention deadline when filing, then under s5(2B), 5(2C) and R7, one can request a ‘late’ filing of the application up to plus two months from the earliest priority (i.e. 12+2 months), but must declare priority when filing the request (R7(9)), and pay a late fee of £150 and the £40 declaration fee. Use PF3 and provide evidence of why the late filing was unintentional. Obviously the application must also be filed within this period too, typically with the request. But… • … the latter two options require that no request has been made for early publication of the application claiming priority (R7(8)), or that such a request is withdrawn in time to prevent publication.

• Meanwhile, for PCT(GB) applications, a late declaration can be made within one month of the beginning of the national phase (R66(3)).

• Note that form PF3 has a useful flowchart covering this on its reverse.

Multiple and partial priorities: • A claim may be a fusion of two inventions into a single concept – see s14(5)(d), or s125(2): • Therefore one or both inventions may have priorities, resulting in partial or multiple priority claims.

• If a broad claim encompasses embodiments with different priority dates, it only takes one embodiment being anticipated by prior art for the whole claim to be invalid, even if earlier priority dates exist within the claim scope.

• Similarly, different claims may have different priorities and hence have different prior art citable against them.

Valid priority documents: • WTO/WIPO/PCT member patent applications (including US provisionals) and utility models; see BB 9th Ed. §5.31.

• Priority is claimed from the matter as first filed. Therefore, for example, an EP application claiming priority from a JP application cannot itself be used as a priority document for the matter originally found in the JP application. Similarly, if one files a PCT application that

Study Guide to the Patents Acts (2021 edition)

13

UK Patents Act · section 5 adds new matter to an earlier GB application, one can only claim priority from the PCT application with regards to the new matter; in this case one should claim priority from both documents to file a third application to the whole matter. Remember that in such cases the 12-month period is with respect to the earliest priority being claimed.

• Likewise, if one files a US application that adds new matter to an earlier US provisional application, one can only claim priority from the US application with regards to the new matter and one should claim priority from both documents to file a third application to the whole matter. A similar situation exists for a US Continuation-in-Part application.

By contrast, a US Continuation application should not add matter beyond the original application and hence should never be used as a basis for priority.

• As provided for by s5(3), it is possible for a second application to be treated as a first application for the purposes of acting as a priority document if the previous application was withdrawn with loss of all rights prior to publication and was never used as a basis for priority itself – see A4(4) PC in section 2.1 of this book for the law underpinning this principle.

Requirements for filing priority documents: • A certified copy of a priority document must be filed within the 16-month period (R8) unless a copy is already available to the Comptroller (e.g. if it is a PCT(GB) application and the priority documents were previously submitted to WIPO).

• The Comptroller can request translation of the priority document (R9(4)(a)) within a specified period if the exact nature of the matter in the priority document is in doubt or is key to a determination of novelty/inventive step (R9(1)(c)). Alternatively, one can provide a declaration that the application as filed is a translation of the priority document (R9(4)(b)).

A claim to priority not filed in English or Welsh is not required to be accompanied by a translation (R113(2)(b)).

Valid applicants: • In Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat), Cook employed one of the three original inventors named on a US provisional application, and then filed a PCT (as the sole applicant) by virtue of employment of this inventor. Assignments from the other two inventors were obtained during the international phase. In due course a GB patent issued and was contested by Edwards. It was found that (contrary to section 5.19 of the Manual of Patent Practice at the time) it was not enough that the US and PCT applications had one applicant in common to validly claim priority; either the PCT application should have been filed with all three applicants, or Cook should have secured assignments from the other two applicants prior to claiming priority. Thus ‘the applicant’ should be considered a collective term for the purposes of s5(2). In response to this change, the UKIPO suggested as a possible solution (and depending on the specifics of the case) the use of amicable (uncontested) entitlement proceedings to revert the ownership back to the original inventors at the date of filing, thus enabling a right to claim priority under the interpretation of Edwards v Cook before assigning back to the company.

14

Part 1: UK Law

UK Patents Act · section 5 • Generally speaking, in the UK the applicant(s) or their successor(s) in title should thus hold the complete equitable (substantive) right in the invention in order to claim priority.

Furthermore it is advisable that any assignment explicitly assigns the right to claim priority for future patents as well as the current patent right(s).

• The EPO was expected to follow a similarly restrictive approach, with ‘any person’ in Article 87 EPC effectively being interpreted to require priority rights from all applicants (either by assignment or as co-applicants), based on J19/87, T 0788/05 and others; and this was confirmed in T 0844/18 (Broad Institute / CRISPR).

‘Convention Country’: • All WTO states plus a few others. For a current list, see BB 9th Ed. §90.03 or http://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct_paris_wto.pdf, or search for ‘pct paris wto’ at the WIPO website.

• For a PCT(GB) application, an applicant also has one month from the beginning of the national phase to make a late priority declaration under s5(2B) (R66(3)) if this had not been done previously. If a certified copy was also not filed during the international phase, the UKIPO will then invite the applicant to do so, setting a reasonable time limit (BB 9th Ed. §89A.19).

Relation of priority to s16 (Publication): • If an application is published, then loss of a claim to priority will not affect subsequent timelines. By contrast, in the PCT changes to priority affect the remaining timeline throughout the international phase. See part 4 of this book for common timelines.

International Equivalents: • All based on the Paris Convention Art. 4 (see Part 2) • EPC – Art. 87(1) and (4); PCT – Art. 8; US – 35 USC 119; JP – Art 41.

Practice Notes Proof of priority: • The onus of proof is on the applicant to show that the priority document exists.

• If priority is contested, the onus of proof is on the objector to show that the priority document is insufficient (i.e. non-enabling – see legal notes to s14).

Nature of priority: • To claim priority from a document it must provide support for the invention. In practice a novelty-style comparison is used to determine support. Therefore, priority documents must disclose all essential features of the invention, or these must be ‘clearly and unambiguously derivable’ from them (see s14 below for commentary on the terms sufficiency, enabling and support).

• Thus for the purposes of FD1, by default the priority date is the date that the subject-matter was added to the application (excluding impermissible amendments) and thus, basically,

Study Guide to the Patents Acts (2021 edition)

15

UK Patents Act · section 5-7 material cannot claim priority if it was not present in the priority document. Meanwhile material added, for example at the PCT filing date, gets priority from that later date.

Withdrawal of the priority document itself: • Loss of the priority document (e.g. abandoned, lapsed or refused) is OK. However, if the document is lost before filing the subsequent application claiming priority, it is advisable to explicitly reserve the right to claim priority from it, e.g. when notifying the Comptroller of withdrawal, or in response to a notification of refusal, to avoid it being interpreted as desiring a full loss of rights as per s5(3).

Withdrawal of a priority declaration (Rule 3): • A declaration of priority can be withdrawn, in the case of a PCT(UK), before the national phase begins, or for any other UK case, before preparations for publication of the application are complete (c.f. s16, practice notes).

Late declarations: • As well as costing more, a late declaration of priority under R6 leaves less time to correct errors in the priority claim (the deadline for this being 16 months from priority), and also prevents the option to file missing matter without re-dating (see s15(7)(a)).

Section 6: Priority – Intervening Acts 1) Acts occurring between filing a first application and filing a second application claiming priority from the first don’t affect priority.

2) Where an ‘act’ is, for instance, a relevant publication of the first invention, or the filing of another application by a third party that includes the invention of the first application.

Legal Notes General: • There is no corresponding provision in EPC, and it is doubtful it has any real effect.

• Basically, it restates s5(2); i.e. that the effective filing date is the priority date.

Section 7: Right to apply for and obtain a patent 1) Any person may apply, either singly or jointly with another (c.f. s36). However; 2) The patent may only be granted to: a) the inventor/s; b) or in preference, a person entitled by agreement, law or treaty – e.g. an employer (c.f. s39), trustee or receivers, or

16

Part 1: UK Law

UK Patents Act · section 7 c) a successor in title to either of the above.

3) An inventor is a (single or joint) deviser of the invention.

4) There is a default assumption that the applicant is entitled to the granted patent.

Legal Notes Interpretation of ‘Any person’: • s.30 says patents are personal property and therefore the applicant must be a natural or legal person.

• This therefore excludes unincorporated partnerships, though individual partners are eligible (as are LLPs).

Interpretation of ‘Inventor’: • A person who merely gives advice or assistance is not a co-inventor (c.f. s43(3)). However, a person’s material contribution to an invention can nevertheless be of minimal value (see Coupling Technology v Coupling Solutions BL O/342/13, or BB 9th Ed. §7.10). This is consistent with the retention of all inventor names after amending a claim in response to prior art, which may remove the entire contribution of one inventor from the claims. Hence ‘an inventor’ can be thought of as someone who contributed materially to what was thought to be the invention at the time of its devising, however small that contribution originally was or ends up being in the claims.

Practice Notes To change applicant details there are three options (see BB 9th Ed. §7.13): i. Apply to correct PF 1 by a. filing a request in writing under R49 (correction of name and address) or R50 (correction of error in register), with written evidence of reasons, or b. filing a request in writing under R105 (correction of error in application)… … if a clerical or translation error. ii. File a request in writing under R31 (amendment of application), if PF 7 has not been filed, or iii. File PF 21 under R47 if registering a transaction.

Entitlement (c.f. s8): • An applicant cannot be entitled via unenforceable assignment (c.f. s42(2)), e.g. any assignment that diminishes an employee’s rights.

• Entitlement should be clearly established, as its lack is grounds for revocation under s72(1)(b) after grant. This ground lasts two years from grant only, unless the ‘owner’ was knowingly fraudulent, and after grant can only be raised by a potentially entitled person – see s37 and s72(2)(b).

Study Guide to the Patents Acts (2021 edition)

17

UK Patents Act · section 8 • From s7(4) it follows that the onus of proof is on the second party to prove lack of entitlement of the first, except possibly under s39(2) for employer-employee cases.

Section 8: Procedure to Resolve Entitlement 1) Before grant (use s37 after grant): a) any party (including non-applicants) may refer a question of entitlement to the Comptroller, or b) one or more co-applicants may approach the Comptroller regarding transfer of entitlement to any other person, and the Comptroller will make any order he sees fit: 2) Following 8(1)(a), for a pending application the Comptroller can a)b) replace some or all applicant names with new party/s c) refuse to grant a patent, or amend to excise contested elements of it d) order a licence or transfer of a right in the application to the new party/s 3) If following s8(2) the new party’s elements of the application are excised, or the application is refused or withdrawn, then the Comptroller may order that the new party can file a new application for those elements (subject to s76 – no added matter) within a prescribed period (three months from decision or end of appeal – R20), which is treated as having been filed on the date of the older application.

4) Following 8(1)(b), the Comptroller can order the transfer of a right in the application between parties.

5) If an order under 8(2)(d) or 8(4) is ignored by the ordered party for 14 days, the Comptroller can permit the other party to implement the order.

6) Potentially affected parties are informed.

7) The Comptroller can pass the matter on to the courts.

8) Trustees and representatives of deceased parties can still pursue entitlement.

Rules R21 Extensions for new filings 1) For new applications arising from disputes under s8(3), 12(6) and 37(4) or divisionals under s15(9), one has the later of two months from filing or 16 months from priority to: a) declare inventorship under s13(2), and b) file priority documents under R8.

18

Part 1: UK Law

UK Patents Act · section 8 2) But if the new application is filed within six months of the R30 compliance period (see s18), then the inventorship and priority documents must be supplied at filing.

3) Where appropriate, information identifying what biological material was originally deposited by who, and where, and authorisation by the depositor to use this material, must be provided by the later of the date of filing or 16 months from priority.

Legal Notes Dispute Summary: • Entitlement disputes use s8 for UK applications and s37 for UK patents, or s12 for foreign applications. Note that there are no UK provisions to deal with foreign patents, but where a foreign application grants during s12 proceedings then the proceedings can continue – see Innovia Films v Frito-Lay [2012] EWHC 790 (Pat) or BB 9th Ed. §37.04.

• Joint applicant disputes use s10 (if one applicant is not entitled, use s8 in parallel) • Inventorship disputes use s13 – but use s12 for foreign e.g. EPC(GB), PCT or other overseas applications; for EPC(GB) applications, use together with A61 EPC. • Disputes use the rules for proceedings heard before the Comptroller, found at the end of Part 1.1 of this book. See BB 9th Ed. §8.09-10 for a run-through of a typical entitlement process.

Entitlement: • Basically, entitlement can only arise via a chain of rights that originate with those who made an inventive contribution to the subject-matter of the invention.

• ‘Invention’ in this case is not restricted to ‘patentable invention’, as entitlement can be disputed prior to grant or even prior to filing an application. Moreover, prior art (which as noted previously may knock out one party’s contribution during prosecution) is not considered for purposes of entitlement. Therefore, ‘the invention’ is the inventive concept thought to have been made at the time of its devising. It will be appreciated, however, that since rights only arise from inventors (who materially contribute to the devising of the invention), it can be important to establish who the inventors were as a preliminary step if this is in doubt. See BDI v Argent [2019] EWHC 765 (IPEC).

• Note that this situation is slightly different after grant (see s37).

Practice Notes General: • In FD1 there is frequently an ambiguous aspect to an infringement, ownership or disclosure scenario. It is important to identify who owns what. Remember that there must be a chain of entitlement (i.e. proper transfers or rights) from the inventor to the current owner. If this chain is in doubt, then discuss the possible ownership scenarios that arise.

Study Guide to the Patents Acts (2021 edition)

19

UK Patents Act · section 8-10 Entitlement dispute considerations: • Consider an amicable agreement (e.g. assignment or a comfort letter) if sensible.

• Be seen to check agreements and the facts of the case.

• Attempt early settlement where the other party is clearly wrong – point out they could bear costs in court if they reject such an offer (see BB 9th Ed. 61.37).

• Consider accelerated prosecution due to likely infringement by the other party (see s61 below).

Effects on proceedings: • The procedure under s8 does not delay publication or prosecution of the case in the UK. If s8 proceedings do not conclude before grant, then s9 allows them to continue under s37 (post grant entitlement proceedings). However, proceedings for a corresponding EP case can be suspended pending the outcome (e.g. if the GB application is the priority doc for the EP application) – See R14(1) EPC. Entitlement of the EP application can be determined in the UK under s12.

Section 9: Determination After Grant of Questions Referred Before Grant Because referral under s8 does not affect prosecution timelines, s9 states that if the contested application gets granted before the referral is resolved, then the referral is to be treated as a s37 referral.

Legal Notes • This is at the Comptroller’s discretion, but is generally allowed.

Section 10: Handling an Application by Joint Applicants If joint applicants disagree with how to prosecute a case (e.g. one of them wants to drop it) then the Comptroller can be asked by any of the parties to arbitrate and direct how to proceed, and/or alter the number of applicants.

Legal Notes Dispute Summary: • Entitlement disputes use s8 for UK applications and s37 for UK patents, or s12 for foreign applications. Note that there are no UK provisions to deal with foreign patents.

• Applicant disputes use s10 (if one applicant is not entitled, use s8 in parallel).

• Inventorship disputes use s13 – but use s12 for foreign applications such as EP, PCT or other overseas applications; for EP applications, use together with A61 EPC. • s10 is thus limited to matters of prosecution of the application, as other dispute forums are available for other matters.

20

Part 1: UK Law

UK Patents Act · section 10-11 General: • This section only relates to matters concerning the continued prosecution of the application.

• This section uses the rules for proceedings heard before the Comptroller, found at the end of Part 1.1 of this book.

Practice Notes Joint applicant dispute considerations: • There is likely to be a conflict of interest where joint parties have now split – select which you will continue to represent and advise the other to seek a new representative.

• Be seen to check agreements and facts of the case.

• Consider an amicable agreement (assignment, comfort letter) if sensible.

• Attempt early settlement where one party is clearly wrong – point out they could bear costs in court if they reject such an offer (see BB 9th Ed. 61.37).

Section 11: Effect of Transfer of Application Under s8 or s10 1) Any extant rights (e.g. a licence) granted to others are normally allowed to continue, if one or more of the original applicants remain.

– e.g. If X, Y & Z were the original applicants and Z licensed use to A after publication, but Z was then removed by the Comptroller, A’s license is treated as being granted instead by X & Y. 2) If none of the original applicants remain, (e.g. if X, Y & Z are replaced by B), then A’s license lapses upon registration of B. 3)3A) But if X, Y, Z or A (as appropriate) were working or making serious and effective preparations to work the invention in good faith in the UK prior to a reference under s8, then they are entitled to be granted a licence from B, as the new proprietor of the contested application (3) or the proprietor of a new application made from excised matter of the contested application (3A). Licences should be requested within two months of the order to transfer.

4) Such licences are for reasonable terms and periods.

5) The affected parties in subsections 2 or 3A can challenge the transfer and the terms of any licence.

Legal Notes General: • Subsections 2-5 would only occur due to a reference under s8 (since no original applicants remain).

Study Guide to the Patents Acts (2021 edition)

21

UK Patents Act · section 11-12 • A, X, Y & Z have two months to apply for a (non-exclusive) license (R90(1)), – from notification of the Comptroller’s decision.

• s11(5) uses the rules for proceedings heard before the Comptroller, found at the end of Part 1.1.

Section 12: Resolving Entitlement to Foreign and Convention Patents, etc.

1) Before grant of an overseas patent: a) any person (e.g. a non-applicant) may refer a question of entitlement to the Comptroller, or b) one or more co-applicants may approach the Comptroller regarding transfer of entitlement to any other person, and the Comptroller will make any order he sees fit.

2) The Comptroller can pass the issue to the court.

3) If the overseas application is an EP application then any determination under subsection 1 is subject to s82 below (typically that the applicant is resident in the UK, or for employer/ employee disputes, that the employee is employed in the UK, but see the section itself for more options).

4) s10 still applies for relevant disputes under subsection 1 above except where it regulates the manner in which an application is to proceed.

5) a)b) s11 applies for orders made under subsections 1 and 4 above by either the Comptroller or court.

6) a) W here an EP application or the GB designation thereof is withdrawn or refused during its normal prosecution before any question is referred under subsection 1 above, or b) an EP application is refused by request of the entitled person in any deliberation under subsection 1 above, or c) where a PCT(GB) application or the GB designation thereof is withdrawn or refused during its normal prosecution before or after any question is referred under subsection 1 above, the Comptroller may allow a party he considers entitled to all or part of the matter to file within three months a new application with respect to that matter (subject to s76 – no added matter), and that application is treated as having been filed on the date of the original application.

Legal Notes • Despite its title, s12 only applies if a referral is made before the application grants (see s12(1)).

• For the consequences in EP prosecution, see A61 EPC in Part 2.2 of this book.

22

Part 1: UK Law

UK Patents Act · section 12-13 Practice Notes General: • Use s12 where there is an EP application whose entitlement is in doubt.

• s12 does not apply to granted foreign cases. However, where a foreign application grants during s12 proceedings then the proceedings can continue – see Innovia Films v Frito-Lay [2012] EWHC 790 (Pat).

• It can be used to determine inventorship (unlike s8, which defers to s13), as this can give rise to rights in some states (e.g. Germany).

• The decision can affect granted sister cases overseas, though it will only be guidance for their respective jurisdictions (c.f. s83 for the reciprocal position) – i.e. it is not binding on parallel litigation overseas.

• Where entitlement results in the need to assign a case and the losing party fails to cooperate, the comptroller has the power to bypass that party and authorise transfer on their behalf.

Actions for EP: • Request suspension of EP proceedings, providing proof that entitlement proceedings have begun in the UK. • If successful, a UK decision can be used to transfer rights of an EP application.

– See A61 EPC in part 2.2.

Actions for PCT: • Cannot suspend proceedings, but successful decision can be applied to the international application.

• Not all states are signatories to the protocol on recognition (i.e. with respect to each other’s legal decisions). Hence the decision may then need to be re-applied in each such state during the national phase.

Section 13: Mention of Inventor 1) Inventor(s) have the right to be mentioned in a granted patent and if possible in the published application.

2) The applicant must, within 16 months from priority, provide the UKIPO with a) the identity of the inventor(s), and b) a derivation of rights if the applicant(s) is not the inventor(s)… … failure to do so results in the application being deemed withdrawn.

3) Disputed assertions of inventorship can be resolved (as distinct from s8 and s10).

Study Guide to the Patents Acts (2021 edition)

23

UK Patents Act · section 13 Rules R10 Mention of Inventor: 1) If the inventor is not mentioned in the published application or patent, they must be mentioned in a subsequent addendum or erratum.

2) Anyone can apply to have an alleged inventor mentioned in a) a patent, or b) if possible, in a published application, or in an addendum or erratum as per subsection 1 above.

3) The default deadline for the declaration under s13(2) is 16 months from priority.

4) Use form PF7.

Legal Notes When to use form PF7: • Form PF1 names the applicants and asks if they are also the inventors. If they are not, or not all inventors are applicants, then one must file the inventor’s identity and/or the applicant’s derivation of rights as per s13(2) and R10(4) using PF7.

• Divisionals require a PF7, since not all inventors necessarily contributed to an invention that is divided out of the parent application.

• Replacement filings under s8(3), 12(6) or 37(4) require a new PF7 for the same reason.

General: • The right of an inventor to be mentioned can be waived under R11 and R26(2). The inventor (or a person identified as such under s13(2)) must give reasoning why they do not want to be named, but do not need to give reasons for not wanting their address to be mentioned.

• For a PCT(GB) entering the national phase, one has the later of the 16 months from priority under R10(3) and two months from the start of the national phase (R68(2)).

Practice Notes Amending inventor details: • s13(1) allows the addition of a name via R10(2).

• s13(3) allows removal of a name via the rules for proceedings heard before the Comptroller, found at the end of part 1.1 below, but an inventor cannot renounce an invention per se. The removal of a named inventor is distinct from any entitlement issue, but may clearly occur in parallel.

• In practice, in the first 16 months one can simply send in a replacement PF7 with a note stating that this supersedes any previous PF7.

• To make amendments to a name, then within the first 16 months again just send in a replacement PF7. Alternatively, use s117 (clerical errors) to correct spellings, etc. See part 4.2.3 below for more examples.

24

Part 1: UK Law

UK Patents Act · section 13-14 Declaration of Inventor/derivation of right: • No need to identify nationality.

• Address can be c/o employer’s address.

• Stock phases for derivation of right:‘by assignment from the inventor(s) named overleaf to the applicant’, or ‘by virtue of a contract of employment’.

• An actual assignment document / contract, date, signature, etc., are not required for PF7, though see registration (s32, s33, R47) for assignments from inventors.

Remedies for Failure: • Note that there is a two month extension as of right under R108(2).

• If fail to comply within this extension, can potentially use R108(3) or s20A if unintentional.

Section 14: Making an Application 1) Every patent application– a) shall be made in the prescribed form (PF1) and filed at the UKIPO in the prescribed manner.

1A) Where an application for a patent is made, pay the application fee within the later of 12 months from priority or two months from filing to satisfy s15(10)(c) below (withdrawal for lack of payment).

2) The application comprises: a) a request for grant of a patent, b) a specification comprising – a description of the invention – one or more claims (optional at filing – see s15) – drawings if referred to, and c) an abstract (optional at filing – see s15) … but at filing, only need to satisfy s15(1).

3) The specification must be clear and complete enough to be enabling. : 5) The claim(s) shall a) define the matter to be protected, b) be clear and concise, c) be supported by the description (cannot rely on support in priority docs – c.f. s5), and d) relate to one invention or a group thereof that link to form one inventive concept.

6) Other unity rules may apply to link two inventions together (c.f. R16 below).

7) The abstract gives technical information and does not form part of the state of the art for the purposes of s2(3). :

Study Guide to the Patents Acts (2021 edition)

25

UK Patents Act · section 14 9) The application may be withdrawn by the applicant at any time before grant, and this cannot be reversed, but…

10) … s14(9) does not affect the power of the Comptroller under s117(1) to correct an error or mistake in the withdrawal of an application by the applicant (thus potentially reversing a withdrawal).

Rules R12 Application 1) Use PF1 for request of grant.

2) If the applicant’s name and address are not provided, the Comptroller will request these…

3) … and the applicant has two months from the request to comply or the application is deemed withdrawn. : 6) Must provide a title, which is short and indicative.

6A) The claims must not rely on references to technical features of the invention disclosed in the description or figures unless these can not be clearly and concisely defined in writing or using a mathematical or chemical formula.

7) The description must list any included drawings or photographs.

8) If the documents are filed in a foreign language (not English or Welsh) and no translation is provided, then the Comptroller will request translation.

9) The applicant has two months from the request to provide the translation.

R13 Biological material and Sequence listings : 2)3)An application referring to a sequence must include a sequence listing. If it does not then the Comptroller will request it and set a period to respond. If not provided, the application may be refused.

4) A late filed sequence must be accompanied by a declaration that it does not add matter. : R15 Abstract 1) Starts with the title of the specification, 2)3) is concise, containing the field, an explanation and main use of the invention, 4) identifies the main figure if there is more than one in the specification…

5) … but the Comptroller can choose another for publication.

6) Reference numbers should be included as applicable.

7) The abstract does not extol virtues or speculative uses of the invention.

R16 Unity of invention 1) 2) Two or more inventions are considered to have unity when they share between them a

26

Part 1: UK Law

UK Patents Act · section 14 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).

Legal Notes General: • R12(2) may be used if a representative accidentally omits or corrupts an applicant’s details.

• Form PF1 has been updated to include the application fee. This can also be paid using PF9A or form AF1. The fee is £60 at filing (or £75 if paid later).

• As of 1 October 2016, black-and-white (i.e. greyscale) photographs are permitted, as is shading in drawings where this assists in representing a shape and does not obscure other elements of the drawing.

The forms require: • Title of application, name and address of each applicant plus nationality if a company.

• Name of agent if any, address for service, priority details if any, and statement of inventorship – use PF7 if inventor is not applicant.

• Signature of applicant or appointed agent.

Claim Clarity: • Claims must be clear to a person skilled in the art.

– But no need to list non-essential or ‘expected’ features.

– The EPO similarly requires a claim to be clear on its own merit (coupled with general knowledge), since in many cases only the claim will be translated into a national language at grant.

• A ‘product-by-process’ claim should define a product according to the process by which it is or can be obtained.

• Function claims (i.e. where X is arranged such that Y happens) must list the elements to be arranged and the disclosure must describe how to arrange them, i.e. there must not be an additional inventive step required to achieve the result Y by working out how to arrange the elements.

• As of 6 April 2017, omnibus claims are no longer allowed unless ‘the technical features of the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means’ – which is unlikely in practice.

• The EPO can interpret purpose as a technical feature (e.g. Mobil oil/rust, G2/88). Arguably a purpose is now also essential for gene patents (see notes to s4 above).

• ‘An X for a purpose Y’ is construed merely as ‘An X suitable for a purpose Y’ – see s4A specifically for first/second medical use.

• The rules allow but don’t require reference numbers and two-part form in the claims – recall both GB and EP(GB) patents (i.e. European patents designating GB) must be accommodated.

Study Guide to the Patents Acts (2021 edition)

27

UK Patents Act · section 14 Unity: • The concept that unifies the claims must itself have ‘inventive character’. Thus with respect to a prior art plug and socket arrangement, claims to a subsequent plug and socket are unlikely to have unity unless how they interact is itself inventive over the prior art plug and socket.

– Thus ex post facto non-unity is possible when prior art is found that renders the existing unifying character known. This can also happen when a broad independent claim is anticipated, leaving disparate embodiments in the dependent claims with non-unity issues.

– It can result in a demand for additional search fees late in examination – Check that the prior art is correctly cited as one could potentially argue that unity is still intact.

‘Enabling’, ‘Sufficiency’ & ‘Support’: • An enabling description provides enough information for the skilled person to work the invention across the whole of the scope of the claim. A lack of enablement is a ground for revocation as it goes against the compact that proper disclosure is given in return for corresponding protection, which is at the heart of the patent system.

– The term can take on more nuanced meanings when the scope of the claim relates for example to the application of a medicine to a relatively open-ended spectrum of ailments, as may occur in a second medical use claim (see Warner-Lambert v Generics [2018] UKSC 56). In this case, the disclosure should at least make the claim scope plausible.

• Sufficiency is a related but distinct term that basically is the test of whether the full scope of the invention as defined in the claims is clearly and completely disclosed by the description.

Hence ‘insufficiency’ is where the claim scope encompasses something that the description does not disclose clearly and completely enough for the skilled person to replicate.

– In ‘classical insufficiency’ this means the skilled person can’t make the invention easily (or at all). Meanwhile in ‘Biogen insufficiency’ the claim scope is wider than is justified by the application’s technical contribution. It can also be seen that these echo the different forms of ‘enabling description’ above. See also Unwired v Huawei [2016] EWHC 576 (Pat) §149, and BB 9th Ed. §14.24 for more nuanced summaries.

– Note that post-grant, insufficiency is a ground for revocation (see s72(1)(c)), whilst lack of support is not: • Support is simply a pre-grant question of whether there is enough technical information in the application to support (i.e. provide basis) for the text of the claims. Thus, for example, one may have support for a claimed process of manufacture, but have a lack of enablement because the initial conditions required to successfully manufacture the product are not disclosed (classical insufficiency).

The Abstract: • The abstract of an application is not part of the specification and so it is not citeable as part of a novelty-only citation under s2(3) or Art 54(3), but is of course citable as part of a published document under s2(2) or Art 54(2) as its contents are then available to the public.

28

Part 1: UK Law

UK Patents Act · section 14-15 • Similarly, for the purposes of amendment, the abstract of a UK application is not part of the specification itself and cannot be used as a basis for amending the claims; see Abbot Laboratories Ltd v Medinol Ltd [2010] EWHC 2865 Pat. This is likewise forbidden for EP applications by Art 85 EPC and T246/86.

Practice Notes Prior to filing: • In FD1, consider a prior art search to determine prospects for grant.

Typically, a new filing will consist of the following: • PF1, and optionally but typically PF7, PF9A, and PF10; possibly AF1, • description, and drawings if referred to, and optionally but typically claims and abstract, • (priority docs, translations), and • (any other docs, e.g. cross-referenced docs) Enabling Description: • As noted above, this is achieved if by virtue of the description the promised result can be generally met across the whole scope of the claim, even if this is not in itself commercially viable (hence also the value of tech transfers and know-how).

• In practice, the description can’t be amended to make it enabling, as this generally adds matter, but one can limit the claims to what is enabled.

• Note that for selection patents, the desired effect must be obtainable for all examples selected; similarly it’s bad if the effect can be obtained from non-selections.

Overseas: • In principle the US requires a ‘best mode’, i.e. a preferred embodiment, which in effect satisfies the US requirement that an invention is ‘reduced to practice’ (see http://www.uspto. gov/web/offices/pac/mpep/s2165.html) however it is no longer necessary to isolate or identify this best mode within the description. Meanwhile the EP/UK requirements for an enabling disclosure and full support are adequate for US purposes.

Section 15: Date of Filing Application 1) Is the earliest date on which the following conditions are met: a) the application documents indicate that a patent is sought, b) they identify the applicant or enable contact with them, and c) the documents contain either i) something that appears to be a description of the invention, or ii) a reference to an earlier relevant application of the applicant or their predecessor (including the date of filing, Application No., and country of filing – R17).

Study Guide to the Patents Acts (2021 edition)

29

UK Patents Act · section 15 2) For an apparent description under s15(1)(c)(i) above, it is immaterial whether a) it is provided in English (or Welsh, c.f. R113(2)(a)), or b) it otherwise complies with the act or rules.

3) If the application does not satisfy all the requirements of s15(1), but satisfies at least one, the Comptroller will quickly alert the applicant to what needs fixing (the applicant has two months to comply for identity of applicant or verified translation of text, and four months for a certified copy of an earlier relevant application and translation if needed – see subsection 10 below).

4) If the application does satisfy all the requirements of s15(1), the Comptroller will quickly notify the applicant of; a) the date of filing, and b) any other requirements outstanding and their time limits to prevent withdrawal.

5) Subsection 6) below applies where a) the application has already got its date of filing b) but, in time (between filing and the preliminary exam, or within two months of notification by the preliminary examiner – R18), the applicant then files i) a drawing, or ii) some text of the description, c) and that drawing or text was missing from the application at the date of filing…

6) … then unless the applicant withdraws it again before the preliminary exam or specified period, a) the missing part shall be treated as included, and b) the date of filing will be re-dated to when the missing part was filed (thereby risking loss of priority/intervening publications).

But… 7) … subsection 6(b) doesn’t apply if: a) on or before the initial filing date, a priority document is declared under s5(2) that identifiably contains the missing parts (R18), and b) subsequently a request is made to not re-date, identifying the relevant matter in the priority document (R18)… c) … in the right format and within the s15(5)(b) time period.

8) Subsections 6) and 7) above don’t affect the power of the Comptroller to correct errors and mistakes under s117(1).

9) Where, after filing, but before grant; a) a new application (e.g. a divisional or a filing following a dispute) is filed by the applicant

30

Part 1: UK Law

UK Patents Act · section 15 or their successor in accordance with the rules (see below) in respect of any part of the matter of the earlier application, and b) the new application satisfies subsection (1) (without adding matter – s76), then the new application is treated as having the same filing date as the earlier application.

10) Where an application has a date of filing via this section, it will be treated as withdrawn if: a) no claims/abstract are filed in time (within 12 months, or if claiming priority, the later of 12 months from priority or two months from filing – R22(1) & R22(7)), b) if an earlier application is referenced using subsection (1)(c)(ii) above, i) the applicant fails to file a description in time (within 12 months, or if claiming priority then the later of 12 months from priority or two months from filing– R22(1) & R22(7)), and ii) the applicant fails to file a certified copy (and a translation if needed – R113(2)(c)) of the referenced relevant application in time (within four months of filing (R22(3)), c) the applicant fails to pay the application fee in time (within 12 months, or if claiming priority then the later of 12 months from priority or two months from filing – (R22(2) & R22(7)), or d) the applicant fails to request and pay for a search under s17 in time (within 12 months, or if claiming priority then the later of 12 months from priority or two months from filing – (R22(2) & R22(7)).

11) ‘Relevant application’ is in the s5(5) sense (i.e. from a WTO state – see s5 for details).

Rules R18 Missing parts 1) Adding or withdrawing figures and text is done between the date of filing the application and date of the preliminary examination, or…

2) … within two months of notification by the preliminary examiner.

3) If an applicant wishes to withdraw the filed missing matter (c.f. s15(6)), they must do so in writing to the comptroller.

4) A request to keep the filing date when adding missing material that can be found in a priority document requires: a) the request in writing b) enough information to identify the source material in the priority document, and c) that it is done within the time limit of subsection (1) or (2) above as applicable.

5) The request fails if: a) the priority document is missing any of the added material, or b) the certified priority document concerned is not filed (or is otherwise not verified to the satisfaction of the Comptroller), within the earlier of the normal 16-month period, or four months from the date of request to keep the filing date...

Study Guide to the Patents Acts (2021 edition)

31

UK Patents Act · section 15 6) …but a certified copy isn’t needed if the UKIPO already has a copy. : R19 Divisionals 1) … must be filed in accordance with this rule: 2) A divisional can only be filed if a) the parent has not been terminated or withdrawn (and if it has not yet been granted –

see s15(9)), and

b) it is not yet the last three months of the R30 period (e.g. typically no later than 4 years 3 months from priority).

3) The divisional application must include a statement that it is filed as mentioned in s15(9) (e.g. identify it as a divisional, as opposed to a replacement or new application following a dispute).

R20 New applications following disputes under s8(3), 12(6) and 37(4) 1)3)…can be filed within three months of the comptroller’s order or within three months of the end of any appeal of that order.

4) The comptroller can give notice to shorten this period.

R21 Extensions of certain acts for new applications 1) Divisionals and s8, 12 and 37 (dispute) new applications have the later of two months from filing to comply with s13(2) (declaration of inventor) and R8 (filing priority documents), or the relevant dates therein...

2) … unless they are filed in the last six months of the Rule 30 period (see s18 below), in which case they must comply on filing. : R22 Periods for Divisionals and the like : 5) For the deadlines of s15(10), then divisionals and s8, 12 and 37 (dispute) new applications are given the later of those deadlines and two months from their filing …

6) … unless in turn they are filed within the last six months of the R30 period, in which case they must comply on filing.

(Take for example the search and preliminary exam: if a divisional is filed within the first ten months, then can use the normal dates for s15(10)(d) and s17(1). However if filed later, then one has two months to request the search and prelim exam – unless it is filed within the last six months of the R30 period, in which case they must be requested on filing).

Legal Notes General: • NB: Note that you can get a two-month extension under R108(2) for all s15(10)(a-d) deadlines.

32

Part 1: UK Law

UK Patents Act · section 15-15A

• • •

•

– The one exception is the relatively little used15(10)(b)(ii), which is not listed in Schedule 4 Part 2 for the case of a normal filing (R22(3) omitted) thus excluding R108(2) (but allowing R108(1)), but is listed in the case of a divisional and dispute filings (R22(5) included) thus including R108(2), making its status oddly complex. See BB 9th Ed. §15.17 and §123.26.

– However clearly for the filing of claims, abstract, description, filing fee and search request/fee, R108(2) is available.

Note you can withdraw missing parts even after the application is re-dated.

Note the application and search fees have the same deadline.

Non-English (or Welsh) texts filed under s15(1)(c)(i) needn’t be accompanied by a translation at filing (R113(2)(a)) and are initially accepted under s15(2)(a). Welsh texts will be translated by the Comptroller (R113(7)).

Note that for a PCT(GB) entering national phase, the search fee is payable by the later of the dates stated in subsections s15(10)(c,d) above, or two months from the start of the national phase (R68(3)). Meanwhile, the national fee (which replaces the application fee) must be paid to enter the national phase (see s89A(3) herein).

Practice Notes General: • If filing a divisional late in the R30 period, it is good practice to mark all correspondence with ‘Divisional – Urgent!’, as the application number will not reflect the effective age of the application with respect to the R30 period, which the divisional shares with its parent (see R30(2)(a) & (3)(b)).

• Formal drawings, if needed, are typically filed by around 15 months, or within one month of notification.

Section 15A: Preliminary Examination 1) You get a preliminary examination if a) the application has a date of filing (c.f. s15), b) the application has not been withdrawn or treated as such, and c) the application fee (£60 on filing or £75 if later) has been paid.

2) The preliminary examination determines a) if the application complies with formal requirements (and, if applicable, with the requirements to claim priority), b) and if any acts under s13(2) or s15(10) need complying with.

3) The results of subsection 2 are reported to the Comptroller (R23).

4)a)b) Any missing drawing or part of the description is also reported to the Comptroller.

Study Guide to the Patents Acts (2021 edition)

33

UK Patents Act · section 15A-16 5) Subsections 6) – 8) below apply if the overall report indicates any deficiencies: 6) The Comptroller specifies a period (typically two months) in which to a) make observations upon the report, and/or b) amend the application to comply (without adding matter).

7) The Comptroller can refuse the application if not amended under subsection 6)b)…

8) … unless a) the applicant has made observations under subsection 6)a), b) and the Comptroller agrees the application is in fact compliant.

9) If the report of subsection 3) states that a) acts under s13(2) or 15(10) need complying with, or b) drawings or text is missing, then the Comptroller will notify the applicant (so starting the two-month window to fix missing parts under s15(5-8)).

Rules R24 One has two months from notification to correct an erroneous priority date in the declaration (c.f. s5(2)).

Section 16: Publication 1) Pending applications are published as soon as possible after 18 months from priority (R26(1)), or earlier if requested by the applicant. Applications are published as originally filed, accompanied by any amendments already made to the claims. Applications are also published if withdrawn after preparations to publish are complete (typically about five weeks beforehand).

2) The Comptroller may omit a) disparaging matter, and b) immoral or offensive matter.

Legal Notes General: • Publication is advertised in the O.J. – the publicised date starts the six-month period in which to request substantive examination – see R28(2) and s18.

• Any documents cited in the search are also disclosed in an annex.

34

Part 1: UK Law

UK Patents Act · section 16-17 • Note that if an application is published despite a request for withdrawal (i.e. the withdrawal request was received too late to prevent publication) then the publication counts as s2(2) and s3 art for novelty and inventive step since it became available to the public, but does not count as s2(3) novelty-only art – recall the purpose of s2(3) is just to prevent double patenting. see BB 8th Ed. §2.11 and Visser A93(1):4.

• Note that early publication impacts upon the late priority filing provisions of R7(8) – see s5.

• s22 allows for secrecy orders to prevent publication (see below).

• R11 allows an inventor’s address and, if permitted, their name, to be withheld on request.

Practice Notes General: • The form of claims at publication influences any eventual rights to damages under s69(2) (b) – You can request early publication to increase the period before grant during which damages may accrue.

• In practice the deadline for preparations for publication is around 16 months and 3 weeks from priority.

Section 17: Search 1) A search will only be done if: a) A preliminary exam under s15A has been done, b) the application has not been refused, withdrawn or deemed so, c) and before the later of 12 months from priority or two months from filing i) the applicant requests a search on form PF9A, ii) the search fee of £150 (or £180 if filed on paper) is paid (and any excess claim fees – see below), and d) the application includes: i) a description, and ii) one or more claims; and e) the description and claims comply with the rules on language. : 4) Subject to subsections 5 and 6 below, the Examiner will make a reasonable attempt to identify relevant prior art…

5) … if the Examiner thinks it is worthwhile a) for some or all of the application, b) but if not, then the Examiner informs the Comptroller, and the applicant is informed accordingly.

Study Guide to the Patents Acts (2021 edition)

35

UK Patents Act · section 17 6) If, before or during the search, the Examiner determines non-unity they will search the first invention only. The applicant must pay a respective fee for the or each further invention to be searched.

7) The Comptroller can request an updated search from the Examiner at any time if thought applicable (c.f. s18(1A)).

8) Supplementary searches due to amendment under s18(3), 19(1) or s117 (i.e. due to actions of the applicant) require a further fee of £150 unless waived by the Comptroller.

Rules R(Fees)3B Excess claim fees • If the application comprises more than 25 claims, then an excess claim fee of £20 must also be paid for each of the 26th and subsequent claims together with the search fee.

R27 5) To search a second invention, one must pay the second search fee not later than three months before the end of the R30 compliance period using PF9A. Legal Notes General: • The search and the substantive examination are combined if PF9A and PF10 are submitted together (alternatively you must specify if you don’t want it to happen) – Unless it’s a PCT(GB), which has already had a search – supplemental searches for PCT(GB)s cost £120 (or £150 if filed on paper).

– Note also that for a PCT(GB) entering the national phase, one has the later of either the dates given in subsection 17(1)(c) above, or two months from national phase entry (i.e. until 33 months), to pay the search fee (R68(3)).

• The R27 deadline on second searches is consistent with other parts of the act, e.g. when filing divisionals. However, if left to this deadline then a search upholding non-unity would leave it too late to file a divisional (see R19 in s15 above). Consequently it is advisable to make such a request as soon as possible, if needed.

Refund of search fee: • If the application is withdrawn after the search fee is paid but before a search starts, the fee may be refunded (R106(3)).

• If a search fee was paid for claims in a parent that were then divided out, then for the divisional the fee may be refunded (R106(2)(b)).

Amendment: • Voluntary amendment becomes possible after the search report. See s19(1) below.

36

Part 1: UK Law

UK Patents Act · section 17-18 Divisionals: • Divisionals have at least two months to file the search request, except in last six months of the R30 compliance period – see R22 in s15 above.

Practice Notes • One can request an accelerated/early search with a reason (for example wishing to see the results before foreign filing). Note that this is distinct from acceleration due to likely infringement, or general accelerated prosecution as in the EPO PACE scheme.

• s17(7) & (8) allow unsearched claims to be reconsidered during examination (for example if it is desirous to use one to amend an independent claim); as such it is more lenient than the EPC, which simply prevents amendments based on unsearched subject matter (R137(5) EPC).

Section 18: Substantive Examination 1) Once the requirements of s17(1) are satisfied, the applicant should a) request an examination within six months of publication (see R28) if not done already, and b) pay the fee (of £100, or £130 if filed on paper) (and any excess description page fees – see below), otherwise the application is deemed withdrawn.

1A) T he Examiner may require a supplementary search (e.g. if they decide there is non-unity or due to amendment following the search). The applicant’s options are a) pay the search fee, or b) amend to render the search unecessary (or successfully argue otherwise).

2) Examination is to such extent as the Examiner considers ‘necessary’.

3) The applicant is entitled to one opportunity to comply with any defects highlighted by the exam report and/or argue against them.

4) If the application complies within the R30 compliance period, the Comptroller will grant it upon payment of the grant fee (see below).

5) If two or more applications for the same invention coexist with the same priority date and owner, the Comptroller may limit grant to just one of them (c.f. s73 post grant).

Rules R28 Request for substantive examination 1. Using PF10…

2. … request exam and pay fee of £100 (£130 via paper) within six months of date of publication of the application – but:

Study Guide to the Patents Acts (2021 edition)

37

UK Patents Act · section 18 3. If under a s22(secrecy order), then instead have two years from the priority date to request (equivalent to publication at 18 months plus six months).

4. NB: deadlines in subsections (2) and (3) do not apply to divisional applications or applications made following a dispute under s8, 12(6) or 37 (‘new applications’)…

5. … they have the later of the date applicable under subsection (2) or (3) above for the parent application, or two months from filing…

6. … unless within six months of the R30 compliance period, in which case it is the filing date.

R(Fees)3C Excess page fees • If the description (i.e. not including the claims, abstract or drawings) comprises more than 35 pages, then an excess page fee of £10 must also be paid for each of the 36th and subsequent pages together with the examination fee.

R30 The period for putting the application in order for grant 1. … is the ‘compliance period’, being: 2. a) four years six months from the effective priority date, or b) 12 months from the first report under s18(3) – whichever is later; but…

3. … for new applications following a dispute, it’s: a) i) the compliance period for the originating application under (2) above, or ii) 18 months from the filing date of the new application – whichever is later. b) For divisionals, it’s the same as (2) above (i.e. the period for the parent).

– (NB: but file divisionals before three months from the R30 period of the parent – see s15, R19 above) 4. For the specific case where the Examiner uses third-party observations for an 18(3) response within the last three months of the rule R30 period, then the applicant has three months to respond.

R30A Fee for the grant of a patent 1. If, when notified of the intent to grant under s18(4)… a) i) …the number of claims is greater than 25, and… ii) is greater than the number of claims when the search was requested, or b) i) the number of pages of the description is greater than 35, and… ii) is greater than the number of pages of the description when the examination was requested, then the applicant must pay a grant fee (using form PF34)…

2. … corresponding to the further additional claim fees (£20 per extra claim) and/or page fees (£10 per extra page of the description) incurred (R(Fees)3D), within 2 months of the notification of intent to grant.

38

Part 1: UK Law

UK Patents Act · section 18 Legal Notes Extensions: • The date by which to request examination can be extended as of right by two months under R108(2) using PF52 and paying £135.

• This date can also be extended at the Comptroller’s discretion under R108(3), providing a good reason is given why failure to request was out of the applicant and agent’s control; e.g. fire, disaster or genuine and uncharacteristic error. Again use PF52, then if allowed pay a fee of £135.

• If all else fails then reinstate the application using s20A, if loss was unintentional.

• NB: the R30 period itself can also be extended using R108(2) and R108(3). See also s20(2) below for the effect of pending appeals on the R30 period.

• Note that the R30 period is the time to bring an application in order for grant, not the time to actually grant. Hence in effect it is the deadline by which any successful argument/ amendment must be made.

• Under R30(2)(b), if the first s18(3) report does not appear within four years six months, then the period extends until it does and then you get the 12 months.

• A divisional inherits the R30 period of the parent – therefore any 12 month period via R30(2) (b) is based on the first 18(3) report of the parent, not of the divisional.

• For a PCT(GB) application entering the national phase, one has the later of 33 months (i.e.

31+2 months) from priority or two months from entry into the national phase to request examination and pay the fee (R68(4)). This period can be further extended by two months under R108(2).

General: • Any Examination report issued under s18(3) or (4) is copied to the applicant, along with any cited documents if the Comptroller sees fit (R29).

• The UK deadline for requesting examination of six months from publication of the specification differs from the EPC deadline of six months from publication of the search report (though these are frequently published together).

• A supplementary search under subsection 1A typically occurs as a consequence of amendment, or if an independent claim is found not to be novel or inventive and this results in non-unity between the remaining dependent claims.

• Note that if a combined search and exam throws up no objections before publication, the Examiner will wait until at least three months after publication before granting a patent, in order to allow third-party observations. In this case, consider requesting early publication.

• Fees may be refunded if an application is withdrawn before examination commences.

Grant fees: • The grant fee provided by s30A covers the possibility that the excess number of claims or the excess number of description pages has increased after requesting the search or exam, respectively, and simply collects any corresponding increase in the excess fees at grant.

Study Guide to the Patents Acts (2021 edition)

39

UK Patents Act · section 18 Grant and Divisionals: • There is a limbo period formed between the administrative grant date (the date provided by the letter informing the applicant of the grant of their patent) and notification of grant in the OJ (see notes for s24). During this period, voluntary amendments and divisional filings are not possible.

• If an application complies with the Act then the UKIPO issues a s.18(4) communication, starting this limbo period. However, this letter used to arrive without warning. This could cause trouble if an applicant intended to file a divisional application before grant, as s/he then misses their chance. Before 1 October 2016, the rules recognized this problem only for the case where the examiner’s first communication is of a decision to grant under s18(4), in which case two months was provided for filing divisional applications or voluntary amendments (one can waive this time if expedited grant is requested – see Accelerated Prosecution below); meanwhile if a s18(3) communication was issued previously during prosecution, no such period was provided after the eventual s18(4) communication (although see the notes to R107 below for a possible exception). However, after 1 October 2016, the rules (e.g. R19) have been amended so that in both situations the s18(4) communication now acts as a notification of intent to grant, in which the UKIPO indicates a later grant date. As a matter of policy, the UKIPO will set that date to provide at least a one-month window in which to file divisionals or make voluntary amendments, etc whilst the application is still pending, or (still) two months in the case where the first exam communication is a s18(4).

Coexisting patents: • Before publication, if an application is not withdrawn fully (including its ability to act as a priority document – i.e. so it has no rights outstanding) – then a refilling will not be considered as a new application and is likely to fall foul of s18(5).

• Similarly, if an EP(GB) claiming priority from a corresponding GB case grants before that GB case, then the GB case is likely to be revoked (c.f. s73).

• After grant of a GB patent, again the main problem is the later grant of a sister EP(GB) application, and this is dealt with under s73. Basically, the options are; i. amend the cases to distinguish them (s27), ii. withdraw the GB designation before grant of the EP(GB) application (Art 79(3) EPC), iii. apply to surrender the EP(GB) before the native GB grants (s73(4)) or, of course, iv. keep the EP(GB) and let it supplant the GB patent (noting that any existing licensees of the GB patent will need new agreements, or agreements that accommodate this outcome).

• The UKIPO Comptroller will wait until the end of the EP opposition period/procedure in case a successful opposition removes the EP(GB) patent ab initio. If the EP(GB) survives, then the GB patent will be revoked. Of course, if the EP(GB) is lost in opposition then this bodes poorly for the validity of the GB patent too.

• One can register a patent in Hong Kong based upon a GB (or EP(GB) or CN) patent within six months of grant, providing the application was also recorded in Hong Kong within six months of publication. Only formalities are examined before allowance.

40

Part 1: UK Law

UK Patents Act · section 18-19 • It is now UKIPO practice for the Examiner to check for equivalent cases in WO, EP, US, JP and KR prosecution before considering grant of a GB application.

Practice Notes General: • Combined search and exam is the default if both PF9A and 10 are filed together – one must expressly indicate if you don’t want this to happen.

• If the first communication under 18(3) is more than 3½ years after the priority date then to accelerate prosecution in the remaining 12 months of the compliance period (see R30(2) (b)), the response time for the communication is only two months instead of four, and only extendable to four months instead of six.

• Before loss under s18(3), one is entitled to a hearing, then appeal to a patents court, then appeal (on facts and law) to the court of appeal.

Accelerated Prosecution: • One can request accelerated examination if one can demonstrate hardship, e.g. likely infringement or where grant is needed to secure investment. In addition acceleration can be requested for ‘green’ inventions. Grant is only allowed three months after publication, to give the public time to comment on an application (see s21 below). Consequently, one can also request accelerated (early) publication, which can additionally help for subsequent damages under s69. Note, however, that early publication impacts on the late priority filing provisions of R7(8).

Section 19: General Power to Amend Before Grant 1) The applicant can voluntarily amend the application at any time before grant (subject to the conditions below – R31) providing they do not add matter (cf. s76).

2) The Comptroller can amend of their own volition to acknowledge registered trade-marks.

Rules R31 Amendment before grant 1) Make the request in writing (identifying the amendment and the reason for it).

2) The conditions on the general power in s19(1) are…

3) one must wait for notice of the search report under s17(5) (unless it’s a PCT(UK) that has received an ISR – R66A), but can then (keep on) amending until the first substantive examination report is issued, and afterwards…

4) a) … if the first report is a s18(4) report, one voluntary amendment is allowed if it is done within two months, or b) i) if the first report is a s18(3) report, one voluntary amendment is allowed if it is part of a

Study Guide to the Patents Acts (2021 edition)

41

UK Patents Act · section 19-20 reply to the report (but can be in addition to those arguments/amendments necessary to address the issues raised in the report), or ii) if the first report is a s18(3) report issued before publication (e.g. a combined search and examination), then can (keep on) voluntarily amending before actually replying to the report.

5) Subsections (3) and (4) do not apply where a) the Comptroller consents to an amendment, or b) where the amendment concerns the actual request for grant, and 6) for (5)(a) or (b), the applicant must provide reasons for the amendment.

Legal Notes General: • Amendment is not the same as correction – see s117.

• s19 covers the application, and therefore includes amendment of PF1 – but R31(3) and (4) only apply to the specification (see R31(5)(b)). Therefore, as per R31(5)(b) one can voluntarily amend form PF1 at any time up to grant (including before the issue of the search report), e.g. for a change of applicant, giving reasons.

• R31(3) is subject to Rule 66A, which simply recognizes that if a PCT(UK) has already received its equivalent of the s17(5) search report (the ISR), then voluntary amendments can be made upon or after national phase entry.

Section 20: Failure of Application 1) If an application fails to comply with provisions within the R30 compliance period, then it is treated as refused; s97 (appeals) applies accordingly.

2) If an appeal is pending or the time in which to bring an appeal (typically 28 days from refusal) has not expired by the end of the R30 period, then a) if the appeal is pending, the court determines an extended R30 period; b) if no appeal is brought, the R30 period is the end of that 28 days.

Legal Notes • The time to appeal is 28 days from the date of decision unless it is on a point of procedure, in which case it is 14 days (see BB 9th Ed. §20.05).

Practice Notes • Recall that it is possible to request an extension of the R30 period up to two months after it has notionally lapsed using R108(2), and further with discretion under R108(3). Note that this extension runs concurrently with any extension under s20(2)(b) and so the total

42

Part 1: UK Law

UK Patents Act · section 20-20A extension would only be the two months. Therefore whilst the R30 date itself comprises an implicit decision under section 20(1) with an appealable window, in practice R108(2) will provide a longer extension as of right in most circumstances.

• Close to the R30 compliance date, mark correspondence as urgent – especially divisional and PCT(GB) cases, as their application numbers are not indicative of the age of the case with respect to R30 and so it’s in your interest to flag this up manually.

Section 20A: Reinstatement of Application 1)a)b) T his applies when an application has been refused or treated as withdrawn due to missing a deadline either set by the Comptroller or the Act itself.

2) The Comptroller shall reinstate the application only if a) requested by the applicant… b) … according to the rules… c) … and the Comptroller is satisfied that the failure was unintentional, unless…

3) a) an extension is still available, or b) the missed deadline relates to any of: i) proceedings before the Comptroller, ii) late declaration of priority with late filing – s5(2A)(b), or iii) reinstatement itself, or a requested extension under s117B. 4) One of joint applicants can request reinstatement unilaterally with the permission of the Comptroller.

5) Notice of the request will be given in the OJ for published applications (R32(4)).

6) Reinstatement will be by order (an order is a direction other than a judgement).

7) If reinstated, the applicant must remedy the failure that caused refusal or effective withdrawal within a period specified by the Comptroller…

8) … of at least two months.

9) Failure to comply by this deadline will result in the application being treated as withdrawn on that deadline.

Rules R32 Reinstatement of applications under s20A 1) Reinstatement must be requested within a specified period…

2) … of 12 months beginning immediately after the date of termination of the application,

Study Guide to the Patents Acts (2021 edition)

43

UK Patents Act · section 20A-20B 3) : 5) 6) 7) 8) 9)

using PF14…

… with evidence (i.e. that failure was unintentional).

If no evidence accompanies the request, the Comptroller will specify a period to provide it.

If reinstatement is refused, the applicant is notified… … and they then have one month to request a hearing … at which they have the opportunity to be heard before the Comptroller decides again after the hearing.

10) If the reinstatement request was published in the OJ under s20A(5), then a decision to reinstate is also published.

Legal Notes

• As of 1 October 2016, Rule 32 has been simplified so that the deadline for requesting reinstatement is 12 months beginning immediately after the date on which the application is deemed terminated – e.g. the due date for an act whose omission can result in loss of the application.

• ‘Unintentional’ generally relates to anything outside the applicant’s control that conspired to prevent the applicant carrying out the omitted act. This may be the discovery of an isolated mistake (originally in the UK this required a demonstration of all due care; at the EPO it still does) or external circumstances (force majeure) such as sudden illness, uncharacteristically long postal delivery times, or lack of money outside the applicant’s control (e.g. due to a court order restricting access to finances). The comptroller may thus be comparatively more lenient with private applicants and solo representatives inasmuch as lesser events can be more disruptive to them.

• Meanwhile ‘unintentional’ does not include, for example, making a bad decision and then changing one’s mind. See BB 9th Ed. §20A.05.

Section 20B: Effects of Reinstatement 1) The effects are that: 2) anything done with or to the application between loss and reinstatement is treated as valid; 3) (actions in bad faith) – if already published, then infringing acts are treated as such… a) if done during a potential extension period, or b) if continuing / repeating an earlier infringement; 4) (actions in good faith) – if already published, then between termination and notice of a request of reinstatement, anyone who a) begins in good faith to effectively infringe, or b) makes serious and effective preparations to do so, may continue…

44

Part 1: UK Law

UK Patents Act · section 20B-21 4A) ...though this right does not become exercisable until after any period in which an extension could have been requested for a deadline as per s20A(1) is missed.

5) a) This right also applies to partners in a business, but b) can only be transferred as part of the business itself.

6) There are no repercussions for the recipients of products disposed under subsections 4 and 5.

6A) The above also applies to Crown use.

7) (Defines ‘termination’ as refusal or being treated as withdrawn).

Legal Notes General: • The effect is similar to that found in Effect of Restoration of a Patent (s28A), but third party protection is only an issue if the application has been published.

• Therefore if the application is published then in a similar manner to s28 and s117A, request reinstatement as soon as possible to reduce the chances of third party rights accruing.

• For such third parties, note that ‘continue’ suggests that significant expansion or divergence from the original act is not allowed.

• Obviously, the issue of intervening rights (or a lack thereof) in the UK will still ultimately depend on getting the patent granted first.

• If the application was refused after the normal compliance period (R30), for example due to not responding to a s18(3) letter and hence is reinstated after the compliance period has elapsed, both the period for the missed deadline and the compliance period are extended; see Ibrahim Ghulam Murad Ali et al’s Application, O/264/10 and the related UKIPO practice notice of 15 March 2011. However, it will be appreciated that in these circumstances one has only this single opportunity to get the application in order for grant in response to the s18(3) letter.

• Subsection 4A ‘clarifies’ that the third party right only becomes effective after possible extensions have been missed. Although not stated, interpret subsection 4A as referring to possible extensions as of right (e.g. Rule 108(2)). This is consistent with the effect of restoration of a patent under s28A(4), where third-party rights only start to accrue after the six-month late-payment grace period has elapsed.

Section 21: Third-Party Observations 1) Between publication and the administrative date of grant (c.f. s18(4)), any other person may write to the Comptroller questioning the application’s patentability (hence questions regarding entitlement aren’t allowed here – instead use s8).

Study Guide to the Patents Acts (2021 edition)

45

UK Patents Act · section 21-22 2) Filing observations does not make you a party to subsequent proceedings (however, the outcome will be on public record).

Rules R33 Observations by Third Parties 1) The Comptroller sends applicants a copy of any s21 observations received…

2) … unless he thinks they are; a) offensively disparaging/libellous, or b) likely to incite offensive, immoral or antisocial behaviour.

3) The Comptroller may also send copies of any documents cited therein.

4) The Comptroller also sends the observations to the Examiner, unless…

5) … the Examiner has already issued a s18(4) (intent to grant) report.

Legal Notes • If observations are made within the last three months of the R30 compliance period and result in a s18(3) Examination Report, then the applicant is given a total of three months to put the application in order.

Section 22: Information Prejudicial to National Security or Safety of Public 1) A GB, EPC or PCT application first filed at the UKIPO is reviewed to see if it is prejudicial to national security or public safety, as defined by the Secretary of State. If so, the Comptroller may prohibit or restrict publication/distribution .

2) The Comptroller can prevent or restrict any dissemination of the invention up to three months after the application was due for publication (i.e. up to 21 months) – but see subsection 5 below.

3) While this prevention is in force, a) One can still prosecute up to readiness to grant in the UK, but the application is suspended at that point and is still not published. b) If it’s an EPC application, it is not sent to the EPO. c) If it’s a PCT application, it is not sent to the IB or ISA. 4) Information regarding an EP application may be sent to the EPO if the Comptroller has a duty to do so (see notes below).

5) The application is notified to the Secretary of State (i.e. the office), who: a) determines if publication of the application or invention would prejudice security / safety,

46

Part 1: UK Law

UK Patents Act · section 22 b) if so, instructs the Comptroller to extend the period of subsection (2) until instructed otherwise… c) … and will review this decision within nine months of filing and every 12 months thereafter. d) If it no longer appears prejudicial, Secretary of State informs the Comptroller… e) … who lifts the restrictions, notifies the applicant and provides any necessary extensions of time to complete prosecution.

6) To decide the review in subsection 5)c), a) where the invention relates to atomic energy, the Secretary of State may i) inspect the application and any accompanying documents, and/or ii) authorise a competent body to do this, and b) in any other case, inspect the application after the s16 date (or before with applicant’s permission).

In the case of a) ii), the competent body reports back to the Secretary of State.

7) While the prevention is in force, if the application is in order for grant, then a) if the Government uses the invention, sections 55-59 apply; i. as if arranged under s55 (Crown use), ii. as if published, iii. as if granted, and b) if hardship due to the restriction is shown, the Government may make a hardship payment.

8) The renewal fee is waived while the prevention is in force.

9) Breaching the prevention makes you liable to a) an unlimited fine and/or b) <= two years prison if convicted.

Legal Notes General: • A partly redacted list of subject areas that may fall foul of this provision is given at http:// www.ipo.gov.uk/p-securitylist.pdf.

• If/when finally released, such applications act like normal s2(3) (novelty only) art for any intervening patent filings.

• Since A77 EPC appears to relieve the Comptroller of any duty to disclose a patent application to the EPO when s22(1) applies, subsection (4) appears to be largely theoretical. See BB 9th Ed. §22.04.

Study Guide to the Patents Acts (2021 edition)

47

UK Patents Act · section 22-23 Practice Notes s.22(2) and the EPC/PCT: • Note that EPC/PCT applications would need to be submitted to the UKIPO first for technologies likely to be relevant for s22 – see s23 below.

• Under A135 EPC, if an application is not received by the EPO within 14 months, conversion to designated states (i.e. GB) may be possible – see s81 for the UK. • Similarly, s89(3)(b) UKPA allows for the possibility of a PCT filing designating GB being converted to a GB national filing under the review and excuse procedure if it is not received by the International Bureau within 14 months.

General: • One can seek discretion to disclose to specified persons (possibly valuable for subsequent damages when ‘released’).

• It is likely that such an invention is also covered by the official secrets act or the export of goods control act, and hence may affect the use of the invention regardless of its patent’s status.

• There is some scope to foreign-file secret applications within NATO countries. This also requires permission from the UKIPO, so make sure it’s done in plenty of time before the priority deadline.

• Fees are paid separately to those of other applications in order to protect secrecy.

• Don’t cross-reference to a secret application, or the second application will become secret too.

• If a hardship payment was made to an employer under s22(7)(b), it is unlikely that in a dispute an employee could obtain any compensation for it, as s40 requires grant of the application first.

Section 23: Restrictions on Overseas Filings 1) Restrictions apply where an application falls under subsection 1A below, unless – a) the application was filed in the UK six or more weeks ago, and b) there is no prevention order under s22.

1A) Restrictions apply if: a) the application relates to military technology or may prejudice national security, or b) the information therein may prejudice public safety.

2) But the restrictions do not apply if a non-UK resident previously filed the application overseas anyway.

3) Breaching the restriction makes you liable to a) an unlimited fine and/or b) <=two years prison if convicted…

48

Part 1: UK Law

UK Patents Act · section 23-24 3A) … but only if a) you knew that filing would contravene s23, or b) you were reckless with the possibility that it would.

4) This section also applies to utility models or other forms of protection for inventions found either at home or abroad.

Practice Notes • Effectively, you do not need to seek permission to first file overseas unless you suspect that the invention will contravene s23(1A).

• However, in that case you can still request foreign filing clearance from the UKIPO.

Section 24: Publication and Certificate of Grant 1) Notice of grant is given in the OJ as soon as practical after grant of a patent.

2) A grant certificate is sent as soon as practical after notice is given.

3) Along with the notice, the ‘B’ spec is published as are the inventor and applicant details.

4) The Comptroller is not required by 3) to publish inventor details of those who have waived the right to be mentioned under R11 (c.f. s13).

Rules R34 The certificate names the proprietor (applicant), the filing date and patent number.

Legal Notes General: • The date of notice in the OJ is the date from which monopoly rights are activated, and is also the date from which post-grant procedures can begin. However, the date provided by the 18(4) notification of grant (before 1 October 2016, the date of the letter itself; after 1 October 2016, a later date indicated by that letter) is the date of the ‘administrative grant’ of the patent, at which point the pre-grant procedures (s1-s23) end. Consequently, in effect there is a limbo period in between these two grant dates, and ‘pre-grant’ means before administrative grant while ‘post grant’ means after notice in the OJ. See BB 9th Ed. §24.05.

• Notably, during this limbo period voluntary amendment under s19 is not permitted (as this applies prior to administrative grant) but neither is amendment under s27 or s75 (as these are post notice of grant). Hence voluntary amendment is not possible in this period.

Study Guide to the Patents Acts (2021 edition)

49

UK Patents Act · section 24-25 • Similarly, divisional applications cannot be filed after administrative grant (see also notes to s18).

• An EP(GB) patent has an equivalent date of grant when notice appears in the European Patents Bulletin.

Section 25: Term of Patent 1) A patent grants, and takes effect, on the date of notice in the OJ (c.f. s24). The term or period is 20 years from the date of filing (NB not the date of priority). : 3) A patent ceases to have effect at the end of the renewal date (normally the 4th or subsequent anniversary of filing, except in circumstances outlined by R37(3) or (4) below), if a renewal payment is not made by the end of the renewal period (see R36 below)…

4) but if paid with an additional fee (see R36(4)) within six months grace (to the end of the sixth calendar month after the last month of the renewal period) then it is treated as if it never lapsed, and so: a) anything done with or to the patent in that grace period is valid, b) intervening infringements are still infringements (c.f. s20B(3)(a), but also see s62(2)), and c) intervening Crown use is still Crown use.

5) The Comptroller must remind the proprietor if the fee is not paid.

Rules R36 General provisions 1) (Defines periods for rules R36-R41, incorporated below) 2) If payment is not made within the renewal period as set out in R37/38 (as applicable) then the patent ceases to have effect at the end of the renewal date (i.e. the anniversary of filing, not the end of the month).

3) Pay using PF12 within the renewal period.

4) If still within the s25(4) grace period (or upon restoration), a request for late payment uses PF12 and requires the renewal fee and a late payment fee (Nothing (£0) in first month, £24 for each succeeding month or part thereof up to the sixth month).

5) Payment results in a payment certificate.

R37 For the first renewal – 2)a)b) Subject to subsections 3 and 4 below, the renewal date is the fourth anniversary of filing (i.e. the start of the fifth year), and the renewal period for paying is during the three calendar months preceding and including this anniversary (therefore by default the period for paying the first renewal is the start of the 46th to the end of the 48th calendar month, with the renewal date falling within the 48th calendar month).

50

Part 1: UK Law

UK Patents Act · section 25 3) But, if a GB patent grants within the (notionally distinct) three-month period preceding the fourth anniversary of filing, or later, then the renewal date is three months after the grant date, and the renewal period is until the end of the calendar month in which that modified renewal date falls.

4) Meanwhile if an EP(GB) patent grants within the three month period leading up to the fourth anniversary of filing (Case A), or later (Case B)… a) the first renewal date is either three months after the grant date (Case A) – (see MOPP 25.08), or the next anniversary of filing (Case B), and correspondingly b) the first renewal period is either until the end of the calendar month in which the renewal date falls (Case A), or until the end of the three calendar months preceding and including the next anniversary after mention of grant (Case B) – (i.e. in each case finishing at the end of the calendar month comprising the modified renewal date).

R38 Subsequent renewals – 2) The renewal period is the three calendar months leading up to and including the renewal date in the third month.

3) 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.

R39 Renewal notice – 2) If a payment is overdue, the Comptroller must send a reminder within six weeks after the renewal period expires …

3) a) … to the last address specified by the proprietor with such a payment, or another address if specifically informed of it, b) or otherwise the address for service.

4)a)b) The reminder states that payment is overdue and the consequences of non-payment.

R41 I f the renewal and late fees are still not paid by the end of the grace period, the Comptroller will send notice to that effect within six weeks and point out the possibility of restoration under s28.

Legal Notes End of patent term: • A patent’s term expires at midnight at the end of the day preceding the 20th anniversary of its filing date (in other words, up to but not including the 20th anniversary).

• Supplementary protection certificates (SPCs) are available typically for medical and plant products. These certificates don’t extend the term of the patent, but act as a supplement once the patent runs out to give similar protection to a product. The purpose is equitable protection for products requiring approval from a regulatory body only (e.g., products that must undergo clinical trials that may last an appreciable portion of a normal patent’s lifetime). EP(GB)s are included by virtue of EPC A63(2). The protection conferred by SPCs

Study Guide to the Patents Acts (2021 edition)

51

UK Patents Act · section 25-26 can only extend to the products authorised by the regulatory body, so these need to fall within the scope of the patent’s claims. See Medeva BV’s application, [2010] EWHC 68 (Pat). For further reading consult s128B below, and Schedule 4A as listed after s128B in the Black Book.

• If you want renewal fee reminders to be sent to an address other than the address for service, this now only has to be notified once; R39(3)(a) has been amended so that from 6 April 2017 it is no longer necessary to (re-) specify the address every year.

• For completeness, the IPA 2014 introduced an obscure modification to Rule 36(2) (not included above) for the very rare circumstance in which the EPO revokes and then restores an EP(UK) patent, and in the intervening period a UK renewal fee would have become due (see s77(5A)). In this case, pay the renewal fee by a modified renewal period of two months after restoration (R41(A)).

Practice Notes Late Grant: • If a GB-issued patent grants after the second or subsequent renewal period, you have to pay all the outstanding renewal fees. See BB 9th Ed. §25.11.

Renewal Fees: • Renewals can’t be paid up front for additional years.

• Licences of right (see s46) confer a 50% reduction on renewal fees (but cancellation of the right means you have to pay all the discounts back again…)

• A licensee can check that renewal fees have been paid by filing a PF49 (a ‘caveat’), or more easily by checking the register.

Extensions: • The renewal period cannot be extended by R108, because the grace period is provided instead. The grace period itself also cannot be extended by R108.

• However, failure of the Comptroller to send a payment reminder under s25(5) could be interpreted as a procedural irregularity under R107 (c.f. s117), allowing for the possibility of additional time to pay the fees in this circumstance.

Section 26: Patent Immune from Unity Objection One cannot object to a granted patent on grounds of unity either as the claims currently stand or as proposed to be amended.

Legal Notes • Recall that s76 means the scope of a granted patent cannot be extended, so there is no risk of importing additional inventions from the description into the claims during post-grant amendment; it simply means that one cannot object to existing non-unity in claims after grant, for example when post-grant amendment is notified in the OJ. See s27 below.

52

Part 1: UK Law

UK Patents Act · section 27

Section 27: Post-Grant Amendment 1) Subject to s76 (no added matter or broadening of claims), the Comptroller may allow amendments on request by the proprietor…

2) … unless any proceedings are pending that may question validity (c.f. s74/5).

3) Such amendments are retroactive to the date of grant.

4) The Comptroller may of his own volition amend to acknowledge a registered trade mark.

5) A third party may oppose the request of subsection 1).

6) In considering whether to allow a request to amend, the Comptroller will consider any relevant principles under the EPC. Rules R35 Amendment process for s27 and s75 – 1) The proprietor must: a) request amendment in writing, b) identifying the proposed amendment, and c) giving the reason for it.

2) Preferably e-file the request.

3) The Comptroller may require the amendment to be shown in a copy of the specification.

4) If an EP(GB) patent was originally published in another language, provide a translation of the original and amended portions of text…

5) … and the Comptroller may give subsequent directions as he sees fit (e.g. require a full translation of a German-originating EP(GB) if accuracy is doubted).

6) If the amendment is approved, the Comptroller, or court (c.f. s75) may direct that the updated specification is filed in accordance with the formal requirements of schedule 2 (i.e. conform to publication standards).

Legal Notes General: • If currently in proceedings for infringement or revocation, use s75, not s27.

• Whilst discretionary, generally amendments under s27 are allowed in order to echo the EPO position that amendment should be allowed if it enables a patent to persist in a restricted form.

Opposing the amendment: • The existence of an application to amend is posted in the OJ; the details are available for inspection on the register.

• Acceptable grounds of opposition to post-grant amendment: i. Amendment does not meet requirements of s76 (e.g. adds matter or broadens scope). ii. Amendments would still leave the patent invalid.

Study Guide to the Patents Acts (2021 edition)

53

UK Patents Act · section 27-28 • Unacceptable grounds: i. Non-unity (c.f. s26).

Practice Notes General: • Post-grant amendment is most often used when: i. New art is cited against a corresponding (e.g. still-pending) overseas application, or ii. An infringer (or third party) cites art against a patent and the patentee wants to strengthen the position of their patent prior to bringing an infringement action likely to result in a countering revocation action. Note that in these circumstances it is therefore possible that the infringer may infringe the patent to different extents (or not at all) between publication and grant versus after grant, since s27 amendments are only retroactive to the grant date (see s62(3) and s69 below for a discussion).

Good faith: • A proprietor should show good faith: i.e. full disclosure of circumstances in good time, and not sit on the need to amend (thus keeping a potential infringer in the dark as to your intentions/position, and also potentially giving rise to estoppel).

• Conversely, whilst the recent UKIPO practice of requesting overseas search reports during prosecution may well fall under the ‘good faith’ provision if not reported, thereby running a theoretical risk that post-grant amendment may be refused in respect of a document previously cited in an overseas report but not notified to the UKIPO, this appears unlikely in light of s27(6), as the patentee’s conduct is not considered relevant by the EPO. Currently there is no other clear sanction for not notifying the UKIPO of foreign search reports, though presumably it may affect the discretionary consideration of damages under s63(2).

EPO Central Amendment: • Art. 105a EPC provides for post-grant central amendment. Thus an EP(GB) (and any corresponding patents throughout Europe) can be amended together via this process.

Clearly this may be a more cost-effective route where prior art comes to light after grant of an EP patent. s27(6) and R35(4)(5) accommodate this option.

Section 28: Restoration of Lapsed Patents 1) Where a patent lapses due to a failure to pay any renewal fee, apply for restoration using PF16 within the prescribed period (13 months after the grace period of 6 months) from the end of the calendar month of lapse. : 2) An application to restore can be by the proprietor, a person who would otherwise be the proprietor, or (with the Comptroller’s permission) unilaterally by one of several joint proprietors.

54

Part 1: UK Law

UK Patents Act · section 28 2A) Notice of the application to restore is published in the OJ. 3) If the Comptroller is satisfied that the failure to fully pay in the original period, or (with additional fees) in the grace period, was unintentional, then he shall restore the patent upon payment.

4) Restoration can be conditional (e.g. on sorting out registration by a new proprietor, or securing any rights of third parties).

Rules R40 Restoration of lapsed patents under section 28 1) Apply for restoration before the end of 13 calendar months from the end of the grace period (the grace period itself lapses at the end of the sixth calendar month after the renewal period ends; be seen to calculate it this way in FD1).

2)3) Apply on PF 16 – notice of the application is then published in the OJ. 4) The application should also enclose supporting evidence (i.e. that failure to pay was unintentional)…

5) … if it does not, the Comptroller will specify a period to provide it.

6) The Comptroller will notify the applicant of any negative decision…

7) … the applicant then has one month from this notice to request a hearing (if he does not, then the patent is lost).

8) If the applicant requests a hearing, the applicant will be heard before the Comptroller decides to allow or refuse restoration.

9) If the restoration is allowed, it is advertised in the OJ. Legal Notes Unintentional Failure: • ‘Unintentional’ is more lenient than the previous requirement of ‘reasonable care’. For instance, a breakdown of communication between the agent and client would not count as reasonable care, but is probably unintentional. Hence in Orkli (UK) Ltd’s Application, BL O/302/09, due to an error or misunderstanding the agent intentionally failed to pay the renewal fee. However it was decided that as the ‘directing mind’ it was the proprietor’s intent that was the deciding factor, and hence the failure was unintentional from the proprietor’s perspective. Meanwhile, delegating to inexperienced staff, or having a poor record system, or not recognising a reminder (which were previous examples of lack of reasonable care) have yet to be specifically tested under the ‘unintentional’ provision; although pre-1977 case law suggests they may not be relevant to the intent of the applicant.

• NB: Consequently, the patentee cannot simply change their mind after expiry of the grace period about allowing a patent to lapse, even if done based on incorrect information or under other pressures, since it is an intentional (if misguided) action. However clearly if,

Study Guide to the Patents Acts (2021 edition)

55

UK Patents Act · section 28-28A for example, they changed their mind during the grace period and decided to pay, but then some unintentional error occurred that prevented payment, restoration would be possible.

See BB 9th Ed. §28.08-10 for more examples.

Time limit to comply following the decision: • The UKIPO issues a deadline that is typically two months but may be longer where circumstances require, in which to file PF12 and all the outstanding fees after the decision to allow reinstatement, before reinstatement is enacted and advertised.

Supplementary Protection Certificates: • It was made clear in Tulane [2012] EWHC 932 (Pat) that SPCs cannot be restored under s28.

Practice Notes Third Parties: • NB: In the exam, always consider the possibility of third party rights when advising on restoration (see s28A below).

Section 28A: Effect of Restoration of a Patent 1) … is as follows: 2) Anything done in the period between expiry and restoration in relation to the patent is valid.

3) Any infringement shall still be an infringement if a) it was done when renewal during the s25(4) six-month grace period was still possible, and/or b) was a continuation or repetition of an earlier infringement.

4) a)b) If, after the grace period had expired and before the notice of application to restore was published (s28(2A)), an otherwise infringing act or serious effort to do so is begun in good faith by a third party, then they may continue to do so, although this is not a transferrable licence per se.

5) a) Persons allowed to work the invention under subsection 4 can also allow partners within their business to work it, but… b) … can only assign or bequeath the right as part of the business itself.

6) There are no repercussions from 4) or 5) on the recipient of a would-be infringing product (i.e. it can be treated as if obtained from the proprietor).

56

Part 1: UK Law

UK Patents Act · section 28A-30 7) The above effects also apply to Crown use (s55).

Legal Notes Third-party rights: • S28A echoes the provision of s25(4) for the restoration period, but here allows for third-party rights to accrue while the patent is potentially dead. A similar provision is found in s20B and s117A. • Therefore as with s20B and s117A, be sure to request restoration as soon as possible to reduce the chances of third party rights accruing.

• For such third parties, note that ‘continue’ suggests that significant expansion or divergence from the original act is not allowed.

Section 29: Surrender of Patents 1) The proprietor of a patent may offer to surrender it at any time.

2) A third party can oppose the surrender.

3) If the surrender is accepted, it has effect from the date of notification in the OJ, and one cannot sue afterwards for prior infringements.

Rules R42 Notice of the offer to surrender is given in writing (e.g. on PF2), a) stating that there is no pending action for revocation or infringement (i.e. likely to question validity, which can result in a retroactive loss of a patent), or b) where an action is pending, full details of the action.

Legal Notes • Opposition to surrender is via inter-partes proceedings – see the end of Part 1.1.

Section 30: Nature of, and Transactions in, Patents and Patent Applications 1) A patent or patent application is personal property.

2) It or its rights may be assigned (sold) or mortgaged.

– c.f. s36(3) – if co-owned, all co-owners must consent.

3) It or its rights vest (are possessed, give rise to rights, etc.) like other personal property.

Study Guide to the Patents Acts (2021 edition)

57

UK Patents Act · section 30 4) A licence can be granted on a patent or application to work the invention described therein, and a) a licence can allow sub-licensing, and such sub/licences can also be assigned or mortgaged, and b) sub/licences vest like other personal property.

– c.f. s36(3) – if co-owned, all co-owners must consent.

5) The above subsections 2-4 are subject to: 6) a) assignments, mortgages, or rights, or b) agreements, being in writing and signed by or on behalf of the assignor or mortgagor (or the personal representative as appropriate), and 6A) if the transaction in subsection 6 is by a body corporate, then the signature is under the seal of the body corporate, and 7) assignment, a share or an exclusive licence of a patent may confer the right to bring infringement proceedings for earlier acts (c.f. s61 & 69, and s66 & s67).

Legal Notes General: • ‘Property’ here is moveable intangible personal property (e.g. like debts).

• Any licence must not fall foul of TFEU A101/102 (Competition Law) if it has an effect in the EU. • s30 also applies to EP(GB) cases.

• Use PF21 to register a transaction (see s32).

• Note the restrictions on assignment and licensing for co-owners. See s36 for details.

Practice Notes General: • If the owner is overseas, a UK representative is required in order to transfer rights, patents, etc.

• Liability – normally, assignment carries no implication that the patent is valid. However, a ‘full title guarantee’ does at least imply a clean, whole transfer.

• Signatures – personal ones require a witness, corporate ones a seal.

• VAT is payable on royalties so remember to factor this in, for example when claiming ‘back royalties’ as damages in a court settlement.

• Purchase of patents/rights is a capital allowance so 18% tax can be written off.

• There may be tax consequences from an assignment if you participate in the Patent Box.

58

Part 1: UK Law

UK Patents Act · section 30-32 • If a UK company goes bust, its patents go to the Crown. Therefore a liquidator must assign patents to itself or another party before dissolving a company.

• Whilst it is common (and safe) practice to include at least a nominal £1 consideration in an assignment, in principle this is not needed – see Wright Hassall LLP v Horton Jr & Anor [2015] EWHC 3716 (QB), Para 47. However, if the assignment includes any other terms then it is likely to still fall under general contract law and require the consideration to be included.

Section 31: Transactions in Scotland Similar to s30, except any agreement must conform to Scottish requirements for property transactions.

Section 32: Register of Patents 1) The Comptroller maintains the register of patents in accordance with prescribed rules.

2) Rules apply to a) the registration of patents and published applications, b) the registration of transactions, instruments or events affecting patent rights, ba) the registration of opinions issued under s74A (opinion on validity or infringement), c) the provision of relevant evidence/documentation, d) the correction of errors in registration, and e) the publicising of changes to entries in the register…

3) … although trusts (express, implied or constructive) are not recorded.

4) The register need not be kept in documentary form (i.e. can be online).

5) The register is available to the public (but see R48 and s118).

6) The public can obtain certified and/or uncertified copies of register entries upon payment of the relevant fee (see R48), and…

7) …the form to request such copies is PF23.

8) For non-documentary (i.e. on-line) parts of the register, the rights in subsections 5 and 6 are modified to be a) re 5), a right to inspect, and b) re 6), a right to extract an (uncertified) legible copy.

9) The register is prima facie evidence that registered events occurred.

Study Guide to the Patents Acts (2021 edition)

59

UK Patents Act · section 32 10) Similarly a certified copy is prima facie evidence of the contents.

11) Similarly for all other certified documents obtained via subsection 6. : 13) ‘Certified’ means by the Comptroller with the UKIPO seal.

14) (Defines ‘register’).

Rules R103 Address for service 1) a)-c) … is given by every applicant for a GB patent, or person who makes any request or opposition, 2) and may also be given by a patent proprietor or other rights holder (e.g. for renewal fee reminders).

3) Such addresses can be updated in writing to the Comptroller.

4) For all applicants and for proprietors who choose to have an address for service, it must be in the UK, EEA or Channel Islands.

R44 Entries in the Register 1) Must include: the name and the address of the applicant, and the address for service, the name and the address of the inventor, the title, filing date, and number of the application, the date of publication, and where claiming priority – – the date, application number and country of each priority document.

2) The inventor’s name and/or address can be omitted from the register if successfully requested (R11 – see notes to s13).

3)-5) (Lists the various events recorded in the register, including when exam is requested, when granted, current proprietor, any request for opinion and any reported transaction.

Other entries may include contested entitlement under s8, 12 or 37).

6) Any transaction under s32(2)(b) or s33(3) (assignments, etc.,) must be entered in the register as soon as practicable.

7) The Comptroller can register other details as he sees fit.

R45 Advertisements related to the register 1) The Comptroller may publicise register entries as he thinks fit.

R46 Requesting copies of register entries via s32(6) 1) Use PF23 (or alternatively online as of 14 April 2011)…

2) … plus fee (£5) to request uncertified copies or extracts, or 3) … plus fee (£20) to request a certificate that

60

Part 1: UK Law

UK Patents Act · section 32 a) an entry has or has not been made in the register, or b) an act by the Comptroller has or has not been done.

– NB: see R48 below for copies of documents.

R47 Registrations of transactions under s32(2)(b) or s33(3) (assignments etc): 1) a) Use PF21 (plus a fee of £50) b) include evidence establishing the transaction.

2) Comptroller may require further evidence.

R48 Copies of documents 1) A person can have a certified copy of a document on payment of £20, or 2) they can have an uncertified copy of a document on payment of £5…

3) … but not if: a) it’s excluded under s118 (e.g. not available before the application is published), b) or copying it would infringe copyright.

4) Can request the patent application, specification, or any other document kept at the patent office in this way.

5) Use PF23.

R49 Correction of name or address 1) Anyone can request correction of (a) their name (using PF20), (b) their address, or (c) their address for service (in writing). : 4) Proof may be required if the Comptroller has doubts.

5) An accepted correction is added to the register, application or document as applicable.

6) This rule includes requests to correct under s117 (correction of errors in patents and applications), and to change a name or address as in subsections (1)(a),(b) above.

R50 Requesting correction of error (in Register) 1) Subject to R49, anyone may request the correction of an error in the register or any document relating to registration…

2) a) … in writing, and b) accompanied by sufficient information to identify the error and the correction.

3) The Comptroller may require an explanation if he has doubts.

4) An accepted correction is added to the register, application or document (relating to registration) as applicable.

Legal Notes Summary: • Basically, register alterations, assignments and licences in writing, with at least the grantor of a transaction’s signature. Use form PF21, or PF20 for simple corrections.

Study Guide to the Patents Acts (2021 edition)

61

UK Patents Act · section 32 • Whilst s32(2)(a) limits the register to patents and published applications, it is still advisable to notify the comptroller of any registerable event prior to publication – see s33(1)(b).

General: • There is a blanket 14-day wait on any document filed at the UKIPO before being put on the register.

• There is no default obligation to notify the Comptroller of legal proceedings, though the court may require it.

• R49 allows the correction of a name and/or address in any document. As of 1 October 2016, R49(6) was updated to make clear that such corrections could be due to changes in circumstance (e.g. marriage or a house move) as well as due to errors. Meanwhile R50 allows more general corrections, but in relation to the register only.

Overseas: • NB: The UKIPO does not maintain a register for EP(GB) pending cases – this is done with the EPO register, so assignments etc. of such cases must use the EPO register.

• The PCT does not have a register as such, so a licence, etc. can’t be registered. However, assignments and licences can be notified to the International Bureau during the international phase.

Registering self: • In FD1 there is sometimes one ‘free’ mark for registering yourself as the agent for a new client’s application. This simply requires notification in writing (or using PF 51 if the agent is appointed by a person already in proceedings) – see R101. Finally, recall that you don’t have to be registered as an agent to pay renewal fees; anyone can pay them.

Practice Notes Effective Deadlines: • Entries for assignments, licences etc., should be made within six months or as soon as practical after the date of assignation or licensing (c.f. s68); otherwise, costs or expenses for infringement proceedings will not be awarded to the assignees or exclusive licensees.

Certified priority documents: • Available by virtue of R48(1)&(4). Request using PF23.

• If a specific recipient country is named, the UKIPO may tailor it to their needs.

General: • Inspections of the register are free on the UKIPO and EPO patent websites.

• The address for service is usually on the original application form. For international applications, put it on form NP1 when the national fee (£30) is paid. If for some reason there is no address for service but the applicant or representative are contactable, the Comptroller

62

Part 1: UK Law

UK Patents Act · section 33-34 will allow two months to provide an address (R104(2), similar to R12(2)). As of 1 October 2016, it is also possible to request a two-month extension to this period (see the end of part 2 of Schedule 4 at §123.26 in the BB 9th Ed). If there is no address and the person is not contactable, then the application/notice/request, etc., is deemed withdrawn as applicable.

Section 33: Effect of Registration 1) A later transaction or event has entitlement over an earlier transaction or event, if a) the earlier transaction or event was not registered, or b) notification was not given to the Comptroller (if the transaction or event occurred before publication), and c) in either case, the later (subsequent) transacting party did not know about the earlier transaction.

2) The above also applies where a second right is incompatible with a first right arising from an unregistered transaction or event.

3) It applies in regard of: a) assignment of a patent or application, or a right in it, b) mortgage of a patent or application, c) grant/assignment/mortgage of a licence or sub-licence, d) death/dissolution of a proprietor and transfer of vested interests, and e) court orders i. transferring rights to another person, or ii. changing the name of the proprietor.

4) The effective date of registration for subsection (1)(a) is the date of the application to register.

Practice Notes • In summary, if a transaction is not registered then it is unenforceable against a subsequent bona fide transaction conducted in good faith by a later party. Therefore it is desirable to register as soon as possible and preferably within six months (cf. s68: one cannot claim costs or expenses for infringing acts prior to registration if not done within six months/soon as practicable).

• A transaction is not valid if not done with the correct owner of the patent or application – if incorrect, advise correction by the actual owner and then re-assign.

Section 34: Rectification of the Register 1) … can be made by court order on behalf of an aggrieved party.

Study Guide to the Patents Acts (2021 edition)

63

UK Patents Act · section 34-36 2) The court can decide what needs rectifying.

3) The court informs the Comptroller.

Legal Notes • Also applies to EP(GB) – after grant.

• For the proprietor, recall that some voluntary changes can be made using R49 and R50 – see s32.

Practice Notes • Application for rectification under s34 is made to the Patents Court, with copies to other parties and the Comptroller. Note that other courts can in principle also order rectification.

Section 35: [Repealed] [Evidence of register, now covered by s32]

Section 36: Co-Ownership of Patents and Applications 1) The default arrangement for co-ownership is equal undivided share – subject to agreements to the contrary.

2) Thus, by default, a)b) each is entitled to work the invention independently without it being classed as infringing each other’s rights – subject to agreements to the contrary.

3) Subject to contested entitlement (s8, 12 or 37, i.e. court orders), or an agreement to the contrary, all parties must agree in order to: a) amend the patent (or request amendment) or apply to revoke the patent (c.f. s38), or b) licence, assign, or mortgage or otherwise secure against the patent.

4) Anyone may supply a co-owner with essential means to validly work the patent without being classed as a secondary infringer (c.f. s60(2)).

5) A patented product arising from any of the co-owners validly working the invention is treated as per any conventional patented product.

6) All the above does not affect the rights of trustees or inheritors.

7) The above also applies to patent applications.

64

Part 1: UK Law

UK Patents Act · section 36 Legal Notes Summary: • All co-owners can independently work the invention and source essential means for it.

• All co-owners must agree to license / assign the patent / application or to amend / revoke it.

• Any of the above may be altered by agreement.

General: • Each owner has the rights of a proprietor with regards to infringement and so can sue for infringement without asking for permission of the others. However, whilst the other parties are automatically also brought in to these proceedings, they are only liable for costs if they take an active part in them (c.f. s66).

• Ownership is as tenants in common, so that upon death or dissolution of a co-owner their interest in the property is passed on to their successor(s) in title and does not aggregate with the surviving co-owners.

Disputes: • In the event of disputes about how to proceed with the patent, use s10, not s8. However if entitlement is also an issue, consider using s8 in parallel.

Practice Notes • In exam questions, consider whether the options available to co-owners would be suitable for your client(s). For example, a capital investor in a jointly owned patent probably won’t be working the invention themselves, but at the same time also cannot independently deal in their investment. In such a circumstance an explicit agreement allowing the investor to freely deal in the patent, or alternatively part ownership of the company that owns the patent (rather than the patent itself), may be preferable.

• Where a co-owner is not involved or interested in exploiting a patent, they can agree to allow the or each other party to deal in the application without their further consent.

• Joint ownership between employers could in principle arise only where an employee moves jobs whilst developing an invention. Such ownership is unlikely to be amicable. Options include reaching an agreement to allow free dealing in the patent by one or both of the parties, or an assignment, or alternatively an attempt to get the application refused under s8 (or later s72) depending on your desired outcome.

• Take care to distinguish this situation from the more common case where the employee improves upon an invention made earlier with a previous employer. In this case it is likely that the improvement would infringe any patent held by the previous employer, but the new employer can patent the improvement themselves and then propose a cross-licence with the previous employer.

Study Guide to the Patents Acts (2021 edition)

65

UK Patents Act · section 37

Section 37: Determination of Right to Patent after Grant 1) After grant, anyone having or claiming a proprietary interest may ask the Comptroller: a) who is/are the true proprietor(s) of the patent b) should the patent have been granted to the grantee(s) c) should any right be granted or transferred to other person(s).

– the Comptroller determines and gives order.

2) The order may for example be to: a) include a claimant as an extra or replacement proprietor b) require registration of a transfer or event giving rise to a right for a claimant c) grant a licence d) direct the current proprietor(s) or rights-holder to comply/facilitate.

3) If a person does not comply with a direction under 2(d) within 14 days, the claimant may apply to the Comptroller to do it themselves.

4) Where the result is revocation (c.f. s72) due to ownership by an incorrect grantee, the claimant may: a) apply for a patent in the whole matter of the spec if revocation was unconditional and the claimant is entitled (within three months from decision or end of appeal – R20), or b) apply for a patent in whatever matter was determined to be excluded from a patent in a conditional revocation (again if entitled and within three months), and such a new filing will keep the filing date of the original.

5) A transfer of the patent (e.g. under subsection 4 above) is not actionable if more than two years after grant, unless one of the grantees knew they were not entitled at the time of grant.

6) All the above does not affect the rights of trustees or inheritors.

7) Notice must be given to all the current proprietors.

8) The Comptroller can pass the issue to the court.

9) The court won’t look at the issue unless it complies with the conditions of subsection 5.

Legal Notes General: • Basically s37 is the same as s8, but with a two-year window after grant unless the current proprietor knew they were not entitled when the patent was granted (see also s72(2)(b)). The

66

Part 1: UK Law

UK Patents Act · section 37-38 IPA 2014 fixed a previous deadline aberration so that now, as one may expect, the two-year window expires at the end of the 2nd anniversary of the date of grant.

• Following Markem v Zipher [2005] EWCA Civ 267, entitlement is determined according to who made an inventive contribution to ‘the heart of the invention’ as found in the granted claims. See also BB 9th Ed. §37.05 for other examples of issues that may influence entitlement proceedings.

• Note that s37 also applies to granted EP(GB) patents.

• The procedure for the determination uses the rules for proceedings heard before the Comptroller, found at the end of Part 1.1.

Section 38: Effect of Transfer Under s37 1) Any licences are considered to be issued by the updated proprietors instead, unless: 2) … the person or persons to whom the transfer of the patent is made are not any of the old proprietors (i.e. transfer is to entirely new parties) – since in this case there is no continuity of licensors, and so no continuity of licence is possible – in which case the licence(s) lapse upon registration of the new person(s).

3) Following a transfer under subsection 2) above, or the filing of a new application by a new proprietor under s37(4) above, old proprietors and licensees are entitled to a licence to continue working the invention (or to start if serious preparations had been made), if they were acting in good faith in the UK. Request a licence within two months of order to transfer.

4) Such a licence under subsection 3 must be for a reasonable period and on reasonable terms.

5) The Comptroller will arbitrate any licensing issues.

Legal Notes General • Clearly s38 is similar to s11, but is for post-grant entitlement effects. Hence if X, Y and Z were the original applicants and Z had licensed use to A, but was then removed by the Comptroller, A’s license is treated as being granted instead by X and Y. But if none of the original applicants remain, (e.g. if X, Y and Z are replaced by B), then A’s license lapses upon registration of B as there are no licensors in common.

• Similarly if matter from this patent was contested and resulted in a new application by W to all or some of the subject-matter, then similarly A, X, Y and Z can apply for licences from W. • A, X, Y and Z have two months, from the date of the order under s37, to apply for a licence (R90(2)) from B (or W) if they were acting in good faith in the UK. • s38 also uses the rules for proceedings heard before the Comptroller, found at the back of Part 1.1.

Study Guide to the Patents Acts (2021 edition)

67

UK Patents Act · section 39

Section 39: Right to Employee’s Inventions 1) An invention by an employee belongs to his employer, if: 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 the employee’s duties and implicit in these duties is a special obligation to further the interests of the employer.

2) Any other invention belongs to the employee.

3) If it belongs to the employee, then a) the patent can be applied for and b) 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 (i.e. overlapping rights, CDPA s11 and s215).

Legal Notes Definitions: • In general, an ‘employee’ is someone who has a contract of service or apprenticeship with an employer; however see the practice notes below for further considerations.

• ‘Duties’ is not that specific – think of it as ‘role’ rather than activities per se. Typically, duties are as stipulated in a contract of employment – and hence are generally quite vague (see BB 9th Ed. § 39.08).

• ‘Invention’ is a broader term than ‘patentable invention’, since ownership can be determined prior to grant or even prior to application.

General: • s39 applies to employees normally resident in the UK and mainly employed here.

• In principle it overrides any agreement between an employer and employee (since any such agreement should not diminish the employee’s rights).

• s39 cannot result in joint ownership between employer and employee.

• s39 places a burden of proof on the employer, as the default position is ownership by the employee: – the three routes to employer ownership are: i. normal duties where inventions may reasonably arise.

– normal duties typically relate to the employee’s contracted role rather than a day-to-day stipulation of their work schedule (e.g. researcher vs janitor). Normal duties do not necessarily preclude working at home, or outside normal hours, or using one’s own equipment (see Prosyscor v Netsweeper [2019] EWHC 1302 (IPEC)), although in FD1 if such circumstances are highlighted then be seen to carefully consider whether they are relevant.

68

Part 1: UK Law

UK Patents Act · section 39 ii. specially assigned duties where inventions may reasonably arise, and iii. where duties carry a special obligation to further the interests of the employer’s undertaking (e.g. senior management, or a fiduciary).

– Is the expectation of inventions arising that of the employer or employee? There may be conflicting viewpoints to consider.

• Any resulting settlement is typically informal, since the invention often has yet to be applied for and so all parties want to avoid disclosure, but…

• … the section also often leads to s8, 12, 37 and 72 actions.

• The immunity provided by s39(3) does not appear to include registered designs, but registered designs themselves exclude any design solely dictated by technical function (s1C(1) RDA – see part 1.2.1 of this book) and so in principle there is no overlap.

Practice Notes Inventors: • A person who merely assists or advises the inventor is not themselves a co-inventor (s43(3)).

– So where an invention arises from a group discussion, try to obtain minutes or statements indicating the various respective contributions of the parties involved. Often in FD1 questions, one member of this group will defect – so also check whether the meeting was confidential (see s2(4)).

– Similarly, in FD1 one member of this group may ‘unexpectedly’ turn out to work for a competitor, and so their exact status regarding inventorship (and confidentiality, employment, etc) should be checked.

Employees: • A practical test to ask the inventor: who pays their National Insurance? If they do themselves, then they are a contractor. If someone else does, then they are that person’s employee.

• PhD students and retired lecturers are popular topics of exam questions since their status as an employee of a university can be vague and open to discussion, and they also do commissioned research for third-party funding bodies that gives rise to inventions. In such cases it is important to separate out each relationship and analyse it – advise looking at any employment contracts, funding/grant agreements, etc, for IPR clauses where these are not specified in the question. It may be necessary to consider several outcomes, though typically a student will own their invention in the absence of indications to the contrary.

• Similarly, directors or major shareholders are not always employees – request confirmation.

If they are employees then they are likely to fall under the special obligation clause of s39(1) (b) due to seniority.

• With contractors and other non-employees, check if there is a contract and whether it clearly deals with ownership. If there is, request a copy to inspect.

– If the ownership of IPR is not specifically covered by an agreement then it depends on the nature of the work: contractors come in shades of grey, e.g. working full time solely for the company vs. ½ day when asked. Thus the key question is whether the relationship is more like

Study Guide to the Patents Acts (2021 edition)

69

UK Patents Act · section 39-40 that with an employer or with a commissioner – i.e. a contract of service (as per the definition above) vs. a contract for service (see BB 9th Ed. § 39.05). Also consider the nature of the work, and whether inventions may arise in the contractor’s normal duties under the contract.

– In the analogous Robin Ray v Classic FM Plc [1998] FSR 622 copyright case, in the absence of an IP contract it was deemed that the contractor was commissioned to provide a database system for use by Classic FM, and so did not cede whole ownership of it but merely a licence to use in the UK (the database system was sold to radio stations world-wide).

• In each of the above cases, consider any indication that the invention was not made at or in work.

• As a corollary to all the above, mention the inclusion of an IP ownership clause in any agreement you propose.

Section 40: Compensation of Employees 1) If, while a patent is in force or within one year of its lapse, an employee makes an application for compensation, and: a) a patent has been granted for an invention made by the employee and belonging to the employer, and b) the invention and/or patent is of outstanding benefit to the employer (factoring in the size/nature of company), and so c) it is just that the employer compensates the employee, then the court or Comptroller may award compensation to the employee according to s41.

2) If, while a patent is in force or within one year of its lapse, an employee makes an application for compensation, and: a) a patent has been granted for an invention made by and belonging to the employee themselves, and b) it is assigned or exclusively licensed to the employer, and c) the benefit to the employee is inadequate in relation to the benefit to the employer of the invention and/or patent, and so d) it is just that the employer (further) compensates the employee, then the court or Comptroller may award compensation to the employee according to s41.

3) However, subsections (1) and (2) do not apply if the employee is in a trade union that has negotiated a pay settlement regarding such inventions.

4) Subsection 2 overrides any contract or agreement (other than subsection (3) above) relating to the invention.

5) The Comptroller can pass the issue to the courts. :

70

Part 1: UK Law

UK Patents Act · section 40 Legal Notes General: • s40 applies for inventions made while an employee. S40(1) relates to inventions owned by the employer via s39(1), whilst s40(2) relates to inventions owned by the employee via s39(2).

Definitions: • Benefit: – Benefit in money or money’s worth (s43(7)).

• Outstanding benefit: – Not merely substantial, but out of the ordinary.

– Future benefit is not included, but foreign rights can be taken into account (c.f. s43(4)).

– Must factor out contributions of adverts, other features etc., in sales.

– The benefit is the actual, not theoretical benefit – i.e. not how the employer could have benefitted under a better exploitation of the invention, but what the benefit actually was – see Unilever v Shanks [2010] EWCA Civ 1283 – Onus is on the applicant for compensation (the employee) to prove it is outstanding.

– Furthermore a given level of benefit will be proportionately less outstanding the larger the employing organisation becomes, which can result in an employer being ‘too big to pay’; see Shanks v Unilever PLC and others [2017] EWCA Civ 2 The Court of Appeal noted that for an undertaking formed of groups or divisions, its effective size should at least encompass the extent of the groups alleged to have benefitted from the invention, and also reflect the economic realities of the undertaking. This decision subsequently went to the Supreme Court in Shanks v Unilever [2019] UKSC 45, which followed the Appeal Court’s reasoning and noted that the employer was a subsidiary in the Unilever group, and on that basis the benefit to that employer had been outstanding.

– Nevertheless outstanding benefit is very hard to prove – so far there are only a couple of successful applications under s40(1), the first being Kelly & Chiu v GE Healthcare Limited, [2009] EWHC 181 Pat Ct. • Inadequate: – The benefit to the employee may prove inadequate when the benefit to the employer diverges significantly from that understood at the time the agreement was made.

• Other factors that may contribute to ‘just’ compensation: – If the employer played dirty (equity requires clean hands); or – Where the balance of power forced an ‘unjust’ compensation level.

Procedure: • Applications for employee compensation use the rules for proceedings heard before the Comptroller as found at the end of Part 1.1.

Study Guide to the Patents Acts (2021 edition)

71

UK Patents Act · section 40-42 Practice Notes • An employee can only apply while the patent is in force or within one year of its lapse (R91). However, an employee may not know if a patent has lapsed and so miss the one year window. Therefore in the UK use PF 49 (a ‘caveat’) to request to be informed. In addition, the window can be extended under R108(1) at the Comptroller’s discretion.

• Note that if an employer improperly claims ownership of an invention that should belong to the employee, then of course entitlement under s8 or s37 as applicable should be considered, noting the possible two-year post-grant window (see s37 for details).

Section 41: Amount of Compensation 1)2) Should be a fair share of the benefit to the employer from the invention, the patent / application and/or the assignment of, or of any rights in, the invention or the patent / application, whilst taking into account: : 4)5) a) the employee’s duties and existing pay; b) the effort and skill in inventing; c) any co-inventor’s contribution (esp. other employees); and d) the employer’s contribution.

6) Payment can be a lump sum or periodic. :

Section 42: Enforceability of Employee Contracts 1) Applies to any contract relating to inventions made by an employee, a) with his/her employer, or b) with someone else at the behest of their employer.

2) Any term diminishing the employee’s rights (e.g. from s39-41) is unenforceable in respect of those rights…

3) … but this does not extend to any duty of confidentiality (e.g. an M.O.D. inventor).

4) This section also applies to Crown employees.

Legal Notes Definitions: • s42(2) specifies ‘term’. Therefore the whole agreement (e.g. an employment contract) is not lost if the term is severable (i.e. does not go to the heart of the contract).

• ‘Rights’ is vague and open to interpretation.

72

Part 1: UK Law

UK Patents Act · section 42-46 • The confidentiality caveat means that the patent application of an employee must not breach the employer’s confidence. In such circumstances, the employer could get an injunction banning application if there was a risk of disclosure (whilst of course still not entitling the employer to file the application instead).

– In the analogous confidentiality cases Faccenda Chicken v Fowler [1986] 1 All E.R. 617 (C.A.), and Printers & Finishers v Holloway [1965] 1 WLR 1, factors included the nature of employment, the nature of the information, whether expressly confidential, and the ease of isolation of non-commercial information (i.e. due care within the disclosure).

Section 43: Supplementary for s39-42 2) Limits s39-42 to employees: a) mainly employed in the UK (otherwise consult overseas associates), or b) if unclear where mainly employed, then if they are attached to a UK place of business.

3) An employee does not make an invention if they merely give advice or assistance to an (actual) inventor.

4) The employee can also claim compensation under these sections for the benefit to the employer from ensuing overseas patents and other protections (for example possibly supplementary protection certificates) arising from the invention.

5) Calculated benefit (money or money’s worth) of the patent and/or invention to an employer in s40-41 includes that to his inheritors, but…

5A) … calculated benefit to employer from an invention does not extend beyond the period that the patent is in force.

6) Compensation for an employee may be pursued by his inheritors. :

Section 46: Licences of Right 1) Any time after grant, a proprietor may apply on PF28 to register that licences are available as of right (R43(1)).

2) The Comptroller will inform any current rights holders of the change (e.g. licensees, mortgagors) and ensure that there are no contractual obligations prohibiting licencing (and will also advertise in the OJ – R43(2)).

3) Consequently, a) any person is entitled to a licence on agreed terms, or if no agreement, on terms of the Comptroller (c.f. R89),

Study Guide to the Patents Acts (2021 edition)

73

UK Patents Act · section 46 b) the Comptroller may exchange current licences with licences of right (if these have more favourable terms), c) any* infringer who takes a licence may then only pay damages up to 2x a retrospective licence (i.e. limits value of damage): c.f. s62, and d) the renewal fee payable is halved after registration.

3A) Under subsection 3(c) above, this can occur at any time during proceedings without the infringer admitting liability.

3B) Under subsection 3(d) above, the period for considering a reduction to the current renewal payment is up to the renewal date (i.e. up to and including the imminent anniversary of filing – s25(3), R36(2) – but see the practice note below).

4) A licensee as of right may, unless their licence expressly states otherwise, request the proprietor to defend against infringement. After two months from such a request, they can act themselves if the proprietor does not (i.e. like an exclusive licensee/co-owner – see s61, s66 and s67), with the proprietor drawn in as co-claimant.

5) A proprietor added as co-claimant under subsection 4 above is not liable for costs/ expenses unless they actively participate in the licensee’s action.

Legal Notes General: * Any infringer can take a licence and so avoid an injunction and limit damages etc., except for the case of importation from outside the EEA. Typical terms of agreements: • Royalties can be determined by comparison with existing royalties, by accounting or by profit sharing.

• Sub-licensing can be banned, as the proprietor still has the right to choose terms and be the licensing party.

• Still allowed to impose import/export bans outside the EEA. • Where the Comptroller arbitrates the terms, see R89 of the rules on proceedings at the end of part 1.1.

Practice Notes General: • Use PF28. Must declare that no registered agreements exist that preclude licensing as of right.

• In reality, to get a renewal fee reduction the application must be registered at least ten days before the fee is due.

74

Part 1: UK Law

UK Patents Act · section 47-48

Section 47: Cancelling a Licence of Right Under s46 1) The proprietor can apply to cancel the licence using PF30 at any time after the licence of right under s46 was registered (R43(3)).

2) To cancel, they must pay the balance of all discounted renewal fees, and any licensees need to consent to the cancellation.

3) Alternatively, an existing third party may apply for cancellation of an entry made under s46 within two months (R43(4)) of the date of entry – if they have an existing agreement with the proprietor that precludes licences of right (using PF2 + supporting material).

4) If the Comptroller agrees with the third party under subsection 3 above, then the Comptroller will cancel the entry and require the proprietor to pay the balance of any discounted renewal fees within a specified time limit.

5) Once the entry is cancelled, the proprietor’s rights and liabilities are as if the entry was never made.

6) Application for cancellation may in turn be opposed within two months (e.g. by nonlicensees such as a potential infringer, or by the proprietor themselves if cancellation is applied for by a third party) using the rules for proceedings heard before the Comptroller (see the end of part 1.1), and in particular R89.

Note – Sections 48 and 52 are no longer on the FD1 syllabus.

They are included for information only.

Section 48: Compulsory Licences

no longer on syllabus

1) After three years from grant, anyone may apply to the Comptroller for: a) a (non-exclusive) licence, b) an entry into the register allowing licences of right, or c) (if the government) a licence for a third party.

2) Subject to s48A & s48B (see notes below), the Comptroller may correspondingly: a) order a grant of a licence on terms he sees fit, b) make an entry into the register under s46, or c) order grant of a license.

3) The applicant in subsection (1) can already be holding a licence, and this should not prejudice proceedings. :

Study Guide to the Patents Acts (2021 edition)

75

UK Patents Act · section 48-52 Legal Notes General: • Generally, subsection (2) requires evidence of the abuse of monopoly rights c.f. TFEU A101 and 102 (see section 1.3 of this book), WTO’99 and TRIPS. See also s48A & s48B in the Black Book.

• Grounds under s48A (WTO Proprietors) include: in the UK, demand for a product is not being met on reasonable terms, a refusal to reasonably licence is blocking a technical advance of economic importance, or they are otherwise imposing conditions that affect the economy, subject to the applicant having tried and failed to get a license on reasonable terms already (other specific exemptions also exist).

• Grounds under s48B (non-WTO proprietors) include: in the UK, the invention is not being commercially exploited to a reasonable extent, or that demand is not being met on reasonable terms, or is only met by importation from a non-WTO state.

• In addition there are emergency provisions (e.g. licensing a vaccine) available to the government.

EU Compulsory Licences: • UKPA s128A incorporates EU compulsory licences, which are directed to the specific case of manufacturing pharmaceuticals for export to countries with public health problems.

Procedure: • Uses the rules for proceedings heard before the Comptroller listed at the end of part 1.1. The proprietor can oppose an application for a compulsory license (s52).

Section 52: Compulsory Licence Oppositions / Appeals

no longer on syllabus

1) The proprietor or anyone else can oppose a s48 order/entry…

2) … on the grounds that the circumstances in the evidence have ceased or are unlikely to recur.

3) If he agrees, the Comptroller may revoke the order, cancel the register entry, or terminate licences as applicable.

4) The Attorney General or equivalent is entitled to attend an appeal hearing.

5)6) The Comptroller may hand the process over to the court or an agreed third party, and in this latter case…

7) … they will report back to the Comptroller.

Note – Sections 55, 57 and 57A are no longer in the FD1 syllabus.

They are retained for information only as there are numerous references to Crown use in other sections and rules.

Section 55: Crown Use

no longer on syllabus

1) Any government department or person authorised in writing by a government department may:

76

Part 1: UK Law

UK Patents Act · section 55 a) For a product: i) make, use, import or keep; or sell or offer to sell if ancillary to one of these purposes (e.g. left over from main purpose), or ii) as applicable, sell or offer to sell for foreign defence purposes (via overseas national agreement) or for the production or supply of a specified drug or medicine, or dispose of the product (issue rather than sell) for any purpose at all. b) For a process: use the process, with any product arising directly from it treated as in a). c) As for b) with drugs / medicines. d) May supply essential means. e) May dispose or offer to dispose of any surplus no longer required (without it being an infringement). : 3) If already done in secret by the atomic energy authority or other government department, then no royalty is needed – providing there is documentary evidence (c.f. s64).

4) If not already in use, then usage after a) publication, or b) open communication after the priority date shall be on agreed terms (see s58).

5) Payments for published patent applications are only made… a) … once granted, and b) if the act would have infringed when the application was published.

6) Use can be permitted before or after grant, and before or after usage commences (i.e. retrospectively) and can be conferred on whoever the government thinks fit.

7) The government may inform the proprietor once use has begun and the patent is granted.

8) Received products of the invention may be dealt in freely. : Legal Notes General: • s.55 is not a licence – the section simply excludes government action from infringement.

• Agents of the Crown include the armed forces, but generally don’t include nationalised industries.

• Compensation does not take into account loss of manufacturer profit, although third parties with interests can claim through s57A. Note that for secret cases, the provisions of s55(5) are dealt with by s22(7)(a).

• Includes EP(GB) patents.

• Other IPRs such as unregistered design right are limited to use by the NHS and defence departments.

Study Guide to the Patents Acts (2021 edition)

77

UK Patents Act · section 57-57A

Section 57: Third Party Rights

no longer on syllabus

Essentially, the existence of an exclusive licence to a third party does not prevent Crown use, but that party can get compensation, the type depending on the licence arrangement: 3) If non-royalty paying (i.e. lump sum) then treat as proprietor as per s55(4).

4) For assignment by royalty (i.e. hire purchase), then have a right to a corresponding proportion of the proprietor’s s55(4) settlement.

5) An exclusive licensee can approach the proprietor for a portion of their s55(4) settlement, factoring in any investment made by the licensee in working the invention, if necessary settling via the courts.

Section 57A: Compensation for Loss of Profit (Due to Crown Use) no longer on syllabus 1) When Crown use occurs, the relevant department pays a) to the proprietor, or b) to the exclusive licensee (NB: not assignee as per s57(4)) compensation for any loss from not being awarded a contract to supply or perform the patented thing…

2) … but only to the extent that they could have fulfilled the contract themselves (e.g. SME paid less than large arms Mfr to compensate for very large production run).

3) Compensation is calculated based on the potential profit of the contract and any under-use of available capacity.

4) No compensation for loss of non-government contracts (e.g. if competitor able to sell nonpatented spare parts / accessories, or provide a service contract).

5) If no agreement on compensation is reached, it is determined in court under s58 (must be after grant, and considerations involve reasonableness of proprietor, contents at publication, degree of protection afforded by s55. NB: Crown can challenge validity of patent in court).

Section 60: Meaning of ‘Infringement’ 1) 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: a) if the invention is a product: make, offer to dispose, dispose, use, import or keep the product, b) if the invention is a process: use it or offer it for use in the UK when it is known or would be obvious that it would infringe to do so, or

78

Part 1: UK Law

UK Patents Act · section 60 c) if the invention is a process, offer to dispose, dispose, use, import or keep any product obtained directly by the process.

2) A person also infringes 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… 3) … unless the means is a staple commercial product, and is not used to induce infringement under subsection (1). : 5) Exemptions: a) private, non-commercial acts (e.g. private individuals), b) experimental purposes relating to the subject-matter of the invention, c) a medicine prepared in a pharmacy in response to an individual’s prescription, d) use for a ship temporarily in UK waters (c.f. subsection 7), e) use in an aircraft/vehicle temporarily in UK territory/airspace/waters (c.f subsection 7), f) certain exempt aircraft lawfully in the UK, and their parts or accessories, g) farm use: propagating the product of a harvest on own holding (c.f. subsections 6A,C), h) farm use: breeding livestock (c.f. subsections 6B,C), and i) human or veterinary health trials for market authorisation. : 6) However, exemptions from 60(1) under (5) a), b) and c) do not excuse acts under 60(2), except that a) persons supplying the Crown are excused (s55), and b) persons supplying prior inventors (s64) or pre-restoration/reinstatement rights holders (s28A/20B/117A) are excused.

6A) Schedule A1 contains: a) further restrictions on subsection (5)(g)(farm propagation), and b) provisions for when subsection (5)(g) is invoked.

6B) Subsection (5)(h) uses include: a) making an animal or animal reproductive material available for the farmer’s agricultural activity, b) but not sale for commercial reproductive activity.

6C) In subsections (5)(g & h), ‘sale’ covers any form of commercialisation.

6D) Any act done for the purposes of ‘medicinal product assessment’ which would otherwise constitute an infringement of a patent shall be regarded as done for experimental purposes under subsection 5(b)...

Study Guide to the Patents Acts (2021 edition)

79

UK Patents Act · section 60

6E) … where ‘medicinal product assessment’ means any testing or other activity to provide data for a) obtaining/updating market authorisation anywhere; b) complying with any regulatory requirement associated with such authorisation; and c) enabling the provision of health care on behalf of a government or public body, or enabling a health care or advisory public body to assess the suitability of the medicine for human use…

6F) … and ‘medicinal product’ covers both human and veterinary medicinal products.

6G) Nothing in 6D to 6F affects the interpretation of (5)(b) in relation to any other act. : 7) Ships, aircraft, etc. must be registered outside the UK to gain exemption under subsections (5)(d & e).

Legal Notes General: • The onus of proof of infringement is always with the patentee except in the case of a process producing a new product, where the existence of the product causes a presumption of infringement (the so-called ‘reversal of burden of proof’ – see s100(1) herein for more details).

• See the notes to s125 regarding the interpreted scope of protection provided by a claim.

Re 60(1) – Patented Products: • The following are considered to be patented products: i. a patented product (obviously), ii. a direct result of a patented process, or iii. a product to which a (relevant) patented process has been applied.

• Items ii. and iii. on this list derive from s60(1)(c) which states that a product is ‘obtained’ directly from a process, and hence encompasses products created by a process and also existing products materially changed by a process.

• The statute itself does not provide any restriction on what patented process may be applied to a product to make it into a patented product in this manner. However, there is an expectation that the courts would construe the intended meaning as being a process that results in some alteration to the product. Hence merely delivering cars in a patented lorry does not make the cars patented products, but by contrast applying a patented rust-proofing treatment to these cars may result in them becoming a patented product, as the cars acquire a non-trivial new property as a result of the process. In FD1, typically such a product is described as having some unique and testable property.

• A product is only the direct result of a patented process if no subsequent process outside the scope of the patent is applied that again results in some alteration to the product. Thus again merely transporting the treated cars above in the notional patented lorry will not stop them being a direct product of the rust-proofing process.

80

Part 1: UK Law

UK Patents Act · section 60 • Hence, in FD1 it is clearly important to consider whether a subsequent process has materially affected the testable property of the product such that it loses its identity as a direct product; for example where the direct product is a cooking ingredient, any resulting foodstuffs may or may not still comprise the ingredient in an identifiable way depending on how it was used during the respective cooking processes.

• Similarly, in FD1 it is important to keep in mind the extent of the claimed process; for example a process that produces more reliable CD master-disks only covers the resulting CD master-disks; it does not cover the CDs made using the CD master-disks, as these are not the direct products of the claimed process. This would of course also likely affect who are the possible infringers in the question.

• A separate question that relates to whether a material infringement has occurred is whether there is a de minimis principle available that allows incidental, trace infringements to be excused. Whilst a compound incidentally comprising one part in a billion of an infringing product has previously been excused (Monsanto v Merck [2000] RPC 709), the specific lack of provision for this in the statute, and subsequent case law, has brought this approach into question – see Monsanto v Cargill (No.2) [2007] EWHC 3113. Hence on balance it appears that there is currently no de minimis principle for lack of infringement.

Re 60(1) – Infringing acts: • Recall that ‘disposal’ is broader than merely selling; for example it encompasses giving a product away in a promotion or as a sample. Also recall that instead of being an offer to dispose, merely listing or stocking a product may instead be interpreted as an ‘invitation to treat’ (i.e. a willingness to sell if a reasonable price is offered – an example of an invitation to treat is the reserve-price system on EBay®) and hence fall outside the provision of s60(1). However, in this case it should still be possible to obtain an injunction to prevent actual sale; see s61 for more details.

• Infringement by importation only applies if there has been no exhaustion of rights (i.e. if the imported product had not already been sold with the proprietor’s consent in another EEA country ‘– note this currently still applies post-Brexit).

Re 60(2&3): • These sections together present a series of tests that must be applied to determine indirect infringement: i(a). are the supply and recipient in the UK? – note that there is a double territoriality requirement in this test; exporting essential means out of the UK will not fall under s60(2) (though in such cases advise checking for similar patent coverage in the destination state). i(b) or, is the offer to supply in the UK? – Since an offer (e.g. an advert) is typically unilateral, in this case the test can only be whether it is an offer to supply within the UK. ii. do the means relate to an essential element of the invention? and iii. it is known or obvious that the means suit and are intended for putting the invention into effect in the UK?

Study Guide to the Patents Acts (2021 edition)

81

UK Patents Act · section 60 If the above tests are satisfied then indirect infringement may have occurred… iv. … unless the means are a staple product, v. unless in turn they are used to induce infringement.

• Offer to supply: merely providing a person with information about a product (for example technical specifications or data sheets) does not have ‘the flavour of a negotiation’ about the supply of essential means – see Glass & Ors v Freyssinet Ltd [2015] EWHC 2972 (IPEC). Hence to constitute an offer to supply, the words or actions of a party need to have such a flavour.

Clearly an advert with a price or providing means to begin a process of acquisition would appear to fall under this definition.

• Unauthorised parties: Note s60(2) only applies to supply to ‘an unauthorised party’. In Nestec v Duralit [2013] EWHC 923 (Pat), a Nespresso® machine used a specifically shaped coffee capsule, and the interplay between machine and capsule was patented. Duralit then supplied third-party capsules to consumers. The capsule was held to be an essential means and not a staple product; but it was also held that purchasers of Nespresso machines were not ‘unauthorised parties’ and had an implied license to use the machine as they wished, including with compatible third party capsules. It therefore appears likely that the supply of machine-consumable parts such as printer toners and the like will no longer automatically fall under s60(2). However, it is still important to check for direct infringement under s60(1) in case the part is independently protected.

• Knowledge and intent: This issue has been reviewed several times (in relation to both direct and indirect infringement) and is still relatively unclear. In Cranway v Playtech [2010] FSR 18, [2009] EWHC 1588 Pat Ct, it was held that the supplier of an essential means can only reasonably be expected to know the intention of their immediate counterpart, and so s60(2) therefore requires that the supply is to a would-be primary infringer under s60(1). However, Grimme v Scott [2010] EWCA Civ 1110 disapproved of this interpretation if the supplier would know or it would be obvious that the ultimate users of the means intend to put the invention into effect. By contrast again, in Furr v Truline [1985] FSR 553, the defendant was directing customers to use products in a different way to the claimed method, and therefore was not intending infringing use even though some customers did use the infringing method.

However subsequently in Warner-Lambert Compant LLC v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 1006, echoing Grimme v Scott, it was held that where multiple outcomes are possible but it was foreseeable that a proportion of end users would infringe, then this satisfies the requirement for knowledge and intent. Warner-Lambert was referred to the Supreme Court ([2018] UKSC 56), where the judges were spilt on this issue, possibly due to the nature of the case (a second medical use claim); two judges echoed Grime and felt that the intent of the infringing manufacturer was irrelevant and the product should be judged on its ‘outward presentation’: “the badge of purpose is the physical characteristics of the product”. Meanwhile two judges felt that ‘subjective intent’ was important, but noted that evidence of this is likely to be in the packaging, labelling, instructions, etc., of the product (echoing Furr v Truline), which is also not wholly incompatible with the outward presentation approach. Finally one judge took a position in-between. However, this part of the judgement was non-binding as Warner-Lambert’s patent was found to be invalid. See BB 9th Ed. §60.09 for more details.

82

Part 1: UK Law

UK Patents Act · section 60 – Hence the knowledge / intent test is still in flux and likely to depend upon the specific circumstances of a case. As such an FD1 question is unlikely to focus on it, but generally speaking if infringement by at least some parties is inherent in the supplied means or was foreseeable, then is likely to satisfy the requirement for knowledge and intent.

– In FD1, if the knowledge issue is not specifically raised it is advisable to assume that a candidate infringer has knowledge of the intended downstream use, in order to discuss subsequent issues and obtain the associated marks.

• Section 60(2) is often referred to as contributory infringement, but this is a misleading term since no actual primary infringement is required (see See Grimme v Scott [2010] EWCA Civ 1110, confirmed in KCI Licensing v Smith and Nephew [2010] EWCA Civ 1260). It is better to think of it as secondary or indirect infringement.

• In s60(3), the induced infringement should be a primary infringement under s60(1).

• Staple: For the purposes of FD1, ‘staple’ basically means that the thing has at least one other legitimate use. In FD1, be seen to consider why the means are staple or not.

Re 60(5): • 60(5)(a): ‘non-commercial’ means immediately non-commercial (i.e. not to sell the product or charge for a service incorporating a process).

• 60(5)(b): experiments can ultimately have a commercial purpose in terms of improving a business, but it excludes ‘demonstration’ or ‘comparison’ experiments for third parties (since these are effectively a form of advertising), experiments whose immediate purpose is to generate revenue, or experiments to test the market. Hence, crudely, experiments with a scientific or technical goal are acceptable, whilst those with a marketing or sales goal are not. See BB 9th Ed. §60.15 for a more detailed discussion.

• 60(5)(d)(e): in view of subsection (7) it follows that both vehicles registered in the UK and vehicles not yet registered anywhere (and hence open to UK registration) are not exempt.

• 60(5)(g) and (6A): An exhaustive list of allowable crops is provided by Schedule A1 (‘Derogation from patent protection in respect of biotechnological inventions’), which includes many of the main UK crops (see BB 9th Ed. §60.02), but also stipulates that farmers may nevertheless have to pay any rights holder an equitable remuneration for acts under s60(5)(g). The rights holder can request usage information from the farmer for the current ‘seed year’ and for up to the preceding three ‘seed years’.

• 60(6D)-(6G) are a slightly cumbersome way for IPA 2014 to ensure that the various medical trials needed for market authorisation, some of which may be carried out on the patentee’s behalf by prospective customers (e.g. as instructed by the NHS / NICE), fall under the noncommercial ‘experimental purposes’ provision of s60(5)(b).

Jurisdiction: • The territorial scope of s60 is the UK, Isle of Man and territorial waters.

– s60(1) acts must be within this jurisdiction. Note that the Channel Islands are dependent territories and not part of the UK. – For importation, the key consideration in determining who has potentially infringed is

Study Guide to the Patents Acts (2021 edition)

83

UK Patents Act · section 60 therefore where the transfer of title of ownership occurred – i.e. overseas or in the UK. In FD1 typically the parties are known and so a discussion of the respective outcomes is possible, but as a last resort note that the person paying the transport costs is the most likely to be responsible at the point of entry into the UK and hence be the infringer.

However it can be useful to assert that the other parties involved are joint torfeasors (c.f. s61(4)(c)), particularly if there is any evidence that they act beyond their normal role as seller/buyer in the transaction; see Fabio Perini v LPC [2010] EWCA Civ 525.

– For s60(2) acts, as noted above the act of supply has a so-called ‘double territoriality’ requirement; both supply and receipt must be in the jurisdiction and so supply of essential means for export is not covered by s60(2). Therefore in FD1 check for any indication that the intended recipient is overseas.

– Again as noted above, an offer for supply within the UK (e.g. an advert targeting the UK market) can, by contrast, be unilateral – that is, no specific recipient within the UK need be identified for the offer to be infringing. Of course, in this case actual damage is unlikely unless supply occurs, but (to poach terminology from elsewhere in the statute) the offer can be thought of as a ‘serious and effective preparation’ to infringe by supplying, and so the existence of the provision allows the use of an interim injunction to prevent subsequent supply from actually happening.

Consent and implied licences: • (from the proprietor) can be a defence for a would-be infringer.

• Such consent can be indirect, e.g. via a licensee, and need not be in writing.

– therefore, consent may be express or implied and / or indirect.

• Implied consent can lead to estoppel (so preventing claims to a lack of consent) – For example, undue delay in bringing actions (laches), or implying a lack of intent to enforce rights that the defendant then acts upon, can result in estoppel.

• A defendant has the onus of proof in establishing consent.

– Note that an implied license to simply use or re-sell a product arises during an ordinary sale of the product.

– An implied license to repair also arises, within limits: – Schütz v Werit [2013] UKSC 16 has held that repair is a ‘matter of fact and degree’, balancing the rights of the patentee with respect to the making of the patented product against the residual right of its user to do whatever else does not amount to making the product.

– In Schütz, bulk containers were claimed as bottles in steel cages. The inventive step was in the weld joints of the cage. Werit, however, supplied replacement bottles. The Supreme Court decided that given the bottles would have a lower life expectancy than the cage, were easily removed and also did not embody the inventive bit of the claim, then Werit did not infringe, even though it could clearly be argued that by putting a Werit bottle into a Schütz cage, one makes the overall product as claimed. Whilst Schütz related to repair, it is also clearly consistent with the later judgement on consumables noted in Nestec v Duralit above.

– This decision is also consistent with the earlier judgment in United Wire v Screen Repair Services [2001] RPC 24 where SRS overstepped the bounds by completely replacing the

84

Part 1: UK Law

UK Patents Act · section 60-61 core element of the invention (by analogy with Schütz, by providing new cages with the distinctive weld).

– Hence by re-making the core element of a claimed product rather than merely repairing it, one effectively supplies it anew contrary to s60(2).

– Generally, the core element here is less than the whole of the product but is typically the part that confers its value or inventiveness (i.e. the characterising clause).

Practice Notes Sale/disposal: • Recall that as noted above a price tag in a shop or an online listing can be merely an invitation to treat rather than an offer to dispose, though it would generally be enough to get an injunction. Thus a practical solution is to advise actually purchasing the item to provide evidence of infringement.

Freedom to operate: • In FD1, consider advising that you perform a freedom to operate search for your client if they are concerned about possibly infringing a (non specific) patent (c.f. s74A(1)(a)).

• For a specific patent / competitor, also consider a declaration of non-infringement (see s71).

Section 61: Infringement Proceedings 1) Civil proceedings may be brought by the proprietor of a patent against an alleged infringer, requesting a) an injunction or interdict restraining the defendant from committing the infringing act, b) an order to deliver up or destroy any product that infringes the patent, c) damages (i.e. recover losses to the patentee), d) an account of profits (i.e. recover benefits from the infringer), and/or e) a declaration of validity and infringement.

2) Requests for damages and accounts of profit are mutually exclusive.

3) The proprietor and infringer may agree to let the Comptroller decide the matter (thus saving court costs). If he determines an infringement, then he can use (1)(c) or (1)(e) only.

4) Definitions: a) ‘proceedings’ includes the courts and also the Comptroller under subsection 3, b) the proprietor can be variously referred to as the ‘claimant’, ‘pursuer’ (or ‘plaintiff’), and c) ‘defendant’ can include multiple parties (e.g. joint tortfeasors).

5) If the matter is referred to the Comptroller under subsection (3), he can still pass the case to the courts if he thinks necessary.

Study Guide to the Patents Acts (2021 edition)

85

UK Patents Act · section 61 6) The granting of relief follows current precedents.

7) Provisions for recovering damages differ in different parts of the UK. Legal Notes ‘Civil proceedings’: • Hearings are held in a court in the country where the patent is being contested (Brussels convention). For an outline of UK Patent Courts and their proceedings, see BB 9th Ed. §61.40, and also the rules for proceedings listed at the end of Part 1.1 of this book.

Limitation Act: • Generally, one can only claim damages for infringements up to six years ago (five years in Scotland, which has a different statute of limitations).

Procedure: • This is outlined in the rules for proceedings heard before the Comptroller found at the end of Part 1.1 below.

Practice Notes General: • In FD1 there is frequently an ambiguous aspect to an infringement, ownership or disclosure scenario. It is important to identify this aspect with the client and ask for clarification / investigation / evidence at the appropriate point. In general it will be necessary to consider alternative outcomes, to a greater or lesser extent. i. Client is Patentee: Things to consider in FD1: Identify infringers • First, if it is unclear whether an infringement has occurred, consider analysing the product and/or buying one, as appropriate, to establish an infringing act or acts.

• Identify the possible infringers and where they stand with respect to s60(1) and s60(2).

• If there is an indirect infringer, check that all elements of the tests are satisfied (see notes to s60 (2&3) above). For a case where part of the action may be overseas, consider whether any UK indirect infringer may nevertheless be a joint tortfeasor (and also check if you have rights in the relevant overseas country).

Amicable solutions: • Consider whether an amicable solution to infringement is desirable and possible. Again, if infringement is unclear, suggest an analysis of the infringing item first, and then to either: – offer a licence (possibly on preferable terms if the infringer might bring revocation proceedings),

86

Part 1: UK Law

UK Patents Act · section 61 – offer to sell the relevant product or provide the relevant service, or – cross license in the event that they have refined your invention or developed a complementary invention.

Asserting your rights: • First, check if your patent or application is currently in a state to be exerted. Evaluate any hinted prior art and propose any amendments that may be necessary first, noting any consequences of s62(3) and s69(2)(3) if these appear relevant.

• It is necessary to have a patent granted and in force before you can assert any rights (c.f. s60(1) & s69(2)(a)).

• To expedite proceedings and achieve a swift grant, • For a UK application, – request combined search and examination (by filing PF9A and PF10 simultaneously), as appropriate, – request accelerated prosecution by reason of infringement, and – request early publication to obtain s69 rights (infringement of published application) as soon as possible.

• For a European application: – use PACE (accelerated prosecution), – request early publication, – pay exam and designation fees early and waive right to confirm proceeding with examination – Note that since 13/12/07 all states are automatically designated and, as of 1/4/09, all designations are paid with a single fixed fee. Of course in principle one must still validate in the relevant states at grant, but following the London Agreement this can in effect happen automatically in states such as GB and Ireland. However, for older FD1 questions and for applications preceding the above dates, check that the relevant states for the infringement are designated and if this is unclear, be seen to ask.

– prepare translations early and send to EPO and desired designated states – note some states only confer any protection once (claims) are published in their own language, and – also note some states allow infringement proceedings based on a published application before grant – consider using them insofar as they relate to the infringing activities.

• For a PCT application: – request early publication, and/or – request early entry into the national/regional phase (see Part 2.3 below) and then proceed as above.

• For each of the above: • Also consider sending a copy of the application / patent to the infringer to ensure no defence of ignorance (see s62; other jurisdictions have similar provisions)… … but note to the client the risk of inviting observations before grant, or opposition / revocation actions after grant.

Study Guide to the Patents Acts (2021 edition)

87

UK Patents Act · section 61 • To further accelerate the search and/or substantive examination process in the EP and UK, consider amending the current application to just a narrow claim directed toward the particular infringement, and simultaneously file a divisional application to the remaining broad material. Such a narrow claim should result in a swift grant of the application, whilst the divisional preserves the more general scope of the original application.

– This is quicker than the alternative of filing a divisional to the narrow claim if your current application is already part-way through prosecution.

• Finally, for a small clients / infringements under £10k, consider suggesting the small claims track in the Intellectual Property Enterprise Court (IPEC) to save costs.

Interim injunctions: • In theory, these are emergency actions obtained prior to a full trial. Therefore any delay in applying for one will undermine your case.

• The sequence of requirements for getting an interim injunction arrives from a combination of considerations outlined in American Cyanamid v Ethicon [1975] RPC 513 HL and Series 5 Software v Clarke [1996] FSR 273, and are: – that a serious (i.e. not frivolous) case is to be tried; if so, – that the potential harm cannot be adequately compensated for by eventual damages won at trial (note therefore that if you have licensees you will probably not get an injunction because a 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 (more often true for pharmaceuticals); if damages will not suffice, then – that there is a balance of convenience; – this is a factor enabling the court to take into consideration any other relevant details, such as the relative financial standings of the parties (i.e. avoiding the imposition of possible hardship such as bankruptcy that may arise by either granting or not granting the interim injunction).

• If all the above points are balanced then the current status quo will be maintained; hence if the infringer has not yet launched their product, they will be prevented from doing so – but conversely if they are established in the market then they will be allowed to continue; this is another reason not to delay in requesting an interim injunction.

• Finally, if the interim injunction is granted then a financial cross-undertaking may be required to compensate the other side if the injunction was wrongly granted; this can be expensive if you want an infringer’s product to be recalled, and the ability to pay is likely to be a factor in the above balance of convenience.

• Where evidence or monies are likely to be ‘misplaced’ by the infringer, complementary forms of interim relief include a search order (previously an ‘Anton Piller’ order) to search for evidence, and a freezing injunction (previously a ‘Mareva’ injunction) to freeze assets, although these are only used in exceptional cases.

Other rights: • Is the infringer also infringing any registered or unregistered design right, any copyright

88

Part 1: UK Law

UK Patents Act · section 61 or trade mark of your client, or passing-off the goods as your client’s? Note there are some infringements possible under these rights that are not available for patents; for example, it is an infringement to export a product that falls under a registered design right (see s7(2) RDA in Part 1.2.1 below). ii. Client is Infringer Things to consider in FD1: Identify the parties: • Identify all the possible infringers and where they stand with respect to s60(1) and s60(2) (e.g. suppliers to the infringer, retailer of their goods, etc).

• If there is (or the client is) an indirect infringer, check that all elements of the tests are satisfied (see notes to s60 (2&3) above). If part of the activity is overseas, consider whether the indirect infringer may nevertheless be a joint tortfeasor, and also whether the patentee has patent or other rights in the overseas country.

Amicable/pragmatic options: • take a licence, • purchase the product or service, or • cross licence (on terms that depend on relative strengths)… … in return for not bringing any action for any previous infringement.

Defensive actions: • Note that the patentee cannot bring infringement actions in the UK until a patent is granted, and a granted patent must still be in force (e.g. renewal fees paid) when the infringement occurs. Therefore check both these conditions.

• If relevant, note that an alleged infringer can view an unpublished patent (see s118(4)).

• Check whether the infringer is in fact a prior user (see s64), and if so also be seen to check if they have any documentation that may act as prior art.

• If sensible, request a declaration of non-infringement from the patentee, and if they do not co-operate, then from the comptroller / court (see s71), or request an opinion on validity and infringement of the patent from the UKIPO (see s74A).

• Offer a settlement, since if a claimant recovers less than was offered prior to proceedings, then they pay full costs.

– Therefore, if in a weak position as an infringer and have no alternative, consider offering a sum up front as this encourages settlement and so the avoidance of court costs if payment otherwise looks inevitable. For the reverse situation, see s72.

• Offer to indemnify commercial clients, customers, etc., if the situation threatens business.

Of course, advise that this could be costly if you lose.

Offensive actions: • Consider a prior art search against the patent. Again, check it is still in force.

• Note the infringer can file observations if they know of any details that may affect grant

Study Guide to the Patents Acts (2021 edition)

89

UK Patents Act · section 61-62 of the patent (s21). However, the patentee has more scope to amend before grant, so consider waiting and bringing revocation or opposition proceedings later.

• For an EP patent, check whether currently in the opposition period (up to nine months from notice of grant in EP Bulletin). If so, file an opposition (see A99 & A100 EPC in part 2.2 below) where a relevant ground can be determined from the question.

• For a UK patent, begin revocation proceedings (s72) where a relevant ground can be determined from the question.

Risk assessment: • In addition to any uncertainties about actual infringement or validity that may have been discussed in an answer, it may be relevant to consider: – What amendments, if any, could the patentee make to maintain their patent in a form that would still read onto your client’s activities under s60(1) or (2)?

– Can the patentee affect any current or future activities of the client in other jurisdictions?

Section 62: Restrictions on Recovery of Damages 1) Damages / Accounts of Profit are not awarded against a defendant who 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. Mere application of the word ‘patented’ or similar to a product is not enough to confer awareness, unless in conjunction with the patent number or a web link (Subsection 1A) to that number.

: 2) Damages can be awarded for infringement during a s25(4) (renewal fee grace) period, but are discretionary.

3) Where any amendment of the patent has been allowed, the following are taken into account when considering damages: a) at the date of infringement, whether the defendant knew or had reasonable grounds to know that he was infringing, b) whether the patent as published was prepared in good faith and with reasonable skill and knowledge (e.g. didn’t ignore art), and c) whether the current proceedings are brought in good faith.

Legal Notes General: • Note that the ‘innocent infringement’ test of s62(1) is that you are unaware of a patent, rather than being unaware of infringing the patent. The burden of proof is high for larger companies (particularly patent-active ones), with the general presumption being that it is reasonable for them to have been aware. SMEs and individuals have a better chance of demonstrating ignorance (e.g. see BB 9th Ed §62.03). Of course, even if one avoids damages, you can’t continue to infringe.

90

Part 1: UK Law

UK Patents Act · section 62-63 • Marking a product ‘patented’ does not count as making aware, unless the patent number is included. The IPA 2014 amended s62(1) to also allow associating with a web address pointing to a patent number list, acknowledging that small products may be protected by a lot of patents. For an example from the US, see https://tivo.pactsafe.io/legal.html#patents • Subsection (3) effectively means that if you need to amend your claim to make it valid prior to enforcement, then damages for infringement prior to that amendment are in question.

Consequently, consider advising to amend as early as possible. In any event post-grant it is generally preferable to amend under s27 or A105a EPC (if applicable) rather than s75, as there is generally more freedom.

• Typically damages are not awarded for infringements prior to amendment of an infringed claim, unless the court / Comptroller is satisfied that the claim was originally filed in good faith (e.g. didn’t ignore known art), and the infringement fell within the scope of the claim in each form. See also s69(3).

Other limitations: • s46(3)(c) – Existence of a licence of right limits damages to 2 x the retrospective licence fee.

• s33 & s68 – One cannot claim costs or expenses for proceedings relating to infringements occurring prior to registration of a transaction if that registration was more than six months after the transaction or not ‘as soon as possible’ otherwise.

• Obviously, valid defences under s60(5), s64 or s72 would mean damages aren’t applicable.

Increases in damages or costs: • An existing certificate of contested validity could mean costs at ‘indemnity’ rather than ‘standard’ rate if someone subsequently re-contested the validity and lost – see s65(2).

• Case law suggests that damages can include revenue for service charges, peripherals and the costs of losing bargaining power as a business.

Practice Notes • Since under s62(1) ignorance of a patent is a potential defence against damages, in FD1 infringement questions, if representing the patentee then consider sending the infringer a copy of the patent or application (even if not yet published) – noting the risk of inviting observations on an application or revocation / opposition proceedings later.

Section 63: Relief for Infringement of a Partially Valid Patent 1) If validity is contested during infringement proceedings and the patent is found to be only partially valid, then the court may still grant relief in respect of that part of the patent that is valid and infringed.

2) When awarding damages in these circumstances, the court or Comptroller will take into account:

Study Guide to the Patents Acts (2021 edition)

91

UK Patents Act · section 63-64 (a) whether the infringer knew or would reasonably suspect they were infringing (see s62); (b) whether the patent was framed in good faith and with reasonable skill and knowledge (e.g. amended when aware of relevant prior art – c.f. s62(3)); and (c) whether the infringement proceedings themselves were brought in good faith (i.e. did the proprietor believe in the validity of the patent themselves).

In addition, the awarding of expenses and the date from which damages should be considered to accrue are at the court or comptroller’s discretion.

3) Relief may be conditional on amending under s75 to recover the partial validity.

4) The Comptroller may similarly grant relief following central limitation of an EP(GB) patent by the EPO, as requested by the proprietor.

Legal Notes • Subsection 4 recognises the central limitation procedure of EPC 2000; where an EP(GB) patent appears partially valid, then except for national prior rights (or Art 54(3) EPC prior art for filings predating 13/12/2007), it is likely that the same amendments will be required for all corresponding EP patents. A single central amendment of the EP family is a costeffective solution. See Art 105A EPC in part 2.2 below.

Practice Notes Requirement of good faith, skill and knowledge: • Evidence is usually by the drafting agent as witness. Good faith allows for broad claims.

• Good faith expects timely notification of issues to the patent office (e.g. such as when new prior art crops up – see notes to s27).

Section 64: Prior Use 1) A person in the UK who, before the priority date of a patent’s application – a) in good faith did an act that would infringe the patent if it had been in force, or b) in good faith made serious and effective preparations to do so, may continue to do so but cannot license others to do so.

2) If the above act or preparation was done in the course of a business, the right to continue may a) be used to authorise partners in the business, and b) be assigned or bequeathed as part of the business or a part thereof.

3) The resulting products of the act can be dealt in freely.

92

Part 1: UK Law

UK Patents Act · section 64-66 Legal Notes General: • ‘The act’ encompasses reasonable variations on the theme…

• … however, ‘continue’ suggests that significant expansion or divergence from the original act is not allowed (assuming this still falls within the scope of the claims).

• As s64 confers a personal right, it cannot be licensed.

Practice Notes • Always consider whether prior use could also act as prior art (i.e. if not secret prior use).

Consider asking for evidence of disclosure to the public.

• s64(1)(b) assumes that the preparations are ongoing (hence ‘continue’). A pause in or shelving of preparations may thus suggest they are no longer serious or effective.

Section 65: Certificate of Contested Validity 1) If, during court/Comptroller proceedings, the patent is contested but found to be wholly or partially valid, a certificate to that effect can be awarded.

2) If awarded, then in any subsequent proceedings that unsuccessfully contest validity, the proprietor is entitled to costs from the other party on an ‘indemnity’ basis (instead of a ‘standard’ basis) – i.e. also paying the reasonable legal costs of the proprietor.

Legal Notes • This therefore has the practical effect of deterring multiple, ‘harassing’ revocation proceedings.

• Certificates are generally issued following unsuccessful revocation proceedings.

Section 66: Proceedings for Infringement Initiated by a Co-Owner 1) ‘Proprietor’ in s60 encompasses: a) co-owners in the sense of s36 with respect to infringements, and b) co-owners in the sense of s36 with respect to giving consent to work the invention.

2) Any such co-owner may initiate proceedings for infringement, but the other co-owners must be made party the proceedings; however the others are not liable for costs unless they actively take part.

Study Guide to the Patents Acts (2021 edition)

93

UK Patents Act · section 67-69

Section 67: Proceedings for Infringement Initiated by Exclusive Licensee 1) The holder of an exclusive licence has the same rights as a proprietor to bring proceedings relating to any act that occurs after the date of the licence.

2) Damages / relief take account of the exclusive licensee’s losses.

3) The proprietor is made a party to the proceedings, but is not liable for costs unless they take part.

Legal Notes General: • An exclusive licensee also excludes the patent proprietor in the relevant jurisdiction (hence the above right to bring proceedings in their place). By contrast, a ‘sole’ licensee may be the only licensee, but does not exclude the patentee and cannot bring proceedings by themselves. See BB 9th Ed. §67.03.

Section 68: Effect of Non-Registration on Infringement Proceedings Where a transaction etc., (c.f. s33(3)) occurred and the patent is then infringed before the transaction is registered (i.e. this only applies to infringement proceedings), the court or Comptroller will not award costs or expenses for proceedings relating to such infringement unless a) the transaction, etc., was registered within six months of occurring, or b) it can be proved to have been registered as soon as practicable if registered thereafter.

Legal Notes General: • Hence whilst s68 no longer affects damages or accounts of profit, it is still important for a new assignee or exclusive licensee to register the transaction in a timely manner.

Section 69: Infringement of Rights Conferred by Publication of Application 1) Where an application has been published, the applicant has the same right to bring infringement proceedings for any act occurring between publication and grant that would infringe the (eventual) patent…

2) … providing… a) the proceedings are begun after the patent has granted, and b) the act would infringe the claims as originally published as well as in the final granted patent.

94

Part 1: UK Law

UK Patents Act · section 69-70 3) s62(2) and (3) (damages for infringement during grace period or pre-amendment) do not apply for the purposes of this section, but when evaluating damages for such cases the court will consider whether it would have been reasonable to expect that infringement would eventually occur given the published contents of the application.

Legal Notes General: • In essence, s69 allows damages to be claimed (after grant) for infringements occurring after publication of the application. Section 69(2) requires that both the published and granted claims are infringed, whilst section 69(3) notes that the perceived likelihood of infringing both published and eventually granted claims at the time of publication is taken into account for any damages awarded (in effect balancing whether the infringer was wilful or reckless against whether the original scope of the claims was plausible or unrealistic).

• Note that publication of the application must be in English, and so for example the relevant PCT(GB) publication for an application not originally in English will be the one issued during the national phase. Similarly for a non-English EP application, the effective date may be when the translated claims are published; this is normally at grant, although a certified translation of claims can be published earlier (see s78 and 79 below). Note, however, that s69 can be used in any case if the proprietor sends a translation of such a publication to the infringer (from that date).

• If there is a potential infringement, therefore remember to ask for early publication and accelerated prosecution to grant.

• There is some latitude for the infringer if it was unclear at the time whether they would infringe the eventual patent. Case law also suggests a buffer period exists after publication in which they can reasonably ‘wind down’ any infringing operations, clear stocks, and of course check if they were in fact prior users and / or whether their actions or literature deny your application novelty or inventive step.

Section 70: Threats of Infringement Proceedings 1) A communication contains a ‘threat of infringement proceedings’ if its recipient would reasonably understand that: a) a patent (or published application – s70E(1)) exists, and b) i)ii) someone intends to bring proceedings (anywhere) in respect of an act done, or which would be done, in the UK. 2) A ‘recipient’ is any person to which a communication is directed.

Study Guide to the Patents Acts (2021 edition)

95

UK Patents Act · section 70A-70C

Section 70A: Actionable Threats 1) A threat of infringement proceedings is actionable by any person aggrieved by the threat, unless: 2) a)b) the threat is in respect of an act of making or importing a product for disposal, or using a process, or 3) the threat is in respect of intending to perform an act from subsection (2); or 4) the threat was made to a person who has performed or intends to perform an act from subsection (2), in respect of any act relating to such products or processes; or 5) the threat is not an express threat and is contained in a permitted communication (c.f. s70B). :

Section 70B: Permitted Communications 1) A communication is a ‘permitted communication’ if a) the information in it that relates to the threat is for a permitted purpose, and b) that information is necessary for that purpose, and the person making the communication reasonably believes it is true.

2) Permitted purposes are: a) giving notice that a patent (or published application – s70E(1)) exists; b) discovering whether, or by whom, a patent or published application has been infringed by an act from s70A(2) above; c) giving notice that a person has a right in or under a patent or published application, when a third party’s awareness of that right may be relevant to any future proceedings.

3) The court can treat any purpose as a permitted purpose if it is just to do so, but…

4) …the following are not permitted purposes: a) requesting a person ceases commercial activities in relation to a product or process; b) requesting a person delivers up or destroys a product; or c) requesting a person gives an undertaking relating to a product or process.

5) Necessary information can include: a) a statement that a patent is in force, or an application has been filed; b) i)ii) details of a patent or published application or a right in or under it that are accurate and do not mislead; and c) identification of a product or process relating to an alleged infringement by an act from s70A(2) above.

Section 70C: Remedies and Defences 1) Proceedings for an actionable threat (s70A) may be brought against the threatener, for: a) a declaration that a threat was unjustified; b) an injunction against continued threats, and/or;

96

Part 1: UK Law

UK Patents Act · section 70C-70F c) damages in respect of any loss sustained by the aggrieved person as a consequence of the threats. : 3) It is a defence for the threatener to show that the action for which proceedings were threatened does (or if done, would) constitute an infringement of the patent (or published application, once granted – s70E(2)); or…

4) a)b)…to show that despite taking reasonable steps, the threatener has failed to identify who has committed the relevant act, and notified the recipient of the steps taken before or when making the threat.

Section 70D: Professional Advisers 1)3)a)b) Professional advisors (or their employers) are not liable if the adviser is acting on the instructions of the threatener, and identifies the threatener in the communication.

2) A ‘professional advisor’ provides legal, trademark or patent services in a professional capacity, and is regulated by one or more regulatory bodies (e.g. IPReg). : 4) Professional indemnity does not affect the liability of the person who issued the instructions (e.g. the threatener).

5) A person relying on s70D has the burden of proving the above requirements were met.

Section 70E: Supplementary: Pending Registration 1) In sections 70 and 70B above, ‘patent’ also includes published applications.

2) In section 70C(3) a threat of infringement proceedings based on a published application is treated as a reference to the patent once granted.

Section 70F: Supplementary: Delivery Up, etc.

The reference to infringement proceedings in s70(1)(b) includes proceedings under s61(1)(b) (order to deliver up or destroy).

Legal Notes General: • The Intellectual Property (Unjustified Threats) Act 2017 came into effect on 1 October 2017 and re-wrote the threats provisions of section 70 to make it more difficult to successfully bring an action in respect of a threat. Threats proceedings commencing before that date use the old law.

• Many of the changes address problems with the old provisions (such as ambiguities about whether threats based on applications were justifiable, and a counter-intuitive structure), but result in an unwieldy set of new sections.

Study Guide to the Patents Acts (2021 edition)

97

UK Patents Act · section 70F Organisation of the sections: • Sections 70 to 70F basically aim to limit speculative sabre-rattling and scare-mongering of a competitor or their clients, by allowing an aggrieved party to seek relief for unjustified and ‘actionable’ threats.

• s70 defines a threat in terms of the recipient’s understanding of what has been sent, not the author’s.

• s70A distinguishes an actionable threat as one aggrieving any person (not just the direct recipient), unless the threat is exempt.

• The s70A exemptions follow a what/who format: a) there is a first exemption based on what act is alleged (manufacture, import, use, or the intent to do such an act); b) there is a second exemption based on who is threatened (manufacturer, importer, user, or someone intending to be one); – in this latter case, the threat can relate to any type of infringement and need not be limited to manufacture, import or use as infringing activities; e.g. sales can be targeted. c) In addition, there are specific modes of permitted communication that are exempt.

• s70B defines a permitted communication as relating to a permitted purpose, by default limited to mere notifications of fact or requesting information. Hence 70A(5) and 70B together say that if you don’t make an express threat, but just notify someone of the existence of a patent or your rights in that patent, or ask for information about who is conducting an act, then that is permitted even if the recipient feels aggrieved as a result. An example may be “I am the owner of patent number GBxxxxxxx which is currently in force. Can you provide the contact details of the manufacturer or importer of product X (sold in your catalogue under catalogue number xxxxxx)?” – see https://www.gov.uk/government/publications/ip-unjustifiedthreats-act-for-smes/ip-unjustified-threats-act-for-smes.

• The expansion of the exemptions to cover intended acts is new as of 1 Oct 2017.

• If proceedings can still be brought after passing through the above filters, then s70C specifies that the aggrieved party can request an apology, an undertaking not to repeat the threat, and/or damages.

• If so, then a first defence for the threatener is that the act is one of the listed infringements in s70A(2); however the validity of the patent and hence the infringement can then be challenged by the aggrieved party (see s74(1)(b)).

• A second defence, if appropriate, is that they made it clear to the recipient that they were in fact seeking a different, unknown infringer. Hence the provision allows a threat to a secondary / indirect infringer (c.f. s60(2)), but only if reasonable attempts to find the primary infringer have failed, and you notify the secondary infringer of your attempts.

• S70D clears up an ambiguity as to who is liable for issuing a threat, absolving a legal representative who carried out a threat on a third party’s instructions, if clearly done in that third party’s name.

• S70E clears up another ambiguity by explicitly considering threats based on applications to mean a threat to take action upon grant.

• For more detailed commentary, see the entry on s70 in the BB 9th Ed.

98

Part 1: UK Law

UK Patents Act · section 70F-72 Practice Notes As the aggrieved party: • Ensure that proof of the threat is available: – note that the threat is that perceived by the aggrieved party, not what was intended by the writer of the threat; see FNM Corp Ltd v Drammock International Ltd [2009] EWHC 1294.

• Ask the client to prepare a submission explaining why/how they are the aggrieved party (e.g. loss of business/clients due to circulation of threat). Note that under s70A(1) they do not have to be the direct target or recipient of the threat to be aggrieved as a result.

• Depending on the facts, one may consider the tort of malicious falsehood as an alternative or additional basis for action if the s70-70F threat remedy is not possible.

Section 71: Declaration of Non-Infringement 1) Such a declaration can be ordered by the court, providing: a) the person seeking the declaration has already written to the proprietor requesting such a declaration and providing full particulars of their activities, and b) the proprietor has refused or failed to give any acknowledgement.

2) The Comptroller can also make such a declaration (but if in so doing he finds the patent invalid, this does not bind the court in any future infringement proceedings – see also s72(5)).

Legal Notes General: • A finding of invalidity by the Comptroller in these circumstances does not automatically lead to revocation as this must be brought under s72.

• The court can make such declarations anyway without a separate process, for example during an unsuccessful infringement proceeding, where it is generally requested at the end of the proceedings.

• When initially seeking a declaration from the patentee, clearly full particulars of the person’s (relevant) activities are necessary in order for the patentee to check whether infringement has taken place or not.

Proceedings: • The request for a declaration before the Comptroller is governed by the rules for proceedings heard before the Comptroller found at the end of Part 1.1.

Section 72: Application for Revocation 1) The court or Comptroller may revoke a patent upon application by any person (including the proprietor), on the following grounds only:

Study Guide to the Patents Acts (2021 edition)

99

UK Patents Act · section 72 a) lack of patentability (s1-4A), b) lack of entitlement to grant of the patent (s37), c) an insufficiently enabling description (s14(3), 125A(4)), d) added matter (s76(2)), and e) an amendment extending protection after grant (s76(3)).

2) Revocation under subsection (1)(b), however, a) may only be made by reference through s37 (i.e. by a person with proprietary interest), or by a declaration to be the entitled party referred by the courts, and b) the reference under s37 or the declaration must be made up to two years from the date of grant, unless it can be shown that the current proprietor knew they were not entitled at grant (c.f. s7). : 4) Revocation may be whole and unconditional, or where the patent is partially valid, revocation will occur unless suitable amendments are provided under s75 below (i.e. to remove the invalid parts) within a specified period.

4A) In addition to making such amendments under s75, for EP(GB) patents such amendments can also be made via the EPO central limitation procedure of Art. 105A EPC. 5) Proceedings under this section do not affect the right to also challenge validity during any parallel infringement proceedings.

6) If the Comptroller refuses an application for revocation, one cannot make repeat applications to the Comptroller except by leave of the court or by way of appeal, or in separate proceedings as per subsection 5.

7) One cannot go to court instead if the Comptroller has yet to make a decision, unless a) the proprietor agrees, or b) the Comptroller certifies that the court is preferable.

Legal Notes General: • Note that clarity per se (s14(5)) and non-unity (s26) are not grounds for revocation.

• For a discussion of insufficiency, see the notes to s14 above.

• Anyone can apply for revocation of a patent, except on the ground of entitlement, which can only be by a potentially entitled party.

• Subsections 6) & 7) limit the scope for harassment by this section.

• The Comptroller can continue revocation proceedings if the original applicant drops out, if this is considered to be in the public interest.

100

Part 1: UK Law

UK Patents Act · section 72-73 Procedure: • The procedure is governed by the rules for proceedings heard before the Comptroller as laid out at the end of Part 1.1.

Practice Notes • Recall that revocation is fully retroactive (often referred to as ab initio or ex tunc) whilst surrender under s29 is not (ex nunc).

Therefore an additional consequence of revocation may be that licensees sue for a refund of license fees. It also means the Comptroller is unlikely accept a surrender under s29 during any proceedings in which validity may be put at issue (see s74).

• Note that in the EPC, entitlement is not a ground during opposition. Therefore for entitlement use s37 for EP(GB) granted cases, or for applications use s12 in conjunction with A61 EPC. • Partial validity can affect damages (see s62(3)). Consider amending under s27 first (i.e. before asserting a patent and inviting a revocation action) if you think a claim is currently invalid (and recall that if you don’t amend it, then this may be interpreted as bad faith); that said, in FD1 balance this against any need to act quickly, for example when seeking an interim injunction or to avoid estoppel.

Section 73: Comptroller’s Power to Revoke 1) Where the Comptroller determines that, after grant, a prior art document denies novelty by virtue of s2(3), he may revoke the patent. The proprietor can object and can also amend if possible, subject to s76.

1A) W here the Comptroller issues an opinion under s74A that a patent is not novel or inventive, he may revoke the patent…

1B) … after the period for requesting a review (s74B) has elapsed or after any review or subsequent appeal has occurred.

1C) The proprietor can object and can also amend if possible, subject to s76.

2) Where an EP(GB) notice of grant is given, the corresponding GB patent will be revoked unless the proprietor can show them to have different claimed matter or amend one to achieve this (e.g. reciprocally deleted matter).

3)a)b) Revocation will not occur until after the EP opposition period, or after opposition proceedings have finished (since if the EP(GB) patent is revoked in opposition it is ab initio and so never granted. If so, there is no second patent and the GB version is unaffected).

Study Guide to the Patents Acts (2021 edition)

101

UK Patents Act · section 73-74 4) However, if an application to surrender a previously granted EP(GB) patent under s29(1) is made before the date of grant of the native GB application under s25(1), then the Comptroller will not revoke the resulting native GB patent.

Legal Notes • Basically, the Comptroller acts to avoid double patenting either, in the cases of subsection (1) and (1A)-(1C), by different parties, or in the cases of subsections (2),(3) and (4), by the same party. Subsections (2) and (3) cover the case where the native GB patent granted first, in which case the EP(GB) patent will replace it unless revoked or amended to not overlap; meanwhile subsection (4) covers the case where the EP(GB) patent granted first, in which case it can be surrendered before grant of the native GB patent if desired (for example, after you have received the notification of intent to grant the native GB).

• Note that s73(2) does not allow the Comptroller to refuse grant of a GB application due to such conflict, but failure to then differentiate the patents will result in its subsequent revocation.

Practice Notes • Bear in mind that if an EP(GB) is revoked in opposition, then there is a big question mark hanging over the validity of the corresponding GB patent as well.

Section 74: Proceedings in which validity may be put at issue 1) …are during proceedings under a) s61 or 69 (as a defence for infringing rights in a patent / from publication) b) s70A (in respect of an actionable threat) c) s71 (declaration of non-infringement) d) s72 (revocation) e) s58 (disputed Crown use)…

2) … and no others.

3) The relevant grounds are those stipulated in the above listed sections.

4) s72(1)(b) (entitlement) does not apply unless a) entitlement proceedings (s37) find in favour of the applicant; and b) entitlement proceedings commence up to two years from grant (unless the proprietor knew they were not entitled).

5) The Comptroller will give time to establish the conditions of 4(a) if needed for a defence or counterclaim.

102

Part 1: UK Law

UK Patents Act · section 74-74A 6) The entitlement proceedings referred to in subsection 4 above are under s37(1), or are a court declaration of entitlement.

7) Leave of the court is needed to begin any of s61(3), 69, 71 or 72 proceedings before the Comptroller if any proceedings listed under s74(1) are currently pending in court.

8) Considerations of the Comptroller to revoke (s73) or an opinion of the opinion service (s74A) do not amount to ‘putting at issue’ (thus subsections (1) & (2) do not include these).

Practice Notes Estoppel against such proceedings can occur: • where the same party has unsuccessfully challenged validity before, either wholly or in considering certain issues, or • if an agreement not to challenge exists (other than a licence agreement) – although see TFEU Art 102 (5)(c) in section 1.3 of this book if this constitutes an abuse of dominance.

Stay of proceedings: • Validity proceedings may be stayed if there is a parallel opposition proceeding at the EPO; however a significant factor against a stay is if the opposition would take significantly longer, as this would prevent swift access to possible revocation in the UK. See BB 9th Ed §74.07.

Section 74A: Opinions as to Validity or Infringement 1) A proprietor of a patent or anyone else may request an opinion on: a) whether a particular act is or would be an infringement of the patent, b) whether or to what extent the patent falls foul of s1(1)(a) or (b) (novelty / inventive step), c) whether the patent provides a sufficiently enabling disclosure, d) whether a patent application contains added subject matter, e) whether a claim in a granted patent has been broadened, f) whether a (medicines) supplementary protection certificate is invalid, and/or g) whether a (plant) supplementary protection certificate is invalid.

2) The above is allowed even for expired or surrendered patents.

3) An opinion won’t be given if a) circumstances are excluded by the rules, or b) the Comptroller thinks the request inappropriate (frivolous or vexatious, or dealt with in other proceedings).

4) Opinions are completely non-binding. :

Study Guide to the Patents Acts (2021 edition)

103

UK Patents Act · section 74A 6) When deciding to issue an opinion, a) only the person requesting it is entitled to a hearing, if the opinion goes against the requester’s interests, and b) only the person requesting it can appeal the opinion.

Legal Notes Available Opinions (Rule 93(6)): • The opinions listed for s74A(1) come from Rule 93(6). Until 1 Oct 2014, only options (a) and (b) were offered. The IPA 2014 expanded the list. Note that whilst an opinion on infringement of an SPC is not explicitly listed, by virtue of s128B the UKIPO also offers it.

Procedure (Rules 92-97): • Request using form PF17 and paying a fee of £200.

• Provide a statement outlining the question upon which an opinion is sought. Include pertinent facts, the names and addresses of any other persons having an interest in the question, and the particulars of any proceedings in relation to the patent that may be relevant. Frivolous or vexatious questions can be refused.

• In addition to those names identified in the request, the patentee and any registered licensees are sent copies of the PF17 form and statement, as is anyone else at the Comptroller’s discretion.

• Requests are noted in the register.

• Anyone may file observations on any issues raised by the request (including whether to proceed with the opinion) within four weeks of advertisement in the register.

• Copies of such observations must be sent to the patentee and requester (as applicable) within these four weeks, and the recipients may then make relevant observations within a further two weeks after the four-week period from advertisement in the register.

• The patentee, requester and any observers get a copy of the opinion.

• Requests can be withdrawn, in which case an opinion is not issued.

Non-binding nature: • This has been affirmed in Winther, Browne & Co v Valor (BL O/121/12), where the Hearing Officer noted that an opinion provides ‘a valuable expert opinion based on the evidence available, but no more than that’. It also held it is acceptable for a claimant to cite such an opinion in revocation proceedings since the claimant could raise the same issues anyway.

• However, for opinion requests filed on or after 1 October 2014 resulting in a negative opinion, the UKIPO will be able to start the process of revoking a patent ‘in clear-cut cases’ under s73(1A), but only after the patentee has had the opportunity to apply for a review of the opinion under s74B below and/or to amend the patent. After such revocation, the patentee may still appeal to the courts. So far, only a handful of patents have been revoked in this manner.

104

Part 1: UK Law

UK Patents Act · section 74B-75

Section 74B: Reviews of Opinions Under s74A 1) Patentees or exclusive licensees may request a review of an opinion.

2) Rules may state: a) The circumstances and period to apply for a review (three months from issue of opinion – R98(1)). b) That a review may not be allowed if other proceedings have decided the issue under review – R98(2). : d) That one can only appeal a review for those parts of an opinion not set aside by it – R100(3).

Legal Notes Grounds for review: • Use PF2 and two copies of grounds for review. Valid grounds under R98(5) are: a) an opinion wrongly concludes that a patent is wholly or partially invalid, and b) an opinion concludes non-infringement based on its construction of the specification.

Observations: • The advertising and observation procedure is similar to s74A, but the relevant period for both observer and requester is the later of four weeks from advertisement of review or two months from issue of opinion (R99(3,4)).

General: • The outcome is either that the opinion(s) are set aside or they are not (R100). A new opinion as such is not issued.

Section 75: Amendment During Revocation or Infringement Proceedings 1) The Comptroller / court may permit amendment in cases where the validity of the patent may be put at issue, subject to s76, advertisement in the OJ, and any changes in costs, etc.

2) A person may oppose the amendment – this is conveyed to the proprietor and considered by the Comptroller or court.

3) Such an amendment is retroactive to the date of grant.

4) Where an application to amend is made to the court, the applicant must notify the Comptroller, who may appear at court if they so wish or are directed to.

Study Guide to the Patents Acts (2021 edition)

105

UK Patents Act · section 75-76 5) In considering permission to amend, the Comptroller will have regard to any relevant principles of the EPC. Rules R35 Amendment process for s75 and s27 – 1) The proprietor must: a) request in writing, b) identifying the proposed amendment, and c) giving the reason for it.

2) Preferably, e-file the request.

3) The Comptroller may require the amendment to be shown in a copy of the specification.

4) If an EP(GB) was originally published in another language, provide a translation of the original and amended portions of text.

5) The Comptroller may give subsequent directions as he sees fit (e.g. require a full translation of a German-originating EP(GB) if accuracy is doubted).

6) If the amendment is approved, the Comptroller or court (e.g. under s75) may direct that the updated spec is filed in accordance with the formal requirements of schedule 2 (i.e. conform to publication standards).

Legal Notes • If not already in revocation or infringement proceedings, advise clients where possible to fix their patents before asserting them by using the more liberal s27, or…

• … if the patent is an EP(GB) consider EPO central limitation (see part 2, A105A) as permission is not discretionary – but note this affects all corresponding patents of the EP.

Section 76: Amendments Not to Include Added Matter 1) An application which a) is made in respect of matter disclosed in a prior application or patent, and b) discloses additional matter extending beyond that previously disclosed as filed in the prior application may be filed under s8(3), 12 or 37(4), but shall not proceed to grant until amended to exclude the additional matter.

1A) If one files a description under s15(10)(b)(i) that adds matter beyond that of a reference filed under 15(1)(c)(ii) to a prior application, the application shall not proceed unless it is amended to exclude the additional matter.

2) No amendment of an application is allowed under s15A(6), s18(3) or s19(1) if it results in disclosing matter beyond that disclosed in the application as filed.

106

Part 1: UK Law

UK Patents Act · section 76-77 3) No amendment of a patent is allowed under s27(1), s73 or s75 if it a) discloses additional matter, or b) extends the scope of protection. : Legal Notes General: • So basically you can’t add matter to an existing application or patent under any circumstances and hence can only amend ‘within the limits of what a skilled person would have derived directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing, from the whole of the document as filed.’

• Similarly, you can’t broaden your claims after grant.

• Sections 1 and 1A deal with cases where, in effect, a re-filing occurs (either after a dispute or when substantiating a filing by reference), and in which the new filing is required to conform to the extent of the matter originally disclosed.

– Note that this does not affect your ability to add matter having a second priority date when validly claiming priority from an earlier application (see notes to s5, and s14(5)(d), or s125(2)).

• Section 2 imposes the same requirement on amendments during prosecution.

• Section 3 provides further legal certainty for third parties after grant by preventing an expansion of claim scope.

Section 76A: Biotechnological Inventions 1)2) … The Patents Act applies to biotech inventions, subject to the provisions of Schedule A2 (i.e. various subject matter exclusions as recited in the notes to s1 above).

Section 77: Effect of a European Patent (GB) 1) From publication of mention of grant in the European Patent Bulletin, an EP(GB) patent is treated as a UK patent issued under s24, and a) the proprietor therefore has the same rights; b) parts I and III of the UKPA77 apply; domestic patent law (s1-s76) and miscellaneous provisions (s96-s132), and c) (conference certificates carry across for the purposes of s2(4)(c)).

2) Subsection (1) does not affect any EPC provisions that relate to the EP(GB) case (i.e. the opposition process, central limitation, etc).

3) Where, for an EP(GB), a) infringement or Crown dispute proceedings are in place, and

Study Guide to the Patents Acts (2021 edition)

107

UK Patents Act · section 77 b) the EPO has established partial validity, then s63 or s58(7-9) are as per UK partial validity findings.

4) Where an EP(GB) was amended in accord with the EPC, then it is treated as amended under the UKPA (but see subsection 6(b) below).

4A) Where an EP(GB) is revoked in accordance with the EPC, then it is treated as revoked under the UKPA. 5) Where – a) under EPC, an EP(GB) is revoked for missing a time limit and then restored, and b) a person begins in good faith an otherwise infringing act in the meantime, then they have (the normal) third party rights under s28A(4-7) UKPA. 5A) Where an EP(GB) is revoked in accordance with the EPC and subsequently restored, any fee that would have been payable in the intervening period (e.g. a renewal fee) is payable within the prescribed period (see notes to Rule 36 in s25 UKPA). : Legal Notes General: • So basically the UK treats an EP(GB) the same as a GB patent.

– Some countries that register granted GBs (such as Hong Kong) may differentiate between GB and EP(GB) patents, for example following an EP revocation in opposition but not a GB one – see BB 9th Ed. §77.05.

• Subsection 2 alludes to European opposition and appeal proceedings and to central limitation.

Practice Notes General: • The EPO considers the proprietor’s address as the address for service. Therefore it is good practice to ensure you update the AFS upon validation in the UK (use form NP1).

• If an EP(GB) grants four or more years after its filing date, then a renewal fee is payable to the UKIPO, but not in respect of any period prior to the mention of publication of grant in the EPB (i.e. there is no back payment or duplication with EPO renewal fees; see BB 9th Ed. §77.16).

London Agreement: • Firstly, note that one always needs to file FR and DE claims as part of the EP grant procedure.

108

Part 1: UK Law

UK Patents Act · section 77-78 • The agreement is intended to reduce the translation costs associated with validating patents in Europe for those states that are signatory to the agreement. The agreement provides for two cases: in the first case, a state has at least one of DE, FR or GB as an official language, and will not require a translation of any European patent (even if not published in one of its own official languages). In the 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 is published in one of the EPO official languages chosen by that state. However, these latter states can still also require a translation of the claims in an official language of the state. Any state can require translation of the whole patent in the event of a dispute. Obviously any state that is not yet a signatory to the London Agreement will still require a full translation of the patent.

• The current list of signatories and which category they fall into can be found at: http://www.epo.org/law-practice/legal-texts/london-agreement/status.html, and /key-points.html.

Section 78: Effect of Filing an Application for EP(GB) 1) Subject to s77, an application with an EPC filing date will be treated as an application with a corresponding GB filing date, for sections: 2) 2(3) & related parts of 14(7): (i.e. co-pendancy), 5: priority, 6: intervening disclosure, 13(3): (only re certificates identifying a non-inventor), 30-33: property and registration, 36: co-ownership, 55-69: Crown, infringement and prior use, 70 to 70F: threats, 74: where relevant to the above (validity proceedings), 111: unauthorised claim of patent application, and 125: extent of invention.

3) and where a) a declaration of priority is treated as per s5(2), b) any extension to priority (e.g. EPO holidays) is accommodated by s5(2A)(a), c) the re-dating of an application (e.g. due to late figures) then is re dated for UK purposes too, d) the EP publication is treated as published under s16 subject to translation into English (see subsection (7) below), e) a designation of inventor for the EPC is treated as a s13(2) statement for s13(3) actions, and f) registration of the application in the EP register is treated as registration in UK. 4) Rules under s32 (Registration of Patents) do not impose requirements on the EP register.

Study Guide to the Patents Acts (2021 edition)

109

UK Patents Act · section 78-80 5) Subsections 1-3 do not apply to an EP(GB) if: a) the application is refused or withdrawn or b) the GB designation is withdrawn (but in this case will apply again if the designation is re-established under the EPC), but…

5A) …

(5)(a)(b) do not affect the applicability of s2(3) (novelty only prior art) for EP(GB)s that have entered the state of the art (i.e. have been published) – (see also s79 below), and 5(b) does not affect the applicability of s2(3) (novelty only prior art) of the EP(GB) even where withdrawal of the GB designation occurs before publication (see BB 9th Ed. §78.04).

6) Where, during a period where subsections 1-3 do not apply, a third party in good faith begins or makes serious preparations to begin an otherwise infringing act, they have the rights of s20B UKPA if subsections 1-3 are later reapplied.

6A) For an EP(GB), the effect of reinstatement is basically as given in s20B but replacing subsection 4 of s20B with subsection 6 above.

6B) One cannot licence the rights of continuation in subsection 6 to someone else.

6C) (Subsections 6 to 6B also apply for Crown use).

7) A French or German language EP(GB) is deemed published for the purposes of provisional rights under s69 (& s55) once it has been published by the EPO and a UK translation of the claims is filed with the UKIPO and then published by the Patent Office (or likewise, if the translation is sent directly to the offending party). :

Section 79: Use of s78 for PCT(EP(GB))s A PCT(EP(GB)) is treated like an EP(GB) under s78, except that since the UK treats the EP publication as its own publication (s78(3)(d)), then in turn the EPC’s conditions on treating a PCT publication as its own publication (A153(3) EPC) also become relevant. Specifically, the EPC requires a publication of the application in English, French or German (the other PCT publication languages are Arabic, Chinese, Japanese, Korean, Portuguese, Russian and Spanish).

Section 80: Authentic Text of EP Patents 1) … is the text in the language of the proceedings used at the EPO, but…

2) … for GB domestic purposes, it is the GB translation of an FR or DE language text, except for revocation proceedings.

110

Part 1: UK Law

UK Patents Act · section 80-82 3) If a translation error has resulted in a narrower GB protection than that of the granted EP patent in the language of proceedings, then a corrected translation can be supplied and published, but the now wider protection so conferred is not retroactive.

4) People acting in good faith who only now infringe under the wider coverage can continue working the invention (i.e. an intervening right like that of s28A(4-6)).

5) (Explicitly invokes s28A(4-6) substituting s28A(4) with subsection (4) above).

6) As per s28A(4), such a third-party right cannot be licensed to someone else.

7) (Subsections 4-6 also apply to Crown use).

Section 81: Conversion of EPO Applications 1) An EP(GB) application can be converted to a UK application if the application was not received by the EPO within 14 months of priority (e.g. due to PCT receiving Office error), provided: 2) b)c) i. t he applicant requests conversion within three months from notification of loss (R58(3) UKPA) (NB: not extendable) directly with the UKIPO and then pays the application fee and, if necessary, translates the application and any existing amendments into English within two months (R58(4)), or ii. such a request is relayed from another patent office of an EP convention country within 20 months of priority (and need not be accompanied by a translation – R113(2) (e)), and the applicant then pays the application fee and, if necessary, translates the application and any existing amendments into English within four months (R59(34)).

3) a) B y default, a converted application keeps the filing date it would have received from the EPO. b) Any corresponding requirements of the application satisfied so far are treated as satisfied for the UK (c.f. s78). c) Any corresponding documents (exhibition certificates, priority declarations, declarations of inventor and filing documents) filed with the EPO are treated as filed with the UKIPO. d) The extent of UK preliminary examination, search and examination will take account of any such corresponding preliminary examination, search and examination done by the EPO (in practice, none).

Section 82: Jurisdiction to Determine Questions as to Right to a Patent 1) The Court only has jurisdiction in this regard as set out in this section.

2) The Comptroller only has jurisdiction under s12 as set out in this section.

Study Guide to the Patents Acts (2021 edition)

111

UK Patents Act · section 82-89 3) This section applies before an EP(GB) grants to questions of whether a person has a right to be granted a patent.

4) The Court and Comptroller can determine such questions, other than employer-employee questions, if either the applicant has his residence or principal place of business in the UK, or the other party has his residence or principal place of business in the UK and the applicant does not have a residence or principal place of business in any state that is a signatory to the EPC Protocol on Recognition, and providing that the parties have not agreed in writing to submit to the jurisdiction of a different state.

5) The Court and Comptroller can determine such questions for employer-employee disputes, 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.

6) The Court and Comptroller can determine such questions if both parties agree(d) to the Court/Comptroller’s jurisdiction (e.g. as part of an assignment agreement).

7) If proceedings on the same issue are already underway abroad, then proceedings under s12 are stayed until those proceedings conclude. : 9) ‘Abroad’ in (7) means a contracting state signed up to the EPC Protocol on Recognition (i.e. recognition of mutual jurisdictions).

Section 83: Effect of Patent Decisions of Competent Authorities of Other States, Re s82 1) The UK accepts their ruling unless it is appealed, but may not recognise the ruling if: 2) a) it was uncontested because the applicant was not adequately notified, or b) it was in conflict with a parallel decision elsewhere.

• Note that section 83A (relating to the effect of the Unitary Patent) is not on the syllabus.

See BB 9th Ed §83A for details.

Section 89: Effects of International Application for Patent 1) Subject to s89A and 89B below, a PCT application is treated as a GB application under parts I and III of the UKPA77 (domestic patent law and miscellaneous provisions)…

2) … unless the application or GB designation is withdrawn or deemed so in the PCT phase…

3) … unless in turn it is decided that this was due to an error by a PCT body, or failure of the

112

Part 1: UK Law

UK Patents Act · section 89-89A receiving Office to forward the application to the international bureau in time, or where a corresponding missed deadline could have been extended under UKPA Rule 107 or 108 (see Rule 72 at BB 9th Ed. §89.06). : 5) Similarly where a PCT application designating GB was refused a filing date due to an error by a PCT body, the Comptroller can decide to allow a GB filing with a date as he directs.

Legal Notes • s89(3&5) are the UK component of the ‘Review & Excuse’ procedure of Articles 24 & 25 PCT. See also Part 2.3 of this book.

Section 89A: International and National Phases of Application 1) PCT search, exam, publication and amendment provisions apply during the international (PCT) phase.

2) The ‘international phase’ is from PCT filing until the national phase begins (see legal notes below).

3) The national phase begins when: a) the 31-month period expires and (if needed) an English translation is filed with the UKIPO (R66), or b) a request for early entry into national phase and (if needed) an English translation are filed with the UKIPO, and the national fee (£30 + £12 for any translation) is paid…

4) … otherwise, the application is considered withdrawn.

5) Any amendment made during the international phase and (if needed) an English translation thereof should be filed upon entry into the national phase; otherwise the amendment is disregarded.

6) On payment of the fee the Comptroller will publish the application (i.e. in English, thereby also conferring s69 rights if not previously obtained by the PCT publication).

Rules R69 Translations for s89A (3) and (5) 1) A translation will be required under subsection (3) if the published PCT application (or information relating to deposited biological matter) is not in English.

2)3) For early entry into the national phase, if no copy of the PCT publication is available then the applicant must also translate the request and the abstract.

Study Guide to the Patents Acts (2021 edition)

113

UK Patents Act · section 89A-89B 4) For subsection (5), any published amendment, or an amendment annexed to the IPER, must also be translated…

5) … but providing the application itself was translated and filed by the 31-month deadline, then an applicant has three months from notification by the Comptroller to file translations of the amendments. : Legal Notes International Phase: • Note that strictly speaking the international phase ends at 30 months from priority; the national phase in US and JP then begins immediately at 30 months, but for GB and EP the national phase begins at 31 months (R66(1) UKPA), resulting in a one-month administrative limbo – see the PCT timeline in table 4.3 for more details.

Deadlines and late entry: • Under R67 and R68, a number of deadlines are up to two months after entry into the national phase (if these occur later than the normal deadline), including filing an exhibition certificate, designation of inventor, and payment of the search fee, examination fee, and any excess claims or pages fees.

• Separately and in addition, it is possible to delay entry into the national phase (or more precisely, extend the 31-month period of R66(1)) by two months using R108(2) – thereby delaying the deadlines under R67 and R68 noted in the point above, and also the deadline for filing the national fee and any translations. See BB 9th Ed. §89A.15 for details.

• Finally, note that reinstatement may be available for applications deemed withdrawn due to unintentional failure to meet the requirements for GB national phase entry (see s20A).

• Handling delays to national phase entry is a common issue in the exam. See also section 2.3 of this book for other issues surrounding late national phase entry.

Translation: • One only needs to translate those parts of an application or amendment that are not in English (or Welsh), including annotations in drawings; meanwhile, sequence listings are exempt (R70). There is a £12 fee for publishing translations under s89A(3) or (5).

• Any foreign language citations associated with an ISR, IPER or IPRP may be translated within two months of a request to do so (R113(2)(g),(5)(6)).

Section 89B: Adaptation of UK Provisions in Relation to PCT Applications 1) a) The filing date of a PCT application (or if re-dated under the PCT, e.g. due to late drawings, then the re-dated filing date) is also the filing date (or re-dated filing date) in the UK. b) Priority claims (including claims validly over 12 months old, e.g. under R26bis.3 PCT or R80.5 PCT) are respected in the UK.

114

Part 1: UK Law

UK Patents Act · section 89B-110 c) A statement of name of inventor under the PCT is sufficient for the UK. 2) The PCT publication is treated as the UK publication upon entry to the national phase…

3) a) … but only gets protection under s55 (Crown use) and s69 (rights upon publication) if published in English, or b) once published in English under s89A(6) above along with any amendments (or given to the relevant Crown user or infringing party).

4) For entitlement proceedings, use s12 during the international phase and s8 during the national phase.

5) The extent/requirement of a UK search and Examination will take account of the PCT search and examination.

Legal Notes • The UKIPO is also a competent receiving Office (rO) at which international applications can be filed, together with the transmittal fee (R65 UKPA). See section 2.3 of this book.

Section 100: Burden of Proof in Certain Cases 1) If a patented process creates a new product, then production of the same product by an unauthorised second party is prima facie evidence of infringement of the process, unless it can be proved to the contrary.

2) However, this burden of proof does not require the second party to reveal commercial secrets if unreasonable to do so.

Legal Notes • This section imposes a reversal of the normal burden of proof, by assuming that a person producing the new product must have used the patented process to do so. Therefore, there is a presumption of guilt, and the person must prove themselves innocent – for example by demonstrating their own, non-infringing, production method; this may be done in camera (confidentially) during proceedings without disclosure to the patent proprietor.

Section 110: Unauthorised Claim of Patent Rights 1) A person falsely claiming that a product he sells is patented is liable for a fine of up to level 3 on the standard scale (£1000).

Study Guide to the Patents Acts (2021 edition)

115

UK Patents Act · section 110-117 2) This includes falsely labelling/marking the product as patented…

3) … but allows for a reasonable period in which to respond to the lapse, expiry or revocation of a patent (for example to allow the sale of existing marked stock, or to change marketing literature).

4) A defence is the 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).

Section 111: Unauthorised Claim that Patent has been Applied For 1) A person claiming that a product he sells has a corresponding patent application is liable for a fine of up to level 3 on the standard scale (£1000) if: a) it does not have such a patent application, or b) the patent application has been refused or withdrawn.

2) For (1)(b) above, there is a reasonable period in which to clear or update any stock / literature / ads etc. that make such claims.

3) The claim includes simply labelling/marking the product as ‘pat. pending’, etc.

4) A defence is the 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 stock after a reasonable period).

Legal Notes • So, apart from the order of subsections 2 and 3, sections 110 and 111 are very similar (as one would expect).

• s110 & s111 only apply to disposal for value – not gifts.

• For s110 and s111, given the free circulation of goods within Europe, it is probably legal to mark a product ‘patented’ or ‘pat. pending’ if a patent or application is held in the state of first sale – which may for example be to a Europe-wide wholesaler (distributor). Hence for example a product marked as patented on the basis of a German national patent may (currently) legally end up for sale in the UK if it was originally sold by the proprietor in Germany.

Section 117: Correction of Errors in Patents and Applications 1) Subject to the rules, the Comptroller may correct errors in translation or copying, or other clerical errors or mistakes in the patent specification or any associated documents and forms.

116

Part 1: UK Law

UK Patents Act · section 117 2) Any person may oppose a requested correction.

3) Where the request is related to erroneous withdrawal of an application, and a) the application has been published, and b) withdrawal was published, then the Comptroller will also publish the request for correction.

4) Where (3) applies, the Comptroller may only correct an error under (1) by order (an order is a direction other than a judgement).

Rules R105 Correction of errors 1) Request in writing, clearly specifying the correction(s) to make.

2) The Comptroller may request a copy of the relevant document showing the correction made.

3) In the specification of a patent or application, the correction should be obvious to make (immediately evident that nothing else could have been intended)…

4) … unless it is due to corruption during electronic transmission.

5) If the correction is unobjectionable it will not be advertised in the OJ. 6) But the Comptroller will advertise the correction in the OJ if relevant to s117(3).

7) This rule does not apply to the correction of names and addresses (use R49 – see s32).

R107 Correction of Irregularities 1)2) The Comptroller may correct for any irregularity of procedure before the UKIPO if he thinks fit, and subject to any conditions if he considers appropriate, but…

3) … extensions of due dates can only be allowed if the UKIPO contributed wholly or in part to the irregularity.

Legal Notes General: • There is no limitation on who can request corrections under R105, thus including the proprietor, their representative and indeed the Examiner.

• R105(3) only applies to the specification. Therefore non-obvious errors in other application documents and forms can be corrected.

• Opposition to a correction uses the rules for proceedings heard before the Comptroller outlined at the end of Part 1.1.

Comptroller’s ability to correct errors: • Rule 107 (which is not specifically associated with s117) gives the Comptroller additional discretion to correct for any irregularity of procedure. A list of examples is given at BB 9th Ed. §123.62.

• Notably, the rule allows the Comptroller to grant any length of extension to a deadline if the

Study Guide to the Patents Acts (2021 edition)

117

UK Patents Act · section 117-117A irregularity giving rise to missing the deadline was wholly or partially the UKIPO’s fault (without prejudice to the discretionary extensions separately available in R108).

• Given the safeguards already available in s117B and R108, generally R107 is therefore most relevant in FD1 to circumstances where the UKIPO has clearly not performed some function upon which a deadline depends. See part 3.2.1 below for an example.

Section 117A: Effect of Resuscitation of a Withdrawn Application Under s117 1) Where a) a request was made to correct an error or mistake in withdrawing an application, and b) the application was duly resuscitated, then the effect of that resuscitation is as follows: 2) Anything done with the application during the period between withdrawal and resuscitation will be treated as valid.

3) (Actions in bad faith) – If the Comptroller published notice of the request to correct the error (c.f. s117(3)), then any continuation or repetition of an act during the period between withdrawal and resuscitation (that previously infringed before withdrawal) will be treated as infringement.

4) (Actions in good faith) – If the Comptroller published notice of the request to correct the error (c.f. s117(3)), but between the date of withdrawal and the date of the notice a person… a) began in good faith an otherwise infringing act, or b) made in good faith serious and effective preparations to do so, then they have the right to continue (but cannot licence this right).

5) If the otherwise infringing act or preparations under subsection (4) were in the course of business, the person may… a) authorise their partners in that business to carry out the act, and b) assign or bequeath the right as part of the business.

6) Any product made under subsections 4 & 5 is free to use as if from the patentee.

7) (The person of subsections 4 & 5 may also be the Crown).

Legal Notes • The effects are similar to those under s20B. • Hence as with s20A & s28, request resuscitation as soon as possible to limit the chances of third-party rights.

• Recall that, as ever with infringement, the provisions of subsections 3-6 only become relevant if the resuscitated application actually grants.

118

Part 1: UK Law

UK Patents Act · section 117B

Section 117B: Extension of Time Limits Specified by Comptroller 1) Subsection (2) below applies for time limits specified by the Comptroller in connection with a patent or an application.

2) Subject to subsections (4) and (5) below, the time limit shall be extended if: a) the applicant or proprietor requests it, and b) the request is made in writing, within two months of the expiry of the missed time limit (R109).

3) The extension lasts until the earlier of: a) the prescribed extension period (two months), or b) the period prescribed under s20 (the compliance period or an extension thereof for appeal).

4) If an extension under s117B(2) has already been used to extend a period… a) … it can’t be used to extend the period again, b) but the Comptroller has discretion to extend further (subject to any conditions he thinks fit).

5) s117B does not apply for periods specified in relation to proceedings before the Comptroller.

Legal Notes General: • Basically, a request in writing within two months of missing a deadline set by the Comptroller will be granted. There is no form and no fee.

• s117B is used for time limits set by the Comptroller (e.g. the deadline to respond to an Examination report). Use Rule 108 (see below) for extending some statutory deadlines.

• Note that reinstatement (s20A(3)(b)(iii)) excludes errors in the s117B process. This is because the failure to reply to the Examiner’s report renders the application ‘dormant’, not withdrawn. One still has the R30 period to get it in order, but this will now be discretionary if both the reply and the subsequent R117B deadline were missed. Therefore it is important to ensure the 117B request is clear and the application is properly identified, and to then meet the extended deadline (since you can’t try again – s117B(4)(a)).

Other extensions of time: • Other possible causes of extension are UKIPO closed days and postal delays (see s120) and irregularities of procedure by the UKIPO (see R107, recited at s117).

Rule 108: • Rule 108 provides a means of extending some statutory deadlines (as opposed to those set by the Comptroller).

• For common uses of R108, see the tables of timelines in Part 4.

Study Guide to the Patents Acts (2021 edition)

119

UK Patents Act · section 117B-118 R108 Extension of time limits 1) T he Comptroller may (further) extend periods other than those listed in parts 1 and 2 of Schedule 4, upon written request.

2) The Comptroller shall extend once by two months any period of time listed in part 2 of Schedule 4 if the request is filed (using PF52 and paying the fee of £135) before the expiry of that extended two-month period.

3) The Comptroller may (further) extend any period of time listed in part 2 of Schedule 4, if filed using PF52 and the requester provides evidence as to why the extension should be granted. (In this case the £135 is paid if the request is granted). : 5) The discretionary extensions under (1) and (3) above are limited to two months from the deadline in the case of periods listed in part 3 of Schedule 4.

6) The discretionary extensions under (1) and (3) above may be allowed even after the deadline to be extended has expired…

7) … but in the case of periods listed in part 3 of Schedule 4, no later than two months after expiry of the deadline.

• Thus subsection (1) is a catch-all discretionary provision, but excludes a set of periods generally related to establishing priority or that affect third parties, or which are covered by subsections 2 and 3.

– In practice the Comptroller does not simply allow someone to change their mind if they chose to miss a deadline.

– In addition, where a third-party might reasonably have concluded that they could make preparations that would otherwise infringe, the Comptroller may allow them to continue in a similar vein to other third party rights provisions in the statute (e.g. s117A above).

Therefore advise completing the omitted act as soon as possible.

• Subsection 2 provides an extension as of right for many procedural steps of prosecution, generally where the applicant has to submit a document or a request. These are noted as applicable throughout this book.

• Subsection 3 provides a further discretionary extension that can be useful if one foresees that an extension requested under subsection 2 won’t be long enough, though many acts have a time limit imposed by subsections 5-7 that limit this subsection’s usefulness. In particular, if you miss applying for your extension as of right under R108(2), in most circumstances you will not get a discretionary extension under R108(3) as the original deadline was therefore more than two months ago (see subsections 6 and 7).

• See BB 9th Ed. §123.25 and §123.69-75 for full details.

Section 118: Information about patents and applications, and inspection of documents 1) After publication of a patent application, anyone can request information/inspect documents relating to the application or patent, subject to any prescribed restrictions (see notes).

120

Part 1: UK Law

UK Patents Act · section 118 2) Information / documents are not available before publication of the patent application without the consent of the applicant, except for: 3) a) providing relevant information to the EPO, aa) sharing information needed for inter-office work sharing schemes to commence prior to publication, b) providing bibliographic information about the application, (‘c’) allowing the Secretary of State to review an application under a secrecy order, but…

3A) … 3(aa) only relates to requests under agreed patent office workshare schemes, and 3B) … the provided information must be kept confidential. : 4) If a person is notified that they will infringe an as yet unpublished patent application, then they can request information / inspect documents as per subsection 1.

5) Where a first, unpublished application is wholly or partially replaced by a second application (e.g. a re-filing), then once the second application is published any person can also request to inspect the first application.

Legal Notes General: • Inspection is free via the online register (http://www.ipo.gov.uk/p-ipsum.htm).

• Restrictions include (R51-55): – no inspection of a document until 14 days after it is filed at the patent office, – no inspection of purely internal UKIPO documents, and – no inspection of requests to inspect.

• The Comptroller can determine whether the following are confidential: – applications for employee compensation, – a document that, within 14 days of submitting, the submitter requests to be treated as confidential, – disparaging, offensive, or immoral material, and – anything the Comptroller considers should be confidential (e.g. where an applicant submits medical reasons for unintentionally missing a deadline).

• For s118(4), the request must provide evidence of the circumstances; the request is notified to the patentee, who can confirm whether or not the circumstances are correct before the Comptroller makes the application available to the requester.

• Subsections 3(aa) and 3A-3C allow inter-office work sharing schemes to commence prior to publication. For details, see https://assets.publishing.service.gov.uk/government/uploads/system/ uploads/attachment_data/file/329280/patents-worksharing.pdf Caveats: • Rule 54 allows for a person to request notification of an event, otherwise known as a ‘caveat’, by filing PF 49. A caveat can be used to be informed of any of the following events: A request for substantive examination has been filed, or the prescribed period for doing so

Study Guide to the Patents Acts (2021 edition)

121

UK Patents Act · section 118-120 has expired without the request having been filed; a patent application has been published; notice of grant of a patent has been published under section 24; an application for a patent has been withdrawn, or terminated; a renewal fee has been paid within the grace period of section 25(4); a patent has ceased to have effect and/or an application for restoration of a patent has been filed; an opinion has been requested under Rule 93; an entry has been made in the register; an application has been made to register a transaction, instrument or event under rule 47; Publication in the journal of subject matter specified on the form; and when any document may be inspected in accordance with Rule 51 or 53.

Section 119: Service by post Any notice required to be given (e.g. by the UKIPO), and any application or other documents required to be filed (e.g. by the applicant), can be sent by post.

Legal Notes • ‘Post’ means any commercial posting service, not just the Post Office.

• Notification from the UKIPO is assumed to be on the date the letter is posted. There is no equivalent of the EPO ten-day rule.

• For postal disruptions etc., see s120 below.

• Electronic filing is also permitted for many acts, and is covered by s124A. Practice Notes • Use registered mail if posting, because date stamps are not always legible in the event of a dispute, or when wishing to use R111 (extension due to delay in communication) below.

Section 120: Hours of service and excluded days 1) The Comptroller can decide the hours and days of opening at the UKIPO (including days such as Bank Holidays and interrupted days). Such opening times may vary for different classes of business conducted.

2) If you perform an act after the relevant hours of business or on a closed day, the act is deemed to have taken place the next open day. Conversely, where a deadline falls on a closed day, it is extended to the next open day. : Rules R110 Interruptions: 1) The Comptroller can certify a day as an interrupted day when a) there is an interruption to normal operation at the UKIPO, or

122

Part 1: UK Law

UK Patents Act · section 120 b) there is an interruption to the normal operation of postal services in the UK. 2) Such certification appears in the OJ. 3) In such circumstances, deadlines falling on an interrupted day will be extended to the next uninterrupted and open day. : R111 Delays: 1) The Comptroller shall extend any period of time specified in the Act or Rules when satisfied that the failure to meet a deadline was wholly or mainly attributable to a delay in or failure of a communication service (e.g. post, courier, email).

2) Such an extension is made a) after notifying the parties concerned (e.g. where the deadline is in relation to inter partes proceedings), and b) subject to any conditions directed by the Comptroller. : Legal Notes The UKIPO’s current hours are: • For filing of new applications NOT claiming priority All days and at all times • For filing of new applications which claim priority 00:00 Monday to 23:59 Friday • Renewal of existing IP rights 00:00 Monday to 23:59 Friday • The filing of all other forms and documents 00:00 Monday to 23:59 Friday • Any other class of business 09:00 to 17:00 Monday to Friday • Closed on Good Friday, Christmas Day, and Bank Holidays (except for new applications not claiming priority) Delay: • Whilst not explicitly stated, given the tenor of s120 and R110 it seems implicit in R111 that the delay or failure should be attributable to a communication service external to the applicant.

Hence a failure by one’s own email server may not fall under R111 since you should know of it and be in a position to use an alternative means of communication such as fax. By contrast, a failure at the UKIPO e-filing server is likely to result in an acceptable delay under this rule.

• Clearly establishing that an external postal delay or loss has occurred is another reason to use registered post; otherwise the Hearing Officer may use the balance of probabilities to determine whether postal delay or loss occurred (though see AEB SRL’s Application BL O/388/17 for a case where a s28 restoration request deadline was extended because the R41 notification of loss of rights for non-payment of renewals was sent but considered, despite the absence of evidence, not to have been received through the post).

• The UKIPO assumes that first class post should take two days to reach it, whilst second class post will take four days. Thus for post there is an implied cut-off date prior to any deadline after which R111 is unlikely to apply. (The corresponding EPO provision has an explicit cut-off period of five days for European post).

Study Guide to the Patents Acts (2021 edition)

123

UK Patents Act · section 125

Section 125: Extent of Invention 1) The extent of protection is defined by the claims as they are interpreted by the description and any drawings.

2) Where a claim encompasses two inventions, these can have different priority dates.

3) The protocol on the interpretation of Article 69 EPC, having a corresponding provision to that of subsection (1) above, shall, while in force, apply for the purposes of subsection 1.

Legal Notes Interpretation – Estoppel: • The basis for interpretation is normally limited to the description and drawings in the patent itself (and the published application in the case of s69). Traditionally the UK has not embraced the concept of file-wrapper estoppel; as expressed by Lord Hoffmann, ‘the meaning of a patent should not change depending on whether or not someone has had access to its file’. However, this approach has now changed with the decision of Activis v Eli Lilly [2017] UKSC 48, in which Lord Neuberger wrote that UK courts may refer to the contents of the prosecution file ‘in limited circumstances’, particularly if they clearly resolve a genuine ambiguity in the patent itself, or if it would be contrary to the public interest for the contents of the file to be ignored. This latter circumstance appears somewhat open-ended, and would for example cover an applicant’s restrictive interpretation of claim scope asserted during prosecution when differentiating over prior art – which may now be used to limit an interpretation of the intended claim scope during subsequent infringement proceedings. See also BB 9th Ed §125.12.

Interpretation – Claim Construction: • Clearly, a defendant’s article, process etc., may infringe any claim’s scope as a matter of normal interpretation. However, it is also possible that a variant of this article or process should infringe even though it varies from this normal interpretation of the claim if, in some sense, the variation is immaterial (i.e., equivalent). To address this possibility, the extent of protection afforded by a non-literal interpretation of the claims can be constructed (the so-called ‘purposive construction’, or ‘intended’ claim scope).

• Where a question of infringement requires a construction of the extent of protection provided by the claims, for years the standard test used to determine any degree of overlap was laid out in Improver Corp v Raymond Industrial [1991] FSR 233CA (HK), commenting on Catnic v Hill & Smith [1982] RPC 183 HL (the ‘Catnic / Improver’ test). However, this has now been reformulated by the Activis v Eli Lilly decision.

• The test still tries to determine the purpose or intent of the claim wording where this goes beyond a literal interpretation, in comparison with some variant example (i.e. the potentially infringing product), and comprises three questions: i. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the

124

Part 1: UK Law

UK Patents Act · section 125 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??

– If no, then the variant is outside the claim.

– If yes, then: ii. 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?

– If no, then the variant is outside the claim.

– If yes, then: iii. 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 yes, then the variant is outside the claim.

– If no, then the variant infringes.

• Notably the new formulation of the test therefore assesses the meaning of the granted claims, as if read back at the priority date, whilst using knowledge of the variant’s result available at the time of the alleged infringement, to determine if it would be obvious at the priority date that the variant achieves the result in basically the same way.

– This is significantly more convoluted than the previous version of the test (based on knowledge at the time of publication).

– Question ii. appears shift the balance of the test against the infringer (i.e. infringement is more likely, all else being equal, since subsequent knowledge is now being used to assess the effective breadth of earlier claims). This appears to be deliberate (e.g. see paragraph 61 of the Activis v Eli Lilly decision, which basically says it’s not the patentee’s fault that they only found one working implementation of their idea, and then paragraph 62, which says that if they had been told about the other working implementations found by the infringer, would they have understood that these worked in a similar way).

– Question ii. assumes that it is straightforward to conceptually separate a result from the way it is achieved. Whilst this may be true in the pharmaceutical case at hand, it may be less straightforward in other cases. It is notable that the original Improver questions, responding to a mechanical patent, looked at the material effect of the workings of the invention.

– It will be appreciated that the possibility of file-wrapper estoppel introduced by Activis v Eli Lilly can affect the outcome of question iii, by including comments made during the prosecution history in addition to the contents of the patent itself.

• A crude summary of how the test worked in Activis v Eli Lilly might therefore be that if an inventor only knows of or envisions one working implementation of their invention, and only claims that one implementation, then someone finding a different but similar working implementation will nevertheless infringe if a skilled but uninventive person, being told that the other implementation works, would realise it worked similarly – unless there is a clear indication that the patentee wanted the claim scope to only cover their one working implementation.

• The test therefore effectively incorporates a doctrine of equivalents into UK Patent law. See also BB 9th Ed §125.7-10.

Study Guide to the Patents Acts (2021 edition)

125

UK Patents Act · section 125-128A Interaction with the EPC: • The protocol on the interpretation of Article 69 EPC (as updated by the EPC 2000) makes explicit that equivalents may be considered for the purpose of infringement: Protocol Article 1: General principles “Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.”

Protocol Article 2: Equivalents “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.”

• Arguably article 2 is implicit in article 1, and this had been the approach taken by UK courts.

For example, Catnic / Improver implicitly applied the principle of equivalents, and this was explicitly affirmed for example In Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, where Lord Hoffmann suggested that equivalence can be an important part of the general knowledge that the skilled person would use to understand what a claim means.

• Activis v Eli Lilly [2017] UKSC 48 now clearly incorporates the doctrine of equivalents into UK law.

Section 128A: EU Compulsory Licenses 1)6) Incorporates EU Compulsory Licences granted under Regulation (EC) No. 816/2006 into the various provisions in the UKPA relating to licences.

Legal Notes General: • This provision adopts the modified TRIPs agreement that enables compulsory licensing of pharmaceuticals to countries with public health problems but which have insufficient native manufacturing capability, so necessitating licensing abroad (e.g. in the EU and GB) for the sole purpose of export to the country in need.

126

Part 1: UK Law

UK Patents Act · section 128B

Section 128B: Supplementary Protection Certificates 1) This section incorporates Schedule 4A into the act, which provides supplementary protection certificates under two different European regulations.

Legal Notes General: • Supplementary protection certificates are not extensions of a patent, but are a separate right that provides similar protection for inventions that are subject to regulatory approval (e.g. medicines) that may take an appreciable proportion of a patent’s life to complete. The certificates therefore provide some equity of protection for the subsequent commercial exploitation of such products.

• Note that the protection only extends to the embodiment of the invention (i.e. specific product) for which regulatory approval is obtained.

• There are two types of supplementary protection certificate available; one for medicines ( Regulation (EC) No. 469/2009), and one for plant protection products (Regulation (EC) No. 1610/96). The basic provisions for both are similar.

• Here, a ‘medicine’ is for humans or animals and is a substance or combination of substances for treating or preventing disease, for performing diagnoses, or restoring, correcting or modifying physiological function (e.g. HRT).

• Meanwhile, a plant protection product is a substance, micro-organism or virus for acting on plants, parts of plants or plant products, or acting against harmful organisms.

Application: • Apply for a certificate within six months of receiving valid authorization to put the product on the market if the product is protected by a patent currently in force, or alternatively apply within six months of grant if this is later. One pays an application fee and a cumulative renewal fee for the duration of the SPC in advance of it coming into effect (see BB 9th Ed. §128B.72).

• There is a similar six-month grace period for this cumulative fee to that for patent renewal fees.

Duration: • The maximum term allowed is five years (plus an extension of six months in certain circumstances) – the actual term is the lesser of five years and the period between the date of ‘lodging’ the patent application and the date of product authorisation, minus five years (see BB 9th Ed. §128B.73).

Interruptions in rights: • Note that if a supplementary protection certificate is not granted until after the original patent has expired, then intervening rights are possible (see Sched. 4A 2(2) – BB 9th Ed. §128B.04).

Study Guide to the Patents Acts (2021 edition)

127

Rules for proceedings

Rules for proceedings heard before the Comptroller These rules collate the separate rules that were previously scattered throughout the UKPA for different proceedings.

Rules 73-74 set out the basic mandate for proceedings: R731

Scope and interpretation These rules apply to proceedings heard before the Comptroller for: 1) a) applications, references and requests listed in Part 1 of Schedule 3 (see the end of this section), and b) oppositions listed in Part 2 of Schedule 3 (i.e. oppositions that start proceedings – see notes).

2) (Identifies the rules included below) 3) Terminology: Claimant – Person who starts or is treated as starting proceedings, via R76(1).

Defendant – Person who files a counter-statement, via R77(6) or (8).

Statement of Case – All or part of the statement of grounds or counter-statement.

Statement of Grounds – Statement filed by the claimant.

Statement of Truth – Attesting that the facts in a document are true.

Witness Statement – Written statement signed by a person and containing the evidence which that person would be allowed to give orally.

R741

Overriding objective : 2) Dealing with a case justly, and in so far as is practical – a) equitably, b) cost effectively, c) in proportion to: i) the amount of money involved, ii) the importance of the case, iii) the complexity of the issues, and iv) the financial position of each party, d) quickly and fairly, and e) allocating a reasonable proportion of the Comptroller’s available resources to it.

3) The Comptroller shall implement this objective when a) exercising power under these rules, or b) interpreting these rules.

4) Parties to proceedings are expected to help the Comptroller in achieving this objective.

128

Part 1: UK Law

Rules for proceedings Legal Notes • Rule 74 sets out a general basis for the Comptroller’s discretionary actions in setting up and running proceedings, and also puts an onus on the parties to co-operate with the Comptroller and each other during proceedings.

Rules 75-79 set out how to instigate proceedings: R751

Publication of notices The Comptroller will advertise any event in the OJ to which it is possible to object under schedule 3 part 2 or part 3 (i.e. any opposition that starts or responds to proceedings – see list at the end of this section), unless the Comptroller determines that no-one could reasonably object (R105(5)).

R761

Starting proceedings 1) Proceedings are started by filing in duplicate: a) the relevant form (PF2 to start or PF15 to oppose), and b) a statement of grounds.

2) Anyone can start opposition proceedings within a) two weeks for s75(2) (opposing amendment during infringement or revocation proceedings), or b) four weeks for any other opposition that starts proceedings (Schedule 3 Part 2), from the date of advertising in the OJ under R75. : 4) The statement of grounds must: a) give a concise statement of facts and grounds, d) specify the remedy sought, f) be verified by a statement of truth (see R73(3)), and g) be submitted on clean white A4 paper suitable for copying.

Further elements specific to certain proceedings – b) if opposing a licence of right under s46(3), include grounds of objection to the licence, and … c) … if appropriate, include proposed alternative periods and terms of licence, and… e) … if appropriate, any further information stipulated by the Compulsory Licensing regulation.

Legal Notes • For proceedings relating to an application for a license of right, a precursor step is provided by R89 below.

• If proceedings relate to an EP(UK) application in French or German, then the following Rules 114 and R115 also apply:

Study Guide to the Patents Acts (2021 edition)

129

Rules for proceedings R1141 Translations for proceedings relating to an EP(UK) Application: 1)a)b) The person bringing proceedings (or requesting an opinion under s74A) is responsible for translating a French or German language application into English, unless 2)a)b) such a translation was previously filed under s77(6) (unlikely following the London Agreement), or the Comptroller deems it unnecessary.

3) If the specification is amended during these proceedings, a translation of the amendments back into German or French should also be filed with the Comptroller. : R1151 Accuracy of Translations: If the Comptroller suspects any translation is inaccurate, he will inform the person who filed it and may require evidence of its accuracy. If no evidence is forthcoming then the Comptroller may choose to ignore the document.

R771

Notification of the parties 1)2)3) The Comptroller will notify the proprietor/applicant, and anyone that he deems likely to have an interest (other than the claimant or the claimant’s declared supporters), that proceedings have been started.

4) The notification includes the claimant’s PF2 or PF15 and statement of grounds.

5)6) The notification also includes a deadline for the proprietor/applicant to file a counter-statement in duplicate (typically six weeks)…

7)8) … except for oppositions begun in response to proceedings (Schedule 3 part 3), where a fixed period of four weeks is given.

9) If the proprietor/applicant does not file a counter-statement, it is assumed he agrees with the claimant’s position. :

R781

The counter-statement 1) A counter-statement filed by the defendant must state which of the allegations in the statement of grounds a) he denies, b) he requires the claimant to prove, or c) he accepts, and must also include d) a statement of truth (R73(3)). : 2) Where the defendant denies an allegation, he must a) give his reasoning, and b) if desired, propose an alternative version of events.

3) If a defendant does not comment on an allegation then he is assumed to agree with it (c.f. R77(9)), but…

130

Part 1: UK Law

Rules for proceedings 4) a) … a defendant who does not comment on an allegation, but b) states his position on matters relevant to that allegation elsewhere in the counter- statement, shall be taken to require that the allegation be proved.

Legal Notes • A defendant can take one of the three positions outlined in R78(1) for each allegation.

Subsection 2 then requires substantiation of a denial, whilst subsections 3 and 4 impose positions for the purposes of legal certainty for the other parties in the event that the defendant is vague in his response.

R791

Copies of documents Basically any copy of a statement that refers to another document should enclose a copy of that document, except where sent to the Comptroller and he already has it. Here, ‘statement’ means a witness statement, statement of case, affidavit or statutory declaration.

R80 covers the giving of supporting evidence, any hearing, and the final decision: R801

Evidence rounds and hearing 1)a)b) Once a counter-statement has been filed, the Comptroller sends a copy to the claimant and sets a deadline for the claimant to elect to continue the proceedings by filing PF4 and paying a fee of £350, and also sets deadlines within which each party can provide evidence (c.f.R87)…

2) …though the Comptroller can choose to admit evidence at any point.

3) Evidence is considered to be filed once received by the Comptroller and sent to all other parties to the proceedings.

4) The Comptroller must give the parties an opportunity to be heard.

5) If any party takes this opportunity, the Comptroller circulates a date for the hearing (see R84).

6) Finally, the Comptroller will circulate a reasoned decision on the proceedings to the parties.

Rules 81-88 provide tools for the Comptroller to manage proceedings: R811

Alteration of time limits The Comptroller can (further) extend or shorten any period relating to proceedings, any number of times, including after the period has expired.

R81A1 Failure to file PF4 If the claimant does not file PF4 within the period set by the Comptroller (c.f. R80(1)), then they are deemed to have withdrawn from the proceedings.

Study Guide to the Patents Acts (2021 edition)

131

Rules for proceedings R821

General powers of the Comptroller in relation to proceedings Among other things, the Comptroller can – require documents to be filed (c.f. R86) or be excluded, – direct what evidence he requires and how to submit it, – require translations of documents, – require a party or representative to attend a hearing, – consolidate or split proceedings, and – suspend proceedings or refer parties to arbitration.

Where the Comptroller gives directions in relation to proceedings, he can – impose conditions, and – specify the consequence of failure to meet those conditions.

R831

Summary Judgement 1) A party can ask for a statement of case to be thrown out or for the proceedings to be summarily judged.

2) The Comptroller will throw out a statement of case if a) there is no merit to the grounds raised, b) it appears to be merely an abuse of process, or c) the other party has failed to comply with part of the proceedings.

3) The Comptroller may give a summary judgement if he considers that either the claimant or defendant has no real prospect of winning, and that a hearing would not help.

R841

Hearings 1) Hearings are public, unless 2) a party requests all or part of a hearing be held in private, and 3)a)b) the Comptroller agrees, having heard the opinions of the other parties, or 4) where the relevant patent application has not yet been published (typically during an inventorship or employee dispute). :

R851

Security for costs / expenses Basically, security can be required for residents of certain foreign countries, parties in financial difficulty and parties who behave suspiciously (changing address for service, moving financial assets, etc).

R861

Power to compel attendance / submission of documents The Comptroller has the power of a high court judge to compel the attendance of witnesses and the submission of documents, but cannot summarily punish for contempt.

132

Part 1: UK Law

Rules for proceedings R871

Evidence 1)2)5) Evidence can be given by affidavit, statutory declaration or any other form acceptable to a court, or a witness statement or statement of case if accompanied by a statement of truth (see R73(3)), signed and dated by the person making the witness statement, or by their representative for a statement of case.

3) By default evidence is given by witness statement. :

Rules 89-91 cover additional provisions for specific circumstances: R891

Proceedings for licences of right under s46(3) 1) Proceedings by a third party are requested using a) PF2, and b) a draft of the proposed licence in duplicate.

2)3) The Comptroller notifies the proprietor and sends them a copy of the draft licence, and…

4)5) … sets a deadline for the proprietor to set out their own statement of grounds if they wish; such grounds should object to the licence (see R76(4)(b)). If they do not then they are deemed to agree with the applicant.

6) If the proprietor opposes, then proceedings then continue as per R76(1) with the proprietor as claimant and the applicant as defendant.

Legal Notes • Rule 89 thus provides an additional opening step to R76 for licences of right, to allow for the draft licence to be negotiated.

R901

Licences following entitlement proceedings 1) Old licensees and owners of good faith can apply within two months from: a) for EP(GB)s, the date of the order under s12(1), or b) for UK applications, the date of the order under s8 (c.f. s11(3)(3A)), or 2) for post-grant proceedings, the date of the order under s37 (c.f. s38(2)(3)).

R911

Employee compensation 1) An employee can begin proceedings under s40 at any time between grant and a year after lapse of the patent.

2) a) If such a lapsed patent is restored under s28, then the right to begin proceedings is similarly restored. But, b)i)ii) if an application to restore a lapsed patent fails, then an employee has the later of the one year above, or six months from the refusal to restore, in which to apply.

Study Guide to the Patents Acts (2021 edition)

133

Rules for proceedings

Schedule 3 Schedule 3 (of the rules, not the sections) simply lists for convenience sets of sections and rules to which certain rules for proceedings can refer (e.g. Rules 73, 75 and others above).

Part 1 s8(1) s10 s11(5) s12(1) s13(3) R10(2) s37(1) s38(5) s40 s46(3) s47(3) s48(1) s52(2)(a) s61(3) s71 s72

– – – – – – – – – – – – – – – – –

Applications, references and requests: Entitlement Proceedings Dispute between joint applicants Entitlement to a licence after transfer of application Entitlement proceedings for a foreign or convention patent Remove a person mentioned as inventor Add a person to be mentioned as inventor Determination of right to patent after grant Entitlement to a licence after transfer of patent Employee compensation Negotiate terms of licence available as of right Cancel licence available as of right Compulsory licence Cancel compulsory licence Infringement proceedings Declaration of non-infringement Revocation proceedings

Part 2 s27(5) s29(2) s47(6) s75(2) s117(2)

– – – – – –

Oppositions that start proceedings Opposing amendment after grant Opposing surrender of patent Opposing cancellation of licence of right, by proprietor Opposing amendment during infringement or revocation proceedings Opposing correction of error in patents and applications.

Part 3 s47(6) s52(1) s52(2)(b)

– – – –

Oppositions in response to proceedings Opposing cancellation of licence of right, by third party Opposing application for compulsory license Opposing application to cancel compulsory license

134

Part 1: UK Law

Designs

1.2 Designs Traditionally, Question 2 of FD1 is the design question. The usual format of the question requires you to analyse the various protectable aspects of one or more objects or a combined object, although in recent years other aspects of design law have played a more prominent role.

This year has seen some considerable changes to designs in the UK due to Brexit. It has seen changes in rights of representation before the EUIPO, the loss of community rights in the UK, the cloning of those rights into UK rights, and/or the creation of corresponding UK rights. At the time of writing, the extent to which these will be reflected in the 2021 exam is unclear.

With regards to designs, the 2021 syllabus, like the 2018 – 20 syllabi, merely refers the reader to the syllabus of FC4 (the design and copyright foundation exam). Whilst the implication is that the final exam should encompass the scope of the foundation exam, the learning outcomes specified in the last published syllabus remain essentially unchanged since 2014. Consequently, this section of the book covers those areas of law relating to the earlier syllabi and the current learning outcomes, together with the changes due to Brexit that fall within these areas.

1.2.1 UK Registered Design A registered design provides a monopoly right (whereas an unregistered design right additionally requires evidence that the design was copied).

Definition of ‘Design’ s1 RDA: Registration of designs 1) A design may be registered upon making an application for registration under this Act. 2) A ‘design’ means the appearance of the whole or a part of a product, arising from such features as lines, contours, colours, shape, texture, or materials of the product or its ornamentation.

3) A ‘product’ is any industrial or handicraft item (other than a computer program); including packaging, get-up, graphic symbols, typefaces, and parts for assembly into a so-called ‘complex product’ – which in turn is an object that can be (re)assembled from two or more replaceable parts.

Legal Notes General: • Registration uses form DF2A. Multiple views of a design (up to 12) can be filed. Furthermore, multiple designs can be filed at the same time, with subsequent designs in the same application costing less to file.

• The product’s appearance does not need ‘eye appeal’ – a product can appear prosaic.

Study Guide to the Patents Acts (2021 edition)

135

Designs • Protected emblems that cannot contribute to a registered design include the Olympic symbol and national flags – see notes to s11ZA below.

• Each part of a product can be registered separately.

Novelty and Individual Character s1B RDA: Requirement of novelty and individual character – Part 1 1) A design can be protected to the extent that: 2) (Novelty)… it differs from prior art designs by more than immaterial details, and…

3) (Individual character)… its overall impression on an informed user differs from the overall impression of any prior art design…

4) … taking account of the degree of freedom available in creating the design. : 8) For a product forming part of a complex product, assess the novelty and individual character of what is visible during normal use.

9) … where ‘normal use’ is use by the end user, but not any maintenance, servicing, or repair work.

Legal Notes General: • In other words, a registerable design must have a material difference over the prior art that results in a different overall impression on the informed user.

Novelty: • Novelty includes existing published designs registered in different classifications to the current design – e.g. see Green Lane v PMS International, [2008] EWCA Civ 358 (registered designs are classified using the Locarno classifications).

• However, novelty is not absolute, and excludes materials that could not have reasonably become known to EEA businesses in the relevant specialist sector – see ‘s1B RDA continued’, below.

• A design must also be new and have individual character over existing UK or community registered design applications (which may not have been published at the date of the present application) – see s11ZA(1A) below.

Individual Character: • This is determined by the overall impression of the ‘informed user’ (cf. s7 RDA below).

Following Proctor & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, the informed user is someone experienced with the products in question and with the designs and relevant design constraints in that field. As such they are more like the ‘skilled person’ in patents than the ‘average consumer’ in trade marks.

136

Part 1: UK Law

Designs Complex Product: • This is a product which is composed of at least two replaceable component parts permitting assembly and reassembly of the product. Possible indicators that a product is a complex product include that it has user-removable parts, or user serviceable / consumable components.

Statutory Exclusions s1C RDA: Designs dictated by technical function 1) A right in a registered design does not subsist in those features of a product whose appearance are solely dictated by the product’s technical function.

2) A registered design does not protect those features required in order to connect to or to fit (i.e. to place in, around or against) another product so that either may perform its function…

3) … except in the case of features enabling mutually interchangeable (modular) systems. s1D RDA: Designs contrary to public policy or morality One cannot register a design that is contrary to public policy or morality.

Legal Notes • s1C(2) is the so-called ‘must fit’ exclusion, which typically applies to the points of fixture of one object to another object for functional purposes. Thus for a car exhaust, one may register a design for the exhaust but not how it fits onto the car. This enables others to still make operable alternative exhausts.

• Notably, the ‘must match’ (aesthetic) exclusion no longer exists for RDAs. Thus a shaped car wing or other panel that adheres to an overall aesthetic of that car can now be registered, but s7A(5) RDA (see below) still specifically allows people to make matching spare parts that ‘restore the original appearance’ of the car.

Disclosure and prior art s1B RDA: Requirement of novelty and individual character – Part 2 5) a)b) A design is disclosed by any public dissemination (publication, exhibition, use in trade, etc) prior to the application/priority date, unless…

6) a) … this would not reasonably become known in the normal course of business within the United Kingdom and the European Economic Area, in the specialist sector of the design, or b) it was disclosed in confidence, or c)-e) it was disclosed by the designer or by anyone given, entitled to or abusing information from the designer within 12 months prior to the application or priority date.

Study Guide to the Patents Acts (2021 edition)

137

Designs Legal Notes • Thus any design falling under s1B(5) but not s1B(6) is prior art.

• s1B(6)(a) means that whilst novelty is worldwide, for prior disclosures outside the UK and EEA there is an additional requirement that the disclosure could ‘reasonably’ have become known within the UK and EEA in the normal course of business in the sector concerned.

• s1B(6)(c-e) together amount to a 12-month grace period for application after any disclosure ultimately originating from the designer, whether involuntarily (as a consequence of abuse) or voluntarily (either directly or via an intermediary).

• There is significant variability regarding the length of grace period (if any) provided by different countries around the world, and also what conditions are attached. The UK, EU, and the US have 12 month grace periods, whilst Japan, Australia, India and Korea have six-month grace periods. Meanwhile China does not have any grace period. It is therefore preferable to register a design before disclosure rather than relying on the grace period, particularly if you plan to obtain protection overseas.

• Like s2(4) UKPA, most countries also require an application to be filed with them within the grace period; it is not enough that any priority date was within the grace period.

• Furthermore, if using the grace period, recall that this is with respect to one’s own originating disclosures, and so note the risk that a third party may independently disclose and indeed register a similar design first, in which case the grace period would not apply to protect you.

• As a separate disclosure matter, s5 RDA provides a similar set of secrecy provisions to s22 & 23 UKPA, including scope for the registrar to restrict publication, and for requiring designs in certain classes relating to defence to be first filed in the UK.

Authorship and First Ownership s2 RDA: Proprietorship of designs 1) The author (i.e. creator) of a design is the original proprietor, unless… : 1B) … it was created by an employee in the course of their employment, in which case the employer is the proprietor.

2) Ownership can be assigned to or shared with another party and that other party is treated like the original proprietor. : 4) For computer generated designs, the person making the arrangements necessary to give rise to the design is deemed to be the author.

Legal Notes • Hence registered designs have similarities with patents, in that the creator is the owner unless the design was created in the course of employment.

• Note that the Intellectual Property Act (IPA) 2014 changed the law so that in the case of a

138

Part 1: UK Law

Designs commissioned work, the author owns the work by default rather than the commissioner.

Clearly however a commissioning contract can still assign ownership of the commissioned work to the commissioner.

Registration s3 RDA: Applications for registration 1) An application for the registration of a design or designs shall be filed at the Patent Office. : 3) If a UK unregistered design right exists in a design, then that design must be registered by the unregistered design right owner (see s215 CDPA below) : 5) Failure to properly complete an application will eventually result in it being abandoned. s3C RDA: Date of registration of designs 1) The date given to a completed registration is the date on which the UK application was deemed to be made, but…

2) … if the effective date for the purpose of evaluating prior art is earlier, then…

3) a) if this is due to a priority claim, the date of registration is (still) the date of the UK application; b)c) if this is due to splitting an initial UK application (s3B(3) RDA) or validly amending the design to satisfy registration requirements (s3B(5) RDA) such that a new application is filed, the date of registration of the new application is the date of the initial UK application.

Legal Notes Priority and Registration: • Note that under s3C(3)(a) RDA, even though a claim to priority means the effective date for the purposes of prior art is the priority date, the date of registration is the application date.

This is similar in spirit to the case for patents, where the patent duration runs from filing, not priority (see s25(1) UKPA, and s8(1)RDA below).

• One can save money by filing multiple applications together (up to 50), which can be unrelated.

• Note that s5 RDA introduces similar secrecy provisions to those of s22 UKPA.

Rights and infringements s7 RDA: Right given by registration 1)3) The registered proprietor is entitled to exclusive use of the design and any design that does not produce a different overall impression on the informed user (taking account of the degree of freedom in creating the design), where…

2)a)b) … ‘use’ means making, offering, putting on the market, importing, exporting or using a

Study Guide to the Patents Acts (2021 edition)

139

Designs product incorporating the design or to which it is applied, or stocking the product for any of these purposes.

4) These rights are subject to any limitation by the registrar or courts relating to partial invalidity, or any partial disclaimer in the application. s7A RDA: Infringements of rights in registered designs 1) Any unauthorised act falling under s7 above is an infringement, unless…

2) a) … the act was private and non-commercial, or b) done for experimental purposes, or c) it was a reproduction for teaching purposes, providing (3) the source is mentioned, and the act does not unfairly prejudice normal exploitation of the design, or d) it is for use on foreign ships / aircraft temporarily in the UK, or e) it is the importation of spare parts for such ships / aircraft, or f) it is for the repair of such ships / aircraft. : 4) Exhaustion of rights applies once a product has been put on the market in the UK or the EEA with the proprietor’s consent (e.g. if sold by the proprietor in France then one can import to UK).

5) Where a registered product is a component part of a complex product, it is not an infringement to use that part in repairs to restore the original appearance of the complex product.

6) Infringement only applies back to the date on which the certificate of registration is granted.

Legal Notes General: • s7 and 7A RDA are clearly similar to s60(1) and s60(5) UKPA. Notably however there is not a ‘secondary infringement’ provision like s60(2). Also notably, under s7(2) RDA one can infringe a registered design by exporting the product (this is not an option under s60(1) UKPA).

• Also note that infringement commences from grant, not registration (and there is no intermediate publication prior to grant).

• Case law suggests that the test for infringement is basically the same as that for novelty and individual character and hence the process to check whether a product falls under the design’s exclusivity as per s7(1) is to first determine those aspects of the design eligible for comparison on the basis of their overall appearance, and then for the ‘informed user’ to weigh the similarities and differences of these aspects to reach a conclusion.

• As noted above, the informed user is more experienced and discriminating than the ‘average consumer’ of trademarks, and so for an otherwise identical trade mark and registered design, in principle it is possible for something to infringe the trade mark but not the design.

• It should be noted that the effective scope of protection provided by a registered design can be affected by how a design is represented; a line drawing of a design is interpreted as

140

Part 1: UK Law

Designs protecting the shape only, irrespective of surface decor, whilst a shaded, untextured CAD render of the same design could be interpreted as providing guidance on surface appearance.

See the notes commenting on PMS International Limited v Magmatic Limited [2016] UKSC 12 and Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936. at https:// www.gov.uk/government/publications/designs-practice-notice-dpn-116/dpn-116-guidance-on-useof-representations-when-filing-registered-design-applications.

• The IPA 2014 also added s7B RDA, which introduces a prior use defence somewhat similar to s64 UKPA, namely that a person, who, before the application/priority date, used a subsequently registered design in good faith or made serious and effective preparations to do so, may continue to do so – unless the used design was copied from the design that was subsequently registered. The right to continue can be handed down with a business, but can not be licenced or assigned, as per s64 UKPA. • A registrant can show their product has registered design protection, in a similar manner to marking with a patent (c.f. s62(1) UKPA). This can limit scope for an accidental infringement defence. As of 1 Oct 2017, it is possible to use a website address to link to (multiple) design registrations, again in a similar manner to patents.

Criminal offense: • The IPA 2014 also made it a criminal offense after 1 October 2014 to intentionally copy a UK registered design (and Community registered designs up until 31/12/20) in order to make a product exactly to that design or only with immaterial differences, whilst knowing or having reason to believe that the design was registered but not obtaining the consent of the proprietor (s35ZA(1) RDA).

• The act similarly makes it an offense to offer, put on market, import, export or use such a product or stock it for such purposes, if done whilst knowing or having reason to believe that the product fell under s35ZA(1) and without obtaining the consent of the proprietor (s35ZA(3) RDA). See for example https://www.gov.uk/government/publications/intellectualproperty-offences/intellectual-property-offences#registered-designs-act-1949. A defence is to show a reasonable belief that the registration of the design was invalid or that the person did not infringe the registered design (s35ZA(4),(5)(b) RDA). Also it is clearly a defence if the product in fact does not infringe the registered design (s35ZA(5)(a) RDA).

Duration of Registered Design Rights s8 RDA: Duration of right in registered design 1)2)3) The rights last five years from the date of registration, renewable up to four times (i.e. to a total of 25 years), by requesting an extension and paying a renewal fee before expiry of the current period…

4) … however, there is a six-month grace period in which to pay the renewal fee and a penalty fee; and if these are paid then – a) anything done to or with the rights in the meantime is valid; and b)c) any infringement or crown use in the meantime is treated as such.

Study Guide to the Patents Acts (2021 edition)

141

Designs Legal Notes • Subsection (4) is therefore similar to s25(4) UKPA for patents. s8A RDA: Restoration of lapsed right in design 1) Where the right in a registered design has expired due to a failure to pay a renewal fee (and penalty fee, if appropriate), an application may be made to restore the design right within 12 months of the expiry (RD Rules 13(2), but see notes below).

2) The application may be made by the registered proprietor or a person who would have been entitled to the right if it had not expired, or (with leave of the registrar) one of joint applicants. : 4) If the registrar is satisfied that the failure to pay the fee(s) was unintentional, then he will restore the right upon payment of the fee(s). : Legal Notes • s8A (and s8B) RDA provide similar provisions to s28 & 28A UKPA for lapsed registered designs; providing the lapse was unintentional and the relevant fees are paid within 12 months of expiry (i.e. six months after the lapse of the grace period), then the registration can be restored. However, good-faith third-party rights may arise within the interim (post-grace to restoration) period under s8B. • As a one-off transition provision, re-registered designs (the cloned UK component of a community registered design or international design designating the community) whose current period ends within six months of transition day (31/1/20) have 12 months from the date of notification of loss of rights under s8(3). This provides an additional layer of safety during possible changes in representation, etc.

Grounds for Invalidity of Registration s11ZA RDA: Grounds for Invalidity of Registration 1) The grounds are… a) … that the design does not fulfil the requirements of s1(2) RDA; b) the design does not have novelty or individual character under s1B, or falls foul of the statutory exclusions of 1C or 1D; and c) any further ground of refusal in Schedule A1 of the RDA; or 1A)1B) it (as a ‘later design’) does not have novelty or individual character over a previously registered UK design made available to the public on or after the application date of the later design but which was registered (or has applied for registration) prior to the application date of the later design; or 2) where the registered proprietor was not entitled to register the design, and the true proprietor objects; or

142

Part 1: UK Law

Designs 3) where the design incorporates an earlier distinctive sign and the rights holder in the sign objects; or 4) where the design incorporates copyright material and the rights holder in the material objects. : Legal Notes • Schedule A1 excludes protected insignia (e.g. royal arms, national flags of Paris Convention states, the Olympic symbol and other symbols of intergovernmental organisations) used without consent.

• s11ZA(1A) is similar to s2(3) UKPA, but applies to both novelty and individual character.

• Subsections 3 and 4 provide protection for other rights holders (trademarks and copyright).

Convention filings s14 RDA: Registration of design where application for protection in convention country has been made 1) Within six months of filing an application in a convention country, a proprietor, their representative or an assignee can file an application in the UK claiming priority.

2) For the purposes of evaluating prior art, the UK application uses the priority date, but…

3) … this does not prevent the registrar re-dating an application if a material modification is made to the design under s3B(2), or a design has been ‘split’ under s3B(3).

4) Reciprocal and en bloc treaties of convention countries are respected.

Legal Notes Priority: • There is a six-month priority period in which overseas applicants from a convention country can apply for registration. s14 RDA enacts Art 4(C)(1)(2) of the Paris Convention (c.f. Section 2.1 of this book).

• Obviously, the converse also applies; thus for example one has six months from the date of first application in the UK to apply in the US whilst claiming priority.

Notes on registered designs in the US: • US RDR lasts 15 years from date of issue. There is no renewal.

• Convention filings are based on the Paris Convention and so there is a reciprocal ability for a US application to claim priority within six months from a UK application.

• There is also a 12-month grace period for disclosure in the US or publication anywhere else, but note that the application must be filed in the US (directly or as a PCT) within this time.

Elsewhere: • There is scope to extend a UK RDR directly to some Commonwealth countries.

Study Guide to the Patents Acts (2021 edition)

143

Designs Hague Agreement: • The UK became a member on 13 June 2018. The Hague agreement allows for a single international application to be filed with the International Bureau (IB), covering up to more than 80 states and now designating the UK directly (instead of as a member of the EU).

1.2.2 Community Registered Design • For brevity in an FD1 answer, note that CRDs are essentially the same as the UK Registered Designs above, since they are based on similar text from the designs directive 98/71/EC that informed UK RD law.

• Like the UK registered design, where appropriate consider IP clauses for assignment to the commissioner of a work, etc, when discussing CRDs. • Like UK registered designs, it is possible to file multiple designs at the same time, with subsequent designs costing less to register. However, for Community RDs the multiple filed designs must all be in the same top-level EuroLocarno class.

• The EUIPO will accept the first seven views in a design application (plus three unprotected views).

• Note that as of 31/12/21 CRDs no longer apply to the UK and so they no longer have effect here (see below). In addition, UK representatives are no longer able to act before the EUIPO to prosecute CRDs (see https://euipo.europa.eu/ohimportal/en/brexit-q-and-a), if they are no longer legal practitioners qualified in one of the Member States of the EEA and having a place of business within the EEA. Consequently at the time of writing it is unclear to what extent CRDs will remain on the syllabus. However, they remain a significant right in practice.

• To compensate (within the UK) for the loss of the CRD, the Government has created a complementary right for the UK portion of existing such CRDs, as detailed below.

1.2.3 Re-Registered Designs s12A RDA: Application of the Act to certain Community Registered Designs Schedule 1A makes provision: (a) For CRDs (to be treated as UK re-RDs from 31/12/20); and (b) For CRD applications pending on 31/12/20.

Schedule 1A RDA: European CRDs Part 1 – Existing CRDs 1. Re-registration 1)5) An existing community registered design is to be treated as if it was a UK Registered Design on and after 31/12/20 (‘IP completion day’), at no cost…

2) …and is referred to as a ‘re-registered design’… :

144

Part 1: UK Law

Designs 4)…which inherits the application and registration dates of the CRD. 3)6) The following do not apply to re-registered designs: s7A(6) RDA (infringement back to date of grant) s18 RDA (issue of certificate upon registration) : 2. The register 1)2) Re-registration is as soon as practical, and the right of inspection applies from the day that a given re-registered design is entered on the register.

3. Opt out 1) After 31/12/20, a proprietor can serve notice on the registrar that they want the design not to be treated as a UK RD, unless: 2) (a) The resulting UK re-registered design has accrued an interest (e.g. assignment, licence, or mortgage), or (b) proceedings based on the re-registered design have been initiated by the proprietor or with their consent. : 5) The opt-out causes the design to cease to have effect in the UK effective as of 31/12/20 (and the registrar is no longer obliged to create a register entry if not yet done).

4. Priority 1)2) If a CRD claimed priority, this is carried over to the UK re-registered design.

3) This priority date is to be used for assessment of novelty and individual character (c.f. s1B and s3C(2)(3)). : Part 2 – Pending CRDs 11. CRD applications pending before 31/12/20 1)2) For this part, a pending CRD application must have been accorded a filing date, and not been granted or refused, before 31/12/20.

12. (No Title) 1)2) The applicant or their successor in title can then also apply for a UK registered design before the end of nine months from 31/12/20 (paying the normal application fee); and if so…

3) …the application filing date, registration date, (and any priority date) are defined as the same as those of the CRD. Part 3 – CRDs with publication deferred on 31/12/20 13. CRDs with deferred publication 1)2) For this part, a ‘CRD with deferred publication’ has been registered, but its publication has been deferred.

14. (No Title) 1) If the applicant or their successor in title also applies for registration of the same design in the UK before the end of nine months from 31/12/20 (again, paying the application fee), then …

Study Guide to the Patents Acts (2021 edition)

145

Designs 3) … the relevant date for the purposes of assessing novelty and individual character is the earliest of the filing date of the deferred design, and any claimed priority date in respect of the deferred design, and…

4) … if registered, the registration date will be the same as that of the CRD. 2)5) Consequently, sections 3A(4) RDA (certain criteria for refusing registration), 3B (modifying the application) and 3C (normal date of registration) do not apply.

Legal Notes General: • As noted previously, Brexit has seen the UK’s departure from the community registered design (CRD). In response Schedule 1A RDA has been introduced to preserve or enable complementary rights in the UK. These complementary rights are separate to the original CRD and can be challenged, assigned, licensed or renewed independently of the original CRD. • See https://www.legislation.gov.uk/uksi/2019/638/pdfs/uksiem_20190638_en.pdf for the government’s explanatory memorandum.

Existing CRDs: • In brief, the UK component of an existing CRD is cloned as a so-called UK re-registered design (UK re-RD), thereby preserving the original part of the right that applied to the UK. • Assignments of CRDs, licences (if cover the UK), and mortgages/securities on CRDs are also carried over to the UK re-RD, and similarly any references to a CRD in any other document are assumed to encompass the UK re-RD unless the document indicates it should be otherwise.

• If a CRD could have been renewed but this was missed prior to IP completion day, and the six-month grace period ends after IP completion day, then the UK clone is created having technically expired; if the payment for the CRD is then made within the grace period then the clone is treated as if it had not expired (like the rest of the CRD). Meanwhile if a CRD has expired and is subject to restoration after IP completion day, the proprietor has six months from successful restoration to inform the UKIPO. • Subject to some formalities, the decision from any invalidity action pending on 31/12/20 against a CRD will subsequently be applied to the UK re-RD, to the extent that the grounds for invalidity would have applied if the re-RD had been a native RD. • If a registered CRD has deferred publication until after IP completion day then effectively the right is treated like a pending application (see below) and is not cloned but instead must be explicitly applied for.

Pending CRDs: • A parallel application can be made in the UK within nine months (i.e. up to and including 30/09/21) that will be accorded the same application and registration dates as the corresponding CRD.

146

Part 1: UK Law

Designs • It will be appreciated that this provision effectively expires just prior to the date of the 2021 FD1 exam (as do other transitional provisions for example relating to grace periods for fees, or CRDs with deferred publication). Hence its relevance to the exam this year is unclear.

• A design applied for close to the above deadline is likely to be accepted for registration around the date of the exam (but will of course be accorded the earlier registration date of the corresponding CRD). Hopefully the exam would not include such a one-off circumstance but it is best to be aware.

International Designs: • Section 12B and Schedule 1B RDA are similar to section 12A and Schedule 1A RDA above, but apply to international designs (e.g. Hague agreement designs designating the UK only by virtue of designating the EU).

• The provisions are similar, with the UK component of a ‘protected international registered design (EU)’ being cloned at no fee as a ‘re-registered international design’. The cloned right inherits the registration and application dates of the international right. Again there is an opt-out available, and priority claims are respected.

• Similarly, assignments or licences relating to the international right are considered to apply to the UK clone unless there is agreement to the contrary, and the outcome of any proceedings involving a protected international registered design (EU) (including any injunctions) will apply to the UK clone.

• For pending international designs (EU), like for CRDs one has nine months (i.e. up to and including 30/09/21) to file a parallel UK registered design application, which will in due course inherit the international design’s dates.

• The provisions for late renewals are similar to those in Schedule 1A.

1.2.4 UK Unregistered Design (‘Design Right’) Definition of ‘Design Right’ s213 CDPA: Design right 1) A design right for an original design can exist in…

2) … the shape or configuration (whether internal or external) of all or part of an article…

3) … but not in… a) a method or principle of construction; or b) features of shape or configuration of an article that … i) … enable the article to co-operate with another article so either article can perform its function (the ‘must fit’ exclusion); or ii. … aesthetically depend upon another article that the article is intended to form an integral part of (the ‘must match’ exclusion); or c) a surface decoration.

Study Guide to the Patents Acts (2021 edition)

147

Designs 4) a design is not ‘original’ (i.e. sufficiently novel) if it is commonplace in the relevant field within a qualifying country (see s217 below) when created.

5)a)b) A design right can only be conferred to a qualifying person (see s215 & s217-220 below).

5A) A design right cannot exist in a design comprising protected symbols (national flags, Olympic symbol, etc) 6) The design right does not exist until the design has been recorded (e.g. as a document or article). : Legal Notes • The shape or configuration can be microscopic; i.e. ‘visual impression’ and ‘appearance’ in the conventional sense are not an issue.

• The Intellectual Property Act 2014 deleted ‘Any aspect’ from the ‘shape or configuration’. An ‘aspect’ can be thought of as decontextualized from the overall design, i.e. ‘a disembodied feature of the design that is merely recognizable or discernable’ (Neptune v DeVol [2017] EWHC 2172). Therefore features of a design need to be ‘sufficiently interconnected’ to form a coherent design, and not merely be cherry-picked elements abstracted from the real object.

Consequently whilst the whole or part of a design is still protected, a ‘part of a part’ such as a cropped feature or trivial aspect is no longer covered, thereby narrowing the scope of protection slightly. Whilst this provides some comfort to third parties, it does now open the question of whether features are ‘sufficiently interconnected’ in an asserted design.

• Spare parts generally fall foul of the must-fit exclusion. The intent is to prevent a suppression of the spare parts trade, where there is no design flexibility for certain aspects of a design.

Note, however, that this typically applies only to the points of fixture – e.g. an exhaust pipe’s points of fixture to a car are not protected by design right, but a novel shape of silencer is.

Thus it ensures the ability to connect spare parts to the car in the required fashion, but not necessarily copy them wholesale.

• Meanwhile must-match parts effectively derive their form from the thing they complement, so as to maintain an aesthetic motif of significance to the overall item.

• Note that purely functional designs are included, in contrast to UK registered designs (c.f. s1C(1) RDA above).

• The exclusion of surface decorations refers to any modification of the surface (additive or subtractive). Common sense should dictate at what point decoratively modifying a surface becomes shaping an object, for example when using a lathe to create a table leg, or chamfering a sharp edge.

• The surface ‘modification’ can be part of how the object is made; hence for example, following Abraham Moon & Sons Ltd v Thornber & Ors [2012] EWPCC 37, a woven pattern, which persists through the whole thickness of a fabric, nevertheless clearly decorates its surface and so is excluded. Meanwhile for example an object made of marble is unlikely to count as surface décor, as the surface patterning is innate to the material (as with wood, ceramics, etc) and hence is not designed or modified per se - although the counter argument

148

Part 1: UK Law

Designs would be that the selection of marble itself in an overall design would be a choice made in the knowledge that a marbled surface would result. Meanwhile, merely cladding a surface in marble would appear to count as surface décor.

• The originality threshold is very low; as long as something is not commonplace and not itself a copy, then it is likely to be ‘original’. The notion of ‘commonplace’ is further restricted to mean commonplace in ‘qualifying countries’.

• The qualifying countries are currently the UK (including the channel islands and the Isle of Man), UK protectorates, New Zealand and Hong Kong – see s217(3) CDPA below. Hence the novelty criterion for unregistered designs is not universal.

• EU member states stopped being qualifying countries as of 31/12/20. Consequently the qualification criteria will differ depending on whether the design right first arose before or after this date.

Authorship and Qualifying Ownership s214 CDPA: The designer 1)2) The designer is the person who creates the design (or, for computer generated designs, makes the arrangements necessary to give rise to the design). s215 CDPA: Ownership of design right 1) The (qualifying) designer is the first owner of any design right in a design that is not created in the course of employment; hence… : 3) … if created by an employee, then the (qualifying) employer is the owner (c.f. s219).

4) Alternatively, where an object qualifies for design right by virtue of first marketing in a (qualifying) country by a (qualifying) person, then that person is the owner (c.f. s220). s217 CDPA: Qualifying individuals and persons 1)2)5) A ‘qualifying person’ is a habitual resident of a qualifying country, or a government of a qualifying country, or a business formed in a qualifying country and having a substantial activity within a qualifying country (i.e. excluding dealings in goods wholly outside that country).

3) Qualifying countries are currently the UK (including the Channel Islands and the Isle of Man), UK protectorates, New Zealand, and Hong Kong. s218 CDPA: Qualification by reference to designer 1) For designs not made during employment, then…

2)3)4) … if at least one of the designer(s) is a qualifying person then design right protection is available to (only) those qualifying person(s).

Study Guide to the Patents Acts (2021 edition)

149

Designs s219 CDPA: Qualification by reference to employer 1) If a design is created in the course of employment, then design right protection is available if the employer (i.e. the would-be proprietor) is a qualifying person.

2)3) For joint employment, if at least one of the employers is a qualifying person then design right protection is available to (only) the qualifying person(s). s220 CDPA: Qualification by reference to first marketing 1)a)b) If there is no design right already with an employer or designer (e.g. because designed in a non-qualifying country), then a design qualifies for design right protection if the first marketing of articles made to the design is by a qualifying person and in a qualifying country (c.f. s217).

2)3) For joint persons, if at least one is a qualifying person under subsection 1(a) then design right protection is available to only the qualifying person(s).

Legal Notes Hierarchy of ownership: • The order of preference set out by s215 is Employer > Designer.

• However this does not mean that for example if the employer is not a qualifying person then the rights go to the designer, if they qualify; in this case it would simply mean that no design right is available to either of them (but possibly redeemable via first marketing through a qualifying route).

• In the case of joint parties, the design right is only available to those parties that are qualifying persons.

• Recall that a ‘person’, as an employer, can be a business (i.e. a body corporate).

Commissions • Commissioners of a design, unlike employers, do not enjoy automatic ownership of the commissioned work. Commissioners need ownership assigned to them by the current rightful owner, for example as part of the commissioning agreement. Again, as an assignee they will need to be a qualifying person to enjoy the right.

Qualifying countries • Notably, JP and US are not qualifying countries; for example a JP designer receives no design right in the UK for a design made in Japan, and vice-versa.

• Also notably, as of 31/12/20 EU member states are also not qualifying countries.

• The qualifying countries are currently the UK (including the Channel Islands and the Isle of Man); UK protectorates such as Gibraltar and the Cayman Islands; New Zealand; and Hong Kong.

• The full list of countries for which reciprocal protection is available under s255 and s256 can be found at http://www.legislation.gov.uk/uksi/1989/1294/article/2/made, and for details of extensions of UK IP abroad more generally, see https://www.gov.uk/government/publications/ extension-of-uk-intellectual-property-rights-abroad

150

Part 1: UK Law

Designs First to market • As an example, a qualifying person may be authorised to market a US designed product within the UK, thereby obtaining a UK design right by virtue of s220 and s217.

• s220 CDPA can thus be useful for allowing a qualifying person, who commissions a design from a designer in a non-qualifying country, to obtain a design right.

• It will be appreciated that it is now also likely to become relevant for EU originating designs (for example by marketing through a UK subsidiary or franchisee).

Rights and Infringements s226 CDPA: Primary infringement of design right 1) The owner of a design right has the exclusive right to reproduce the design for commercial purposes by making articles to the design or making design documents for the purpose of making such articles.

2)4) Reproduction means copying the design to produce articles exactly or substantially according to the design. Copying can be direct or indirect and it is immaterial whether any intervening act constitutes an infringement.

3) Hence primary infringement of a design right occurs by acting to exactly or substantially copy the design to make articles or design documents (for the purpose of making such articles) for commercial purposes - or by authorising another to do so - without the license of the design right owner. : s227 CDPA: Secondary infringement: importing or dealing with infringing article 1) Secondary infringement of a design right occurs where, without a licence from the design right owner, a person a) imports into the UK for commercial purposes, b) keeps (in the UK) for commercial purposes, or c) sells, hires out, or offers for sale or hire, in the course of a business, an article that is, and they know or have reason to believe is, an ‘infringing article’. : s228 CDPA: Meaning of ‘infringing article’ 1)2) An infringing article is one made to a design and infringing a design right in that design (c.f. s226(3)), or…

3) a)b)… is one imported or proposed to be imported into the UK that would have been an infringing article if made in the UK, although…

5) …A UK exhaustion of rights applies for items sold with the proprietor’s consent within the EEA and then imported.

4) Where a design right has existed in a design at any time, there is a presumption that an article made to the design was made while the design right was in force (and hence is an infringing article) until proved otherwise.

Study Guide to the Patents Acts (2021 edition)

151

Designs 6) Design documents are not articles.

Legal Notes Infringement: • Note that infringement requires copying of the design (s226(2)).

• Note that there is effectively a reversal of burden of proof requiring a defendant to prove (if true!) that an article was not made while the design right was in force (s228(4)).

• Also note that it is possible to infringe a design right by authorising someone else to carry out the infringing act (for example by subcontracting an activity).

• The remedies available to the claimant (e.g. the owner or exclusive licensee) are similar to those in patents, and include damages, injunctions and orders to deliver up (see s229-231 CDPA).

• Whilst infringement requires copying of the design, it is nevertheless possible to innocently infringe; for example if a party commissions a designer who then secretly plagiarises a design, the commissioner may well be an innocent infringer of the design right in the plagiarised design. In this case the remedy of damages from that party is no longer available to the plaintiff (see s233 CDPA), though of course they may still be prevented from continued use of the design.

• Like s60(2) UKPA for patents, secondary infringement in s227 CDPA also comprises a ‘knowledge’ test that the relevant party knew or had reason to believe the article infringed.

• It is worth remembering, however, that unregistered design right is nevertheless a relatively weak right and vulnerable to trite variations that are not ‘exactly or substantially’ according to the design.

• Exceptions to infringement exist that are similar to those of patents, namely for private and non-commercial use, experiments, teaching (provided this is fair use and attribution is given), and use on, spare parts for, or repairs of non-UK ships or aircraft temporarily in the UK (see s244A and s244B CDPA).

Exhaustion of right: • S228(5) CDPA actually says that the extent of the exhaustion of rights depends on whatever gets thrashed out in the Brexit deal. The UK is acknowledging the exhaustion of rights for products put on the market in the EEA with the rights owner’s consent (as before), and so if with consent a product is put on (for example) the French market, then it can be subsequently imported into the UK where the design right is now exhausted. However, as of 31/12/20 this arrangement is no longer reciprocal. Therefore putting such a product on the market with consent in the UK does not exhaust the IP rights in the EEA, and export out of the UK into the EEA runs the risk of falling foul of a design right there. Note that rights that were exhausted before the IP completion date remain exhausted. See https://www.gov.uk/guidance/ exhaustion-of-ip-rights-and-parallel-trade and https://ec.europa.eu/info/sites/info/files/brexit_files/ info_site/exhaustion-ip-rights_en.pdf.

152

Part 1: UK Law

Designs Licences of right: • Much like patents, where a license as of right is available in the design (see s216 below and s237 CDPA) then an infringer can take a license during proceedings and thereby avoid an injunction or order to deliver up, whilst damages are limited to double the retroactive license fee for the duration of the infringement (s239).

Infringement and Copyright: • s236 CDPA avoids overlap between copyright and design right infringements. Where a work comprises both rights, it is deemed not an infringement of the design right to do something that is an infringement of the copyright. Note, however, that copyright in designs is itself curtailed by s51 and s53 CDPA (see Part 1.2.5 below).

Duration s216 CDPA: Duration of design right 1) A design right expires at the earliest of: a) 15 years from the end of the calendar year in which the design was first recorded or an article was first made according the design (whichever came first); or b) if an article made according the design is made available for sale or hire anywhere in the world within the first five years from the end of that calendar year, then up to ten years from the end of the calendar year in which that occurred.

Legal Notes General: • Thus the maximum period of 15 years is curtailed if the design is commercially exploited within the first five years anywhere in the world (with the blessing of the design right owner); though in the fifth year, the outcome is the same.

Licences of Right • In addition to the above expiry, in the last five years of a design right anyone may request a license as of right (see s237 CDPA). In a similar manner to patents, the terms of such a licence are preferably by agreement between the parties, but failing that are settled by the Comptroller. This therefore limits the remedies and damages available following infringement in the last five years of design right (see notes to s228 above).

• In addition, abusive licence terms in a licence agreement can be overturned and optionally licences of right issued by the Comptroller (see s238 CDPA).

• In a manner similar to (voluntary) licences of right in patents (s46(3)(c) UKPA), if such licences are available then under s239 CDPA an infringer can take one to avoid punitive judgements such as injunctions, delivery up, damages, etc.

Study Guide to the Patents Acts (2021 edition)

153

Designs

1.2.5 Community Unregistered Design • The Community unregistered design right (CUDR) is also substantially similar to the UK/ Community Registered Design (i.e. not the UK Unregistered Design above).

• Just note the following main exceptions where relevant: i. No registration (obviously). ii. It only lasts three years from first disclosure in the EU (i.e. no longer the UK). iii. No requirements for the proprietor to be a ‘qualifying person’ (see UK UDR below). iv. Copying is required in order to infringe. v. The designer retains the rights, so again assignment may well be necessary.

Brexit and unregistered rights: • As of 31/12/21 (‘IP completion day’) the UK is no longer covered by CUDR, and so designs created in the UK after this date no longer have access to an automatic and unregistered design right in Europe. Clearly this is likely to adversely affect UK SMEs that may have previously relied upon this free protection when trading in Europe.

• By contrast designs originally disclosed in the UK before this date will still be treated as having CUDR in the rest of Europe.

• For any designs created before IP completion day and protected by CUDR, like registered designs the UK is cloning the UK portion to create a corresponding ‘continuing unregistered design’ (see part 1.2.6 below).

• Meanwhile, because the existing UK unregistered design right has a different scope of protection to the CUDR, the UK is also creating a new unregistered design right that mimics the CUDR for designs first made public in the UK after IP completion day, called the supplementary unregistered design (see part 1.2.7 below); this runs in parallel to the UK‘s existing unregistered design right, and came into effect on 1/1/21.

1.2.6 Continuing Unregistered Design General: • The continuing unregistered design right is intended to ensure that all Community unregistered design rights which are in force on IP completion day will continue to be protected and enforceable in the UK for the remaining period of protection of the right.

• Consequently, subject to any specific details in an exam question, any analysis or conclusions you draw relating to the Community unregistered design right should also be applicable to the continuing unregistered design right for the specific case of the UK (or vice-versa).

154

Part 1: UK Law

Designs

1.2.7 Supplementary Unregistered Design General: • The supplementary unregistered design right is a new unregistered design right in the UK as of 01/01/21, and mirrors the Community unregistered design right outlined in part 1.2.5 above.

• This takes account of the fact that the existing UK unregistered design right has different protections to the community unregistered design; hence to ensure that designs first disclosed in the UK on or after 01/01/21 are not worse off than before (in the UK at least), both forms of unregistered right will exist in parallel.

• Note that the supplementary unregistered design right does not confer any protection in Europe, and designs first disclosed in the UK will now be treated like those from any other third country for the purposes of community unregistered design.

1.2.8 Hague Agreement General: • The Hague Agreement Concerning the International Registration of Industrial Designs (HA) as updated by the Geneva Act of 1999 (GA) provides a common minimum level of registered design protection for contracting states (Art 2 GA), available to any person who is a national, or resident, or has a commercial establishment in the territory of a contracting state (Art 3 GA).

• Applications are filed either at the WIPO International Bureau (IB) or a state’s IP office (a transmittal fee may apply) (Art 4 GA). The application includes a request for international registration and identification of the applicant, a designation of states for protection, and then suitable reproductions of the intended design(s), together with the appropriate fees. Some national offices may also require identification of the creator and/or a description of the design (Art 5 GA). Errors in an application can be corrected upon invitation (Art 8 GA), which can result in the filing date being delayed until the correction has been filed (Art 9(3) GA).

• The application can claim priority (as per Art 4 PC) from one or more earlier applications filed in any contracting or WTO state. The application can also act as a priority document if it is the first filing of the subject matter (Art 6 GA).

• The fees include a basic fee, publication fee, and designation fees (Art 7 GA). The fees vary with the number of designs in the application.

• The application is registered on the filing date (whether or not publication is deferred), noting that an irregularity can delays this filing date (Art 10 GA). It is published by the IB and if deferment is requested, it is published at the end of the shortest deferment period amongst the designated states; if a designated state does not permit deferment the request is disregarded, unless the designation of that state is withdrawn. The applicant can also change their mind and request earlier publication during the deferment period (Art 11 GA).

• A contracting state can refuse some or all of an application if it does not meet the (additional) requirements of their own laws, providing those requirements do not contradict those of the Hague Agreement itself (Art 12 GA). In particular, if a designated state requires unity of a

Study Guide to the Patents Acts (2021 edition)

155

Designs

•

•

•

•

design in a single application, this will not prevent an applicant filing two or more designs in a single international application, but the unity issue can be subsequently resolved at the national phase according to the law of that state. Where this requires filing a divisional application, the national office can charge further application fees (Art 13 GA).

Upon registration an international application shall have at least the same effect in each designated state as a regularly filed application in that state. Unless refused under national law, the resulting granted industrial design shall similarly have the same effect as a regular granted design (Art 14 GA). In particular, any invalidity proceedings must afford the rights holder the opportunity to defend their rights (Art 15 GA).

The IB maintains a register to record changes of ownership, address, and representation, and to the status of the right in each of the designated states (Art 16 GA). Any person may request information from the register (at a fee) for any published international registration (Art 18 GA).

The granted registered design right has an initial term of five years from the date of registration, renewable in five-year increments up to at least 15 years, and longer if allowed in a contracting state for regular registered design rights (Art 17 GA).

Note that an international application can give rise to a community registered design.

Following Brexit, the UK component of such a registered design will be cloned as a ‘reregistered international design’. See section 1.2.3 above for more details.

1.2.9 Copyright Copyright per se is no longer on the syllabus, except with regard to its interactions with design as laid out in sections 51 and 53 CDPA below. s51 CDPA: Design documents and models 1) It is not an infringement of copyright in a design document or other record of the design to make an article according to the design or copy such an article, unless it is an artistic work or typeface…

2) … nor is it an infringement to show or provide such articles to the public.

3) Herein, a ‘design’ relates to the shape or configuration (internal or external) of the whole or part of an article, except surface decoration, and ‘design document’ means any record of a design in any format. s52 CDPA [Repealed] s53 CDPA: Things done in reliance on registration of design 1) Copyright in an artistic work is not infringed by anything done a) relating to an assignment or licence of a corresponding UK registered design (or, now, UK re-registered design), and

156

Part 1: UK Law

Designs b) based in good faith upon the exploitation of the registered design.

2)3) A ‘corresponding design’ herein means one that would produce something that would otherwise be treated as a copy of the artistic work. : Legal Notes General: • Copyright exists in literary, dramatic, musical, and artistic works – Therefore a work that is ostensibly one of these uses copyright.

• A drawing that is subsequently used for a design has literal copyright protection, e.g. for photocopying, but copyright cannot be enforced past the limits of s51 and s53 CDPA. Sections 51and 53: • s51 CDPA stipulates that one does not infringe copyright in a design (shape or configuration etc.) by industrially exploiting an article according to the design or copying that article, unless the article is an artistic work. An artistic work is defined in s4 CDPA, inter alia, as one of ‘artistic craftsmanship’, which in turn may be indicated by a conscious intention to produce a work of art, a real artistic or aesthetic quality, and a sufficient degree of craftsmanship and artistry (George Hensher Ltd v Restawile Upholstery [1976] AC 64).

• Before 28 July 2016, even if a work was an artistic work then s52 CDPA stipulated that industrial exploitation of it (having 50 or more articles made and marketed) by/for the owner resulted in the copyright in the shape and configuration of the work (i.e. the design inherent in it) being limited to 25 years, since it was being treated like an industrial design.

However, s52 was repealed in 2016 via the Enterprise and Regulatory Reform Act 2013.

• As a result, protection for such products increased from 25 years to life plus 70 years. This meant that many industrially exploited artistic works more than 25 years old suddenly reacquired copyright protection. Existing copies/replicas of such works that did not infringe due to s52(2) CDPA will not retroactively become liable for copyright infringement per se (though see below), but any new copies made or imported after 28 July 2016 could be liable if copyright in the original work still subsists.

• Previously allowable stocks of copied / replica works that have re-gained copyright must have been sold or destroyed before the end of the transition period of 28 January 2017 and cannot be dealt in commercially after that, unless permission is obtained from the copyright holder. However, simple possession of such items (e.g. at home) is not a breach of copyright.

• Section 53 CDPA provides that one does not infringe the copyright in an artistic work when dealing in or exploiting a UK registered (or, now, re-registered) design corresponding to the artistic work.

Study Guide to the Patents Acts (2021 edition)

157

Designs

1.2.10 Trade marks • Finally, don’t forget that a trade mark depicting an object can also be a useful protection that is not subject to disclosure or grace period restrictions, though it is important that the features relied upon do not derive from a technical function. Contrast Lego Juris A/S v OHIM, case C-48/09 P, where Lego’s proposed trade mark was considered to perpetuate an effective design right in an object shaped by technical considerations (a 2x4 Lego brick), with the recent decision of Lego A/S v EUIPO, case T‑515/19, where the item of Lego had a characteristic arrangement of studs and blank spaces that meant the overall appearance of the object was not considered to be solely dictated by technical function.

• Also note that, like community registered designs, the UK is no longer party to EU registered trade marks, but has re-registered the UK portion of such existing rights.

158

Part 1: UK Law

Part 2 Overseas Law 2.1 Paris Convention............................ 161 2.2 European Patent Convention....... 162 2.3 Patent Co-operation Treaty .......... 177 2.4 United States................................ 182 2.5 Japan............................................. 193

Study Guide to the Patents Acts (2021 edition)

159

Paris Convention •

2.1 Paris Convention The most important part of the Paris Convention for the purposes of FD1 is Article 4, which lays out the minimum requirements for recognising priority amongst Paris Convention states, and hence PCT, EP and UK priority claims. The relevant parts are:

Article 4

Right of Priority

A(1)(2) Anyone can claim priority from their regular national filing in a convention state of a patent, utility model, industrial design or trade mark.

(3) A ‘regular national filing’ means a filing sufficient to obtain a filing date, irrespective of what then happens to that application.

B A subsequent filing claiming the priority will not be invalidated by any intervening publication, exploitation or other act that might otherwise do so.

C(1)(2) Patents and utility models can claim 12 months priority, and industrial designs and trade marks can claim six months, each from the date of filing of the first application.

(3) The above periods extend to the next working day if the relevant filing office is not open.

(4) A subsequent national filing for the same matter can be treated as the first application if: – it is filed in the same country as the previous application, and – the previous application is withdrawn / abandoned / refused…

– without publication, – leaving no rights outstanding, – without itself having served as a basis of priority, and – before the subsequent filing;

and the previous application may not subsequently also be used as a basis of priority.

D(1) To obtain priority, you must make a declaration stating the date of filing of the first application and the country it was made in.

(3) You may then be required to supply a certified copy of the first application (and a translation if needed) within three months.

E(1)(2) You can file a patent claiming priority from a utility model within 12 months, and vice versa. However, if you file an industrial design claiming priority from a utility model, you only get the industrial design’s six-month priority period.

F Multiple priorities are allowed.

G Divisional applications inherit their parent’s priority date.

H Priority is based on the first application as a whole, not just on its claims.

Study Guide to the Patents Acts (2021 edition)

161

European Patent Convention · Article 2-52

2.2 European Patent Convention Generally, the articles of the EPC found in the FD1 syllabus are substantively similar to the corresponding parts of the UKPA. Consequently, this section heavily summarises those parts of the EPC and concentrates on highlighting significant differences. EPC procedural timelines can be found in Part 4. The Unitary Patent and UPC are not on the syllabus.

Article 2 The European Patent • European patents are treated as national patents in contracting states if the appropriate procedures are adhered to for a given state.

– See https://www.epo.org/about-us/foundation/member-states.html for a current list of contracting states.

Articles 52-57 EPC are substantively similar to sections 1 to 4A UKPA above:

Article 52 Patentability 1) A patent will be granted for an invention that is new, inventive and industrially applicable, in any field of technology, except…

2) … for the same exclusions as s1(2) UKPA… 3) … as such.

Legal Notes Interpretation of ‘as such’: • A52 is basically the same as s1 UKPA, but is not subject to the same interpretation (i.e., Aerotel / Macrossan). The enlarged board of appeal in G5/83 determined that the exclusions of A52(2) should be treated very narrowly. However, the exclusions are still considered when determining inventive step. In practice, therefore, a similar result is achieved to that in the UK, but using a different logic: – As an example, a business method claim is implemented using a conventional computer.

– Under the UK interpretation, the actual contribution (Aerotel / Macrossan test step ii) is a business method and so is not patentable.

– Under the EP interpretation, the claim has a technical aspect (the computer) and is thus not a business method as such and so is patentable under the EPO’s narrow exclusions.

However, upon consideration of inventive step, the computer by itself is not inventive once the business method as such is discounted from consideration.

– The EP interpretation thus appears to be a more logical, step-by-step version of the UK interpretation and explicitly requires a consideration of inventive step, which is only implicit in determining the contribution in the UK test. As such it is arguably more transparent and less open to error.

162

Part 2: Overseas Law

European Patent Convention · Article 53-55

Article 53

Other exclusions

1) Immoral or contrary to public order (= s1(4) UKPA).

2) Plant / animal varieties and their production (= UKPA schedules).

3) Methods of treatment of the human or animal body (= s4A UKPA).

Article 54

Novelty

1) An invention is new if it does not form part of the state of the art.

2) The state of the art is all matter (including a product, a process or any publication) made available to the public at any time before the priority date of the application.

3) The state of the art (for the purposes of novelty only) also comprises matter from a European patent application having a priority date earlier than the priority date of the invention’s application, but published on or after the priority date of the invention’s application, (if the published matter was also there when originally filed).

4)5) Medical use of a substance and specific second medical uses of that substance are new if the use is new.

Legal Notes • Subsections 1 to 3 are effectively identical to those of s2 UKPA. • Note A54(3) only applies to EP applications; for example, whilst a German originating EP application with suitable priority and publication dates would be citable under A54(3), an otherwise identical German national application would not fall under A54(3) – but would count as a national prior right for an eventual validation of the patent in Germany under German patent law. The equivalent UK provision is s77. (In this case specific amendments for that state could be made under A118 & R138 EPC.) • Subsections 4 and 5 above are as subsections 3 and 4 of s4A UKPA. Following decision G02/08, the scope of ‘new use’ can include the same medicament for a different treatment of the same illness (as opposed to requiring a different illness), such as a change in dosage regime. The decision also ended the use of so-called Swiss-claims. The current form of claim for second medical use is simply ‘Substance X for use in the treatment of disease Y’.

• A54(3) applies to the publication of an EP application for all contracting states. For applications filed before 13/12/2007, the old versions of A54(3) and (4) applied in which specific states were designated, and hence required a consideration of ‘overlapping states’ when assessing novelty. However, this scenario is now very unlikely.

Article 55

Non-prejudicial disclosure

• Basically the same as s2(4) UKPA, but of course the filing within six months of breach is with the EPO.

Study Guide to the Patents Acts (2021 edition)

163

European Patent Convention · Article 56-59

Article 56

Inventive Step

• As s3 UKPA, but of course excluding A54(3) EPC instead of s2(3) UKPA. Legal Notes • The determination of inventive step under EP practice uses the problem-solution approach: i. Determine the closest prior art. ii. Determine what features differ from those of the prior art. iii. Determine the technical effect(s) of those features. iv. Derive an objective technical problem solved by the effect(s). v. Given the closest prior art and the objective technical problem, determine whether the person skilled in the art would have arrived at the invention – where appropriate taking account of common general knowledge or any second piece of prior art (which for example may disclose some of the outstanding features) when looking for a solution to the problem – and hence consider the invention obvious. See G-VII.5 of the EPO Guidelines for more details.

• The closest prior art generally is in a similar field, has a similar goal and has similar technical features, in roughly that order of significance.

• The objective problem should not use knowledge of, or contain pointers to, the solution recited by the claim. This is the tricky bit.

• The intent is to provide a consistent method of evaluation and to reduce instances of hindsight when determining whether a claim is obvious in light of prior art. It also has the effect of making such instances easier to spot when they occur.

Article 57

Industrial Applicability

• As s4 UKPA. Articles 58-62 EPC cover who is allowed to apply for and receive patents:

Article 58

Who May Apply

• Anyone who is considered a natural or legal person. Same as s7(1) UKPA.

Article 59

Multiple Applicants

• An application can be filed either by joint applicants or by two or more applicants each designating different contracting states.

164

Part 2: Overseas Law

European Patent Convention · Article 60-61 Legal Notes • In either case the applicants are treated as joint applicants and procedurally are treated as one applicant (A59 and A118 EPC). The application itself is processed as a single entity (though one can amend for different states in anticipation of national prior rights).

Article 60

Who has a Right to a Patent

1) The inventor(s), or (according to national law in the state of employment) preferably their employer – i.e., same as s7(2) UKPA. 2) Where two people independently make the same invention, the right will belong to the first to file it, provided this filing gets published (hence s2(3) UKPA, and A54(3) EPC). :

Article 61

Entitlement Proceedings

1) Where entitlement to an EP application is decided by national law (i.e., s12 UKPA), then the newly entitled person can either: a) take over prosecution of the existing application, b) file their own version (treated as a divisional re the filing date, etc), or c) request that the existing application is refused. : Legal Notes • The equivalent provisions in the UKPA are s8(2)(a), s8(3) and s8(2)(c).

• Once a person proves to the EPO that they have begun entitlement proceedings in a national court, the EPO stays (pauses) prosecution of the patent application (R14(1) EPC) and also limits the ability of the current applicant to withdraw the EP patent application or designations (R15 EPC). Note that during this time, renewal fees are not paused (R14(4) EPC) and should still be paid. Anyone can pay renewal fees.

• Providing the EP application has not yet granted, the entitled person has three months from the national law decision to make a request under Art 61 (R14(2) & R16(1) EPC). If this deadline is missed, further processing is not available (R135(2) EPC).

• The outcome of the action under Art 61 only applies to designated states that recognise the original national law decision (R16(2) EPC).

• If the entitled person chooses to file a new version of the application under A61(1)(b), then the original application is deemed withdrawn on the date of filing the new application in those designated states recognising the original national law decision (R17(1)EPC). The new filing cannot extend the subject matter of the original application (A76(1) & A61(2) EPC).

Study Guide to the Patents Acts (2021 edition)

165

European Patent Convention · Article 62-69 • The entitled person then needs to pay the filing fee and search fee within one month of filing (R17(2)EPC). The designation (and exam) fees are paid as normal within six months of publication of the search report (R17(3)EPC).

Article 62

Mention of Inventor

• The inventor is entitled to be mentioned. Same as s13(1)UKPA. Legal Notes • Rule 19 EPC requires a separate designation of inventor where the applicant is not the inventor, as per Rule 10 UKPA. • The correction of inventors requires the consent of any wrongly designated inventor who is to be removed (Rule 21(1) EPC). Thus if X & Z are named inventors but Y, not Z, actually contributed, then Z’s consent is required to replace her with Y. Meanwhile X’s consent is not required as she was not wrongly designated. In the case where Y is simply a third inventor to be added, then neither X or Z’s consent is needed to add her. See R21 EPC.

Article 68

Effect of (Full or Partial) Revocation or Limitation

• In opposition, limitation, or revocation proceedings, the effects are fully retroactive and binding on all designated states.

Article 69

Extent of Protection

1) The extent of protection conferred by a European patent or application is determined by the claims; however, these are interpreted in light of the description and drawings.

2) Before grant [i.e., between publication and grant], the extent of protection is with respect to the published claims; after grant, the granted claims (or claims amended in opposition, central limitation, etc.) retroactively determine protection conferred by the application, provided they do not extend that protection.

Legal Notes • Art 69(1) thus provides provisional protection of a scope determined by the published claims. However, A69(2) modifies this by stating that the final protection that the proprietor can enforce retrospectively is that of the granted and settled claims – except where these are broader than the published claims (broadening amendments are possible before grant, providing they don’t add subject matter). Hence if the granted claims are narrower than the published claims, then third parties acting inside the scope of the published claims, but outside the scope of the granted claims, are not liable for any infringement during the period between publication and grant; Conversely, if the granted claims are broader than

166

Part 2: Overseas Law

European Patent Convention · Article 70-76 the published claims, then third parties acting outside the scope of the published claims, but inside the scope of the granted claims, are still not liable for any infringement during the period between publication and grant (though clearly for periods after grant, they are).

• See section 125 UKPA herein for commentary on the protocol on interpretation of Article 69 EPC in relation to the scope of protection and equivalents. Meanwhile, see s69 UKPA for similar provisions regarding the interaction between published and granted claims.

Article 70

The Authentic Text

1)2) … is that of the language (EN, FR or DE) that the application was originally filed in or translated into for prosecution to grant, but 3)4) national translations can be used in a contracting state subject to certain conditions (e.g. see s80 UKPA).

Article 71

Transfer and Constitution of Rights

A European patent application may be transferred or give rise to rights for one or more of the designated Contracting States.

Legal Notes • Whilst the EP application has unitary effect (A118), A71 recognises that interests in an application can be assigned (transferred) on a country-by-country basis (c.f. A59 above).

• Registration of a transfer can be requested by any party having an interest in the transfer, together with evidence of the transfer (R22(1) EPC) and the fee (R22(2)) of €105. The effective date of transfer is when the request, evidence and fee have all been received by the EPO (R22(3)).

• Registration of a transfer is also possible during the opposition period or during opposition proceedings (R85 EPC), and is required by the EPO in order to keep track of the valid parties.

Such post-grant transfers typically also require parallel registration in the validated states.

• Registration of licences is covered by A73, which also allows licencing to be geographically limited to parts of the territories of the designated contracting states; however, such registration does not continue into the opposition period as it is not relevant to these proceedings.

• Transfer of a Euro-PCT can also be recorded with the International Bureau during the international phase (up to 30 months from priority), although the IB does not maintain a register as such. If not submitted at the time, evidence may subsequently be requested by respective national or regional patent offices.

Article 76

European Divisional Applications

1) …are filed at the EPO (in accordance with Rule 36 below), and only in respect of subject matter that does not extend beyond the parent application as filed; the divisional then receives the priority date of the parent.

Study Guide to the Patents Acts (2021 edition)

167

European Patent Convention · Article 76-79 2) The divisional inherits the designated states of the parent as of the day of filing the divisional.

Rules R36 1) A divisional can be filed from any pending application.

2) The divisional must be filed in the same language of proceedings as the parent (translating within two months if necessary), and must be filed with the EPO. 3) The filing fee and search fee must be paid within one month of filing.

4) The designation (and exam) fees are paid as normal within six months of publication of the search report for the divisional.

Legal Notes General: • Note that filing a divisional of a divisional carries an additional fee (R38(4) EPC).

Meaning of ‘pending’ before the EPO: • An application is pending prior to the date that grant is mentioned in the official journal A97(3), or the date that it is withdrawn. If an application is refused, then G1/09 has clarified that for the purposes of filing a divisional, an application remains pending during the period for appealing a refusal (i.e., two months after receiving notification of a decision to refuse), regardless of whether an appeal is then filed or not.

Article 79

Designation of Contracting States

1) All states are designated by default, but…

2) … each designation is subject to confirmation by payment of a fee within six months of the publication of the search report (R39(1) EPC).

3) A designation can be withdrawn any time up to grant.

Legal Notes • The search report is usually part of the published ‘A’ spec, but not always. The main ‘A’ spec codes are: – A1 (Application + Search Report), A2 (Application only), and A3 (Search Report only).

• Since 1 April 2009, one pays a flat fee of (currently) €610 to designate all states, and payment of individual designation fees is not possible.

– Prior to 1 April 2009, one could pay designation fees for up to six specified states. If one paid seven fees, then all states were deemed paid.

– The decision whether or not to proceed with a state can be achieved pre-grant using A79(3) to withdraw a designation. Post-grant it is in principle more difficult to prevent

168

Part 2: Overseas Law

European Patent Convention · Article 93-94 any unwanted repercussions of grant (see for example s73(2) UKPA). Failing to validate in a state used to be an option, but following the London agreement on translations this is method is no longer practical for many states, including GB. • If you miss the six-month deadline to pay, the application is deemed withdrawn (R39(2) EPC). In this case, use further processing (A121 EPC) within two months of notification by the EPO of your loss of rights. Recall notification is deemed to occur up to ten days after the EPO posts / transmits the letter (R126 / R127 EPC – in effect ten days after the date of the notification in the letter).

Article 93

Publication of the European Patent Application

1)a)b) … is as soon as possible after 18 months from priority, but the applicant can request early publication. : Legal Notes • The UKPA equivalent is s16.

• An invalid publication may occur if an application is withdrawn or refused after preparations to publish have been finalised. However, whilst such invalid publication still makes the invention available to the public in the sense of s2(2) UKPA and A54(2) EPC, it does not count for novelty under s2(3) UKPA or A54(3) EPC (recall their purpose is just to prevent double patenting).

• Don’t confuse this with just withdrawing the GB designation prior to publication, as such publications still count for novelty in the UK (see s2(3) and s78(5A) above).

• A valid publication can of course be cited for novelty under A54(3) EPC, or similarly under s2(3) in the right circumstances (see notes to s2(3) for details).

Article 94

Request for Examination

1) The EPO will examine the application once if a request and fee are submitted.

2) If no request and fee are submitted within six months of the publication of the search report (R70(1)), then the application is deemed withdrawn.

3) If the Examiner thinks the application does not meet the requirements of the EPC, he will invite the applicant to fix the deficiencies or argue against them (as per s18(3) UKPA).

4) If the applicant does not respond in time (typically four months), the application is deemed withdrawn.

Rules Request for examination R70 1) The applicant may request examination up to six months after the publication date of the search report.

Study Guide to the Patents Acts (2021 edition)

169

European Patent Convention · Article 94 2) If the request for examination was filed before the publication of the search report, then the EPO gives the applicant up to six months after the publication date of the search report to indicate whether they wish to proceed with Examination, and if so, to respond to any issues raised in the search report opinion, and...

3) ...if the applicant fails to reply in time then the application is deemed withdrawn.

Response to the extended European search report (EESR) R70a 1) The EPO gives the applicant the opportunity to comment on the opinion in the EESR and where appropriate invites them to correct any deficiencies, up to six months after the publication date of the search report.

2) In the case given in R70(2) above, or where the EPO was ISA for a Euro-PCT application, the EPO again gives the applicant the opportunity to comment on the opinion in the EESR and where appropriate invites them to correct any deficiencies, up to six months after the publication date of the search report.

3) If the applicant does not comply with or comment on an invitation under subsections (1) or (2) above, the application is deemed withdrawn.

Legal Notes General: • The UKPA equivalent to A94 is s18. The search report is usually part of the published spec, but not always. See notes to A79 for common A-spec codes.

Deadlines: • If you miss the six-month deadline to request the examination under R70(1), use further processing (A121 EPC) within two months of notification by the EPO of your loss of rights.

Recall notification of the loss is deemed to occur ten days after the EPO posts the letter (R126 EPC – in practice, 10 days after the date of notification in the letter). In this specific case, the further processing fee is 50% of the Examination fee (i.e., around €850) – so don’t be late.

• If you miss the six-month deadline to indicate an intent to proceed to examination under R70(2), again use further processing within two months of notification (+ standard fee of €255). Note you can waive the right to confirm whether to proceed when filing the application.

• If you miss the six-month deadline to respond to an invitation to correct deficiencies under R70(2) or Rule70a(1) or (2), again use further processing with fee within two months of notification.

• Note therefore that if you miss a R70(2) communication, you will typically have to pay two further processing fees as it encompasses two separate actions.

• Amendment in response to an A94(3) communication cannot add matter; A123 EPC provides similar restrictions to s76 UKPA.

170

Part 2: Overseas Law

European Patent Convention · Article 97 Other invitations: • Note that separately, if the EPO was the international search or examination authority for a PCT application, then after its entry into the EP regional phase a communication issued under Rule 161(1) will require the applicant to respond to outstanding issues in the PCT search or patentability report within six months. See part 2.3 below for more details.

Practice notes • As a (cheaper) alternative to filing divisionals to accelerate prosecution (see notes to s61 in part 1.1 of the book), one can accelerate the examination process using the EPO PACE scheme. No reason (such as infringement) is required. However, if you then request any time extensions for your own responses, the PACE status is effectively dropped.

• A further alternative is to check whether use of the patent prosecution highway (PPH) is possible based upon a recently granted corresponding application, for example from the US or Japan. However, this needs to be requested before examination begins.

• Note that as of 1 November 2016, if you withdraw an application before the first exam report is issued under Art 94(3), you receive 100% of the exam fee back. Meanwhile if you withdraw the application before expiry of the deadline for reply to the first Art 94(3) report, you will receive 50% of the exam fee back.

Article 97

Grant or Refusal

1) The Examining Division will grant a suitable application if, within four months of the R71(3) EPC notification of intent to grant: – grant and printing fees are paid, and – the claims are translated into the other two EPO languages, and in addition dependent upon any of the following where necessary: – any outstanding additional claims fees are paid, – any due renewal fees are paid, and – any due designation fee(s) are paid (c.f. A79 notes).

2) The Examining Division will refuse an application that does not conform with the EPC. 3) The date of grant is the date that it is mentioned in the European Patent Bulletin.

Legal Notes • Basically, the notification of intent to grant issued by the Examining Division under R71(3) presents the applicant with the text the EPO intends to approve. By paying the grant and printing fees and translating the claims, the applicant is deemed to approve this text. The other fees may arise during the course of normal prosecution, but will need to be paid at grant where this occurs before any normal payment deadline ends.

• If one files amendments in response to the R71(3) communication, this is interpreted as disapproving the text and proposing an alternative. Prior to 1 April 2012, it was necessary

Study Guide to the Patents Acts (2021 edition)

171

European Patent Convention · Article 97-99 to also file a translation of the proposed amendments, so that if the EPO allowed them, then grant could proceed. After 1 April 2012, a new version of R71 and new R71a came into effect that firstly gave legal basis for the Examiner amendments often proposed in the R71(3) text, and secondly stipulated that if the applicant files amendments that are approved, a new R71(3) is issued. This then avoids the need to file translations of the amendments prior to approval.

• On the date of grant, then if validated in the UK the patent has the effect of a UK patent by virtue of A2(2) EPC, enacted by s77 UKPA. Practice notes • With regards to refusal under A97(2), the applicant has the right to be heard before the EPO (A113(1) and A116(1) EPC). Therefore, it is common practice to conditionally request oral proceedings in the event that the Examining Division intend to refuse the application.

This gives the applicant a further chance to fix the application in the eyes of the Examining Division.

Article 99

Opposition

1) Within nine months of grant, anyone can oppose an EP patent by filing a notice identifying the patent number and the applicant, including a statement of the grounds on which the opposition is based (see A100), and paying an opposition fee.

2) The opposition applies for all states in which the patent has effect.

3) The opponents and proprietor are both party to the proceedings (i.e., fully informed and able to make decisions, e.g. to appeal).

4) Where there are different proprietors for different states (for example under A59, or following entitlement proceedings) they can represent themselves separately in respect of those states.

Legal Notes • ‘Anyone’ does not include yourself (i.e., you cannot oppose your own patent) – but see Article 105a below for alternatives.

• The opponents are party to the opposition, as is a person who, in response to proceedings for infringement being instituted against them, intervenes in opposition proceedings to make observations under Article 105 EPC. By contrast a person who merely files third party observations under Article 115 EPC is not party to the opposition and is not specifically informed of the eventual decision (though of course this goes on public record), and more significantly cannot appeal it, whereas the parties to the opposition can (A107 EPC).

• As with other stages of prosecution, opposition proceedings are suspended if it is shown that third-party entitlement proceedings have begun in a national court (the third party can consent to its continuation, though).

172

Part 2: Overseas Law

European Patent Convention · Article 100-105b

Article 100

Grounds of Opposition

… are that: a) the claimed invention is not patentable under A52-57 above, b) the description is not sufficiently clear to enable reproduction of the claimed invention, or c) the patent contains added matter compared to the original filing.

Legal Notes • A100(b) is not the same as the A84 EPC requirement for clarity of the protection sought by the claims. Rather it refers to the compact between the state and the patentee to provide protection in return for proper disclosure of the invention. See also the notes to s14 UKPA. • Note that unity is not a ground for opposition, in a similar vein to s26 UKPA. • Note that entitlement is also not a ground for opposition, unlike for revocation under s72 UKPA. This is because entitlement is settled by national laws and so would contradict A99(2) EPC above that the opposition applies to all states.

• The well-known Article 123(2)-(3) trap may occur during opposition on the grounds of added subject matter; if a new feature is added to a claim during prosecution which limits the scope of the claim but is found during opposition to add matter (so contravening A123(2)), then the feature cannot be removed again since this would broaden the scope of a granted claim (so contravening A123(3)). There are only a few specific circumstances where this is a recoverable situation (e.g. see Visser, A123(3), and A123 below).

Article 105a Request for Central Revocation / Limitation 1) The proprietor of an EP patent can request central revocation, or limitation by amendment, of a granted patent upon payment of a fee…

2) … except during opposition proceedings.

Legal Notes • This provision enables a proprietor to centrally revoke or amend a patent, for example in light of newly discovered prior art, for all national patents arising from EP grant including an EP(GB).

• It is basically an administrative service intended to reduce costs for the proprietor.

• Opposition proceedings take precedence. If an opposition is filed during a limitation action, the limitation action is terminated and the fee is refunded.

Article 105b Revocation / Limitation 1) The EPO checks whether the requirements for revoking or limiting the application have been met.

Study Guide to the Patents Acts (2021 edition)

173

European Patent Convention · Article 105b-121 2) If the requirements are met then the EPO will proceed; otherwise it will refuse the request.

3) The limitation or revocation applies to all states in which the patent granted, with effect from publication in the EPO bulletin.

Legal Notes • Basically, a request for revocation is allowed.

• For limitation, the EPO assumes patentability and just checks that: – the amendment actually narrows the claims (A123(3)), – the resulting claim scope is clear under A84 EPC, and – the amendment does not add matter (A123(2)).

• It does not review any new prior art.

• If the limitation does not satisfy the Examiner, the proprietor is set a deadline to resubmit amendments.

• Upon limitation, the amended specification is republished by the EPO (Article 105c).

• Whilst the revocation or limitation take effect upon publication in the Bulletin, note that both revocation and limitation are fully retroactive (ab initio or ex tunc) – see A68 EPC. Note that this is different to the UK, where post-grant amendment is only retroactive to the date of grant (e.g. see s75 above).

Article 121

Further Processing

1) If an applicant misses a time limit relating to prosecution before the EPO, they may request further processing.

2) The EPO will grant the request provided that the particular time period is not excluded (see subsection 4); the fee is paid; and the omitted act is completed, within two months of notification of the loss of rights (R135(1) EPC).

3) If granted, the legal consequences of missing the time limit are deemed not to have occurred.

4) The following time limits are excluded from further processing: – the 12m priority period for filing; – the 2m for notification and 4m for grounds for appeal; – the 2m for petition to review an appeal; – the 2m for requesting further processing itself; – the period for re-establishment of rights (see Art 122 EPC below); and – the periods listed in Rule 135(2) EPC. Legal Notes • The exclusions (including those listed in R135(2) – see Visser or the EPC for details) are singled out for a number of reasons – some provide certainty for third parties, whilst some are excluded simply because other extensions of time are available. Typically, these other

174

Part 2: Overseas Law

European Patent Convention · Article 122-123 extensions themselves are then also excluded from further processing, such as for example the six-month grace period for late payment of renewal fees in R51(2) EPC.

Article 122

Re-establishment of Rights

1) If despite all due care an applicant misses a time limit relating to prosecution before the EPO, and this directly leads to loss of rights in the patent application, then they may request to have their rights re-established.

2) The EPO will grant such a request provided that the particular time period is not excluded (see subsection 4); the fee is paid; and the omitted act is completed, within two months of the removal of the cause of non-compliance and within 12 months of the missed time limit.

3) If granted, the legal consequences of missing the time limit are deemed not to have occurred.

4) The following time limits are excluded from re-establishment: – the time limit for re-establishment itself; – failure to attend oral proceedings; – the periods listed in Rule 136(3) EPC. 5) A person (in a designated state) who in good faith begins or makes serious and effective preparations to begin using the invention within the period between the loss of rights and publication of the re-establishment of those rights may continue to do so.

6) Contracting states may provide their own re-establishment for non-observance of EPC time limits relating to prosecution before the respective national office.

Legal Notes • The all due care requirement typically requires proof of a one-off error in an otherwise properly working reminder system, or an instance of force majeure; lack of care can arise from both the applicant and their representatives.

• A time limit within the sense of Art 122 (and indeed Art 121) is a convention or EPO stipulated period for completing a procedural act. Consequently, failing to complete acts which the applicant can choose to do within another period of time (such as filing a divisional whilst the patent is pending) are not regarded as missed time limits in this sense and cannot make use of re-establishment.

• Subsection 5 provides third-party rights in a similar manner to s20B(4) UKPA. • Subsection 6 accounts for the fact that subsection 1 relates to the EPO, but there are provisions in the EPC for national offices too, such as a request for conversion to a national application under Art 135(2) when a national office refuses to forward a filing to the EPO for national security reasons.

Article 123

Amendments

1) A European patent application can be amended after receipt of the search report (R137 EPC), (e.g. in response to the European search report – R70a EPC, or to the international

Study Guide to the Patents Acts (2021 edition)

175

European Patent Convention · Article 123 search report where the EPO was ISA – R161 EPC); in any event, the applicant is also entitled at the same time to one amendment of their own volition.

2) Neither the application nor the patent may be amended in such a way that it contains subject matter that extends the content of the application as filed (c.f. s76(2) UKPA).

3) The patent may not be amended in such a way as to extend the protection it confers (c.f. s76(3) UKPA).

Legal Notes General: • Whilst one cannot amend the application before receipt of the search report, there are specific provisions to file missing subject matter before this (R56, 58), and to correct obvious errors.

See s15(5-8) and R18 UKPA for the equivalent UK provisions.

Added matter: • For the purposes of subsection (2), note that the abstract is not part of the application, and neither are the contents of any priority document – see the tables at the end of this book for more details of permissible amendments.

• Amendments should be directly and unambiguously derivable from the content of the application as filed.

Article 123(2)-(3) trap: – This trap occurs when the scope of a claim is narrowed by an amendment that uses added subject matter (impermissible under Art 123(2)) but is then granted, since undoing this amendment after grant would then broaden the claims (impermissible under Art 123(3)); the result is an intractably invalid patent.

• There are a limited set of circumstances in which you can escape this trap (EBA decision G1/93): – replacing the amendment with a more narrow but supported feature; – where the term does not actually limit the scope of the claim (e.g. a term has a labelling function but not a technical one within the claim – i.e., not one that influences the technical solution to the technical problem – T384/91)); and – in certain circumstances, a disclaimer that limits the scope of protection by excluding from protection part of the subject matter as filed – see Visser for more details.

• It is worth noting that there is a similar trap between s76(2) and (3) in the equivalent UKPA provisions.

176

Part 2: Overseas Law

Patent Co-operation Treaty

2.3 Patent Co-operation Treaty The main sections relating to the PCT in the UK are covered by s89, 89A & 89B and s79 of the UKPA. Some additional aspects relevant to FD1 are outlined below, and timelines are provided in Part 4. For a more complete summary, consider the section on the PCT in Visser.

Terminology • The receiving Office (rO) – Any national or regional office competent to receive a PCT filing (A10, R19 PCT) – which includes the UKIPO and EPO. If an rO receives a PCT application in a language it is not competent to process, it will forward it to the IB (see below).

• International Bureau (IB) – Central WIPO office. Can also act as the rO for any application.

• International Search Authority (ISA) – A national or regional office competent to search an international application (A16, R35 PCT) and generate an international search report (ISR), subject to language restrictions.

• International Preliminary Examining Authority (IPEA) – a national or regional office competent to examine an international application (A32, R59 PCT) and generate an international preliminary examination report (IPER).

• The designated Office (dO) – The national or regional patent office of a designated state or region (used for Chapter I national/regional phase entry).

• The elected Office (eO) – The national or regional patent office of a state effectively redesignated upon entry into the Chapter II phase.

Basic procedure • The basic PCT procedure is outlined in the timelines of Part 4.

Representation • Since different entities are responsible for different stages of the PCT process, different agents may be used before each entity (R90.1 PCT). Typically, however, GB and EP qualifications cover the relevant rO, ISA, and IPEA (UKIPO and EPO) for UK originating inventions. An agent is appointed by (each) applicant signing the request or the demand and a power of attorney (R90.4 PCT). Such a power can be specific to a case or general (R90.5 PCT). Some authorities waive the need for such powers, but not if the agent intends to withdraw an application (R90.4(e) PCT).

• For joint applicants, one of the applicants who is entitled to file a PCT application can be nominated by the others as their common representative (to be entitled, one must be a resident or national of a PCT contracting state). If there is no explicit nomination, then the first listed applicant so entitled is treated as such (R90.2 PCT). The common representative can act for the applicants in all respects except that they cannot withdraw an application on

Study Guide to the Patents Acts (2021 edition)

177

Patent Co-operation Treaty behalf of the all the applicants; rather, the signature of all the applicants is required (R90.3 PCT and R90bis5 PCT).

Prosecution • See the PCT application timeline at section 4.3 of this book for details of prosecution.

• Note that replying to the international search report is optional. Similarly, demanding an international preliminary examination report (a ‘Chapter II demand’) is also optional.

Entry into national phase There are two standard points of entry into national phase: i) Chapter I National Phase (A22 PCT) – Occurs where no demand for examination is filed. Can wait until 30 months (US, JP) or 31 months (EP, UK) from priority, or can request to enter national phase early (A23(2) PCT). ii) Chapter II National Phase (A39 PCT) – If a Demand (A31 PCT) is filed within the later of 22 months of priority or three months from transmission of the ISR (R54bis.1 PCT), the application enters ‘Chapter II’ (substantive examination). Again, can wait 30 months (US, JP) or 31 months (EP, UK) from priority to enter the national phase, or can request to enter national phase early (A40(2) PCT). However, in this case if you enter the national phase early you might waste your exam fee, depending on when the examination starts.

Selection of acts required upon or soon after entry into national phases i. Provide a copy of the international application (usually done by IB), including amendments made during international phase. ii. Provide any necessary translation of the international application (and any amendments made during PCT prosecution), and in UK pay £12 to publish translation, typically within two months of entry. iii. Pay a filing fee (in the UK use Form NP1 and pay £30). iv. Pay designation fees if applicable (e.g. for EP regional phase). v. Pay supplementary search fee if required. vi. Pay exam fee (due on entry or possibly if early by six months from publication of ISR for EP, or from publication of application for UK). vii. In the US, file an inventor declaration and if relevant an assignment to the proprietor; the USPTO will invite you to file missing parts if this is not done on entry to the US. viii. Appoint representative, and provide an address for service. ix. Amend upon entry into national phase if desired. x. For EP, can opt to pay renewal fee for third year (only) up to six months early and hence at national phase entry -R51(1).

178

Part 2: Overseas Law

Patent Co-operation Treaty • See R159(1) EPC and s89A/B UKPA for corresponding national provisions.

• Rule R161 EPC requires that if the EPO was the ISA or IPEA, then after entry into the EP phase the applicant must respond within six months of notification to an invitation under R161 to correct any deficiencies in the later of the ISA or IPER written opinion, or else the application is deemed withdrawn. The purpose of the rule is to avoid a repetition of the ISA / IPER objections in the first EPO examination report, and so streamline prosecution.

Early national phase entry • As noted above, early entry for any particular designated/elected state/region can be requested at any point.

• The most common reason is to secure rapid grant in order to bring infringement proceedings in one or more states.

• Note that the national or regional patent office won’t begin to actually process the application early unless an explicit request is made under A23(2) PCT (for Chapter I cases) or A40(2) PCT (for Chapter II cases).

Late national phase entry A common situation in FD1 is that someone forgot or was unable to enter the national phase, or wishes to delay it for financial reasons. Options to achieve this include: i) During international phase (<30 months from priority) – As a last resort, abandon the earliest priority claim. All PCT dates are shifted back to the new priority date (R26bis.1(c) PCT). This can buy up to a year, but carries the severe risk of intervening publications having occurred during the lost priority period. ii) In national phase (>30 or 31 months) – For US and EP: the PCT allows for re-establishment of rights within two months of the removal of the cause of a non-compliance but no later than 12 months from the deadline for completing the act (30/31 +12 months from priority), if you can prove the deadline was missed unintentionally (R49.6 PCT) – for the EP see also A122 (reestablishment).

– GB and JP have registered an incompatibility with this right.

– For US: The application is treated as a lapsed national filing, so one can file a petition to revive (with fee) if can show it was unavoidable or unintentional to miss the deadline, and can file a continuation (35 USC 371, 37 CFR 1.137).

– For EP: Can use further processing (with fee) within two months of communication of loss of rights (A121 EPC). In light of R49.6 PCT mentioned above, this appears applicable to a failure in any aspect of regional phase entry.

– For GB: Can delay national phase entry as of right by two months using R108(2) UKPA, and further with the comptroller’s discretion under R108(3). In addition, reinstatement is possible if it can be proved that failure was unintentional.

Study Guide to the Patents Acts (2021 edition)

179

Patent Co-operation Treaty Late PCT filing • In order to validly claim priority of an earlier application, a PCT application must always be filed within the priority period (i.e., 12 months from priority date).

• However, if the application is filed within two months of that period (i.e., 14 months from priority), the priority claim will not be considered void for the purposes of the international phase only, whether or not any steps are taken to restore the priority right.

• Any request to restore the priority right must be made within that same two months following the priority period, and requires a fee and evidence that the delay was either in spite of due care, or unintentional – depending on which receiving Office you file at. The EPO requires due care; the UKIPO accepts the lower bar of unintentional (c.f. s5(2C) UKPA for the analogous domestic provision). Meanwhile a deliberate delay beyond 12 months is unlikely to be salvageable.

– Note, however, that most designated states will then apply national criteria before recognising the restoration of the priority right. Hence for example if the UKIPO as rO accepts an ‘unintentional’ delay, this may be similarly accepted in the US national phase; but the priority right is likely to be lost in the corresponding EP and JP national phases as these require the higher standard of all due care.

• For the PCT(UK) national phase, a late declaration as per s5(2B) can also be made within one month of the beginning of the national phase (R66(3)).

Correction of errors • Rule 91 PCT allows for the correction of obvious mistakes, providing that the request for correction is sent to the relevant competent authority. Mistakes in the original application request should be sent to the rO. Mistakes in the description, claims or drawings during Chapter I should be sent to the ISA, or during Chapter II to the IPEA – R91(1)(b) PCT. • The mistake should be clear and should leave no doubt what the proper correction should be (R91.1(c)). Consequently, the omission of whole sections of the application (pages, figures, claims, etc) are not correctable in this manner (R91.1(g)). Rule 91 also can’t be used to rectify mistakes in the abstract or to the priority date (priority corrections use R26bis.2).

• The correction should be requested within 26 months from priority (R91.2 PCT).

Review & Excuse Procedure • The international phase can be terminated if the international application is refused or considered withdrawn, in which case national phase entry under A22 or A39 PCT no longer applies.

• However, the PCT gives designated / elective offices discretion to allow a corresponding national application.

• Where the applicant believes the PCT terminated the application in error, they can enter the national phase within two months of notification (note no ten-day rule!) under A25(1)&(2)

180

Part 2: Overseas Law

Patent Co-operation Treaty PCT, and the designated offices will each determine whether they agree with the PCT’s termination.

• Where the cause was the applicant’s error, in particular failing a time limit, then under A24(2) and A48(2) PCT the designated office will apply any safeguards available under their own national law to excuse the error and allow a national application.

• The corresponding national provisions are R159(2) EPC and s89 UKPA. Withdrawal • You can withdraw the application, priority claim(s) or designations by writing to the rO, IB or if applicable the IPEA, and can withdraw the demand and any elections by writing to the IB or IPEA, during the 30-month international period (R90bis PCT).

• If the application or a designation are withdrawn before publication preparations are complete, then they won’t be published (R90bis.1(c) & .2(e) PCT).

– Note that withdrawal of a PCT application, priority or designation requires the signature of all applicants, not just that of a common representative (R90bis.5 PCT). For the US, where the inventor (e.g. an employee) is often an applicant but may later be untraceable, proof of a diligent attempt to locate them can be provided in lieu of a signature.

– Also note that withdrawal of a PCT application does not affect any national/regional application having already arisen from an effective request for early national phase entry (R90bis.6(a)); these must be dealt with separately.

• If a priority claim is withdrawn, then all dates are recomputed with respect to the new effective priority date (R90bis.3(d) PCT), except for publication if the priority claim is withdrawn after preparations to publish are complete (R90bis.3(e) PCT).

Study Guide to the Patents Acts (2021 edition)

181

United States

2.4 United States On 16 March 2013, the US moved from a first-to-invent system to a first-inventor-to-file system in accordance with the America Invents Act (AIA). The transitional provisions mean that applications having a priority date earlier than 16 March 2013 will normally still operate under the old first-to-invent principle. As a result both systems are likely to be relevant for some years to come. However, this study guide now assumes that the post-AIA system is the norm.

At the time of writing the 2021 syllabus is unavailable, but is unlikely to change substantially from the 2020 syllabus. The 2020 syllabus requires knowledge of 35 USC 101-103, 112 and 119-121, and these are each discussed below before briefly discussing the old pre-AIA system where appropriate. For reference and comparison, a listing of the new and old legal provisions can be found together at https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html.

35 USC 101

Patentable Inventions

The inventor or discoverer of any new and useful process, machine, manufacture or composition of matter or any new and useful improvement to any of these can have a patent to it, providing the following conditions are met.

Legal Notes General • The US Manual of patent examining procedure (MPEP) section 2104 notes that there are four implicit requirements arising from 35 USC 101: – Double patenting is prohibited – ‘a patent’; – The inventor must be identified (and had to be the applicant before 16/03/13); – The subject matter must be eligible – within the listed categories, and not directed to a judicial exception; – The invention must have utility – ‘useful’.

See https://www.uspto.gov/web/offices/pac/mpep/s2104.html for more details.

• Regarding judicial exceptions, there is no explicit list of exclusions in 35 USC 101, although as noted above it does specify patentable categories. Consequently, the US system has, at least in principle, fewer patentability exceptions and may be considered an alternative to EP/UK filings for some subject matter. However, a number of exceptions do exist, and are established through case law (hence ‘judicial’ exceptions).

– Within case law, the historical principle that ‘everything under the sun made by man’ could be patented (Diamond v Chakrabarty 447 U.S. 303 (1980)) has been narrowed significantly over recent years by successive Supreme Court decisions, and in particular Alice Corp. v. CLS Bank 134 S.Ct. 2347. As a result, the historic assumption that, compared

182

Part 2: Overseas Law

United States with UK and EP law and practice, certain subject matters such as business methods were more easily patentable in the US can no longer be made without qualification.

– Regarding US method/process claims, the so-called ‘machine or transformation test’ has been used to greater or lesser degrees to determine patent-eligibility. The test ties a process to a particular machine or apparatus or requires that it transforms something into a different state or thing. However, the Supreme Court subsequently decided in In re Bilski that the test is not the sole criterion for determining the patent-eligibility of process claims in the US, but it nevertheless remains an important indicator.

– See https://www.uspto.gov/web/offices/pac/mpep/s2106.html for (a lot) more details.

– The fluidity of US case law on patentability might militate against patentability being the focus of a question in FD1, though of course this cannot be guaranteed.

35 USC 102 Conditions for patentability First Inventor to File: Introduction • The original US system was a first to invent system, effectively created by old 35 USC 102 (a), which stated that an applicant could have the patent unless it was known or published before being invented by the applicant.

• The new First Inventor to File (FITF) system introduced by the AIA has been created by re-writing this definition of novelty in 35 USC 102.

• The new §102(a) provides a novelty system similar to the first-to-file system found in the rest of the world. However, §102(b) then introduces exclusions to that system which provide some limited grace periods to the inventor, resulting in the ‘first inventor to file’ moniker.

• The section comprises two threads to novelty relating to prior publications and earlier unpublished patent applications. Consequently the respective provisions and exclusions for each thread of 102(a) and (b) are collated below, before moving on to the rest of the section in (c) and (d): §102(a)(1) and (b)(1) – Prior publications §102(a)(1) – Anything publicly disclosed before the inventor’s effective filing date is prior art unless subject to a §102(b)(1) exception. §102(b)(1)(A) The inventor has one year from his/her own patent or non-patent disclosure to file a US patent application without that disclosure being prior art. §102(b)(1)(B) Any third party’s non-patent disclosure in the year between an inventor’s disclosure and filing a US application is not prior art. §102(a)(2) and (b)(2) – Applications filed before but published after the effective filing date

Study Guide to the Patents Acts (2021 edition)

183

United States §102(a)(2) – Any US patent or application filed before, but published after, the inventor›s effective filing date is prior art unless subject to a §102(b)(2) exception. §102(b)(2)(A) The inventor›s own prior applications that have been filed, but not published, before the effective filing date are not prior art. §102(b)(2)(B) Any US patent application effectively filed by a third party after the inventor’s earlier public disclosure (but see §102(b)(1)(A)), but before the inventor’s effective filing date is not prior art. §102(b)(2)(C) Any patent application of a third party which is effectively filed before, but published after the inventor›s effective filing date, and is, as of the inventor›s effective filing date, commonly owned or under an obligation to assign, is not prior art. §102(c) Common Ownership Under Joint Research Agreements Inventions from two different inventors from otherwise different companies will be deemed to be commonly owned for the purpose of §102(b)(2)(C) if: (1) the invention was made by someone party to a joint research agreement in effect on or before the earliest effective filing date, (2) the invention was within scope of the agreement, and (3) the application names parties of the joint research agreement. §102(d) Patents and Published Applications Effective as Prior Art For the purpose of §102(a)(2) the effective filing date of a US application is: (1) the actual filing date, unless (2) the application is entitled to claim an earlier filing date under §119 – Convention priority claims & provisional filings, §120 – Continuations, §121 – Divisionals, or §365 – PCTs. Legal Notes Grace Period: • Note that the 12-month grace period is for filing in the US, not for an overseas priority document that leads to a later US filing (though a PCT(US) counts if filed in English). Note that in the US even confidential offers for sale (in the US) may be considered a disclosure.

• §102(b)(1)(A) covers the inventor’s own patent and non-patent disclosures. This means that an inventor has one year from disclosing his invention to file an application, or a year from the publication of a prior application of his by a patent office to file an application.

– NB: The USPTO interprets these provisions narrowly – the earlier disclosure must be identical in substance to the filed application to enjoy the grace period. A novelty-

184

Part 2: Overseas Law

United States style comparison may be envisaged. The USPTO examination guidelines state: “These examination guidelines maintain the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B). However, these examination guidelines also clarify that there is no requirement that the mode of disclosure by an inventor or joint inventor (e.g., publication, public use, sale activity) be the same as the mode of disclosure of the intervening disclosure, and also does not require that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening disclosure. In addition, these examination guidelines also clarify that if subject matter of the intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening disclosure.” (See https://www.uspto.gov/ sites/default/files/aia_implementation/FITF_Final_Guidelines_FR_2-14-2013.pdf).

• As noted in the MPEP guidelines, this narrow interpretation also applies to §102(b)(1) (B). Consequently, in this case the inventor’s prior disclosure and the inventor’s eventual filing must again be identical in substance and this protects against the intervening third party disclosure to the extent that it is similarly identical in substance.

– The most common scenario for this provision is, therefore, likely to be to protect the inventor from recirculation of his original disclosure by third parties during the 12-month grace period – though of course it does also protect the inventor from independent invention and disclosure of substantially the same idea by a third party.

– Consequently in FD1, this provision is likely to crop up where an interest in a US application is mentioned in a case relating to either s2(4) UKPA disclosures, entitlement proceedings or where joint inventors fall out, as these are likely to result in near-identical disclosures or applications by different parties.

– Bear in mind that these provisions only relate to US applications; a prior publication discounted for a US application may nevertheless be citable against a UK application claiming priority, unless the prior publication counts as abusive and meets the requirements of s2(4).

• §102(b)(2)(A) and §102(b)(2)(B) are similarly narrowly interpreted by the USPTO, requiring the inventor’s prior disclosure, the subsequent third-party filing and the inventor’s eventual filing to all be identical in substance for these provisions to take effect.

• These provisions invite careful consideration using a timeline since they can cause counterintuitive outcomes. For example it is possible under the ‘First Inventor to File’ system for someone to lose out to a third party despite being both the first to invent and the first to file. This is illustrated by the example on the following page.

Study Guide to the Patents Acts (2021 edition)

185

United States

Mr Baker

Mr Able Invents X

Invents X (independently)

Applies for patent to X Publishes X

1 Year or less

Publishes X

Applies for patent to X

In this example: – Mr Able is the first to devise the invention and reduce it to practice.

– Independently, Mr Baker later devises the same invention, and then publishes it.

– Mr Able then files a US patent application, and subsequently publishes the invention.

– Finally, within a year of his own publication, Mr Baker files a US patent application.

• Under the first-to-file (FTF) system found in Europe and the rest of the world, Mr Baker’s initial voluntary publication is fully citable prior art for both Mr Able and Mr Baker’s applications, and as a result neither would be granted a patent.

• If evaluated under the old US first-to-invent (FTI) system, Mr Able would be allowed to ‘swear behind’ Mr Baker’s publication to the earlier date at which he devised the invention and reduced it to practice, meaning that he could eventually get the patent.

• However, if evaluated under the new US first-inventor-to-file (FITF) system, Mr Able would not get the patent, despite being both the first to invent and the first to file. Instead, Mr Baker would get the patent because his publication counts as fully citable prior art for Mr Able’s application under new §102(a)(1), whereas this publication does not count against Mr Baker’s own application due to the grace period of new §102(b)(1)(A). But in addition, Mr Able’s application does not count against Mr Baker’s application due to new §102(b)(2)(B), and similarly Mr Able’s publication also does not count against it either due to new §102(b)(1)(B). As a result, Mr Baker’s application can proceed to grant.

186

Part 2: Overseas Law

United States Old 35 USC 102 – Notes • Only a few pending US cases will still under be the old system and as such it is relatively unlikely to appear in the current FD1 exam.

Old 35 USC 102 An applicant can have the patent unless: a) the invention was known or used by others in the US, or was patented or published overseas, before being invented by the applicant, b) the invention was patented or published anywhere or used in the US more than one year before the date of the current application, c) they abandon the application, d) the invention was first patented by the applicant overseas more than one year ago, e) the invention was described in another applicant’s US application or US patent before invention by the applicant, provided that where such an application or patent was via the PCT it designated the US and was published in English, f) they are not the inventor, or g)1)2) someone else proves during interference proceedings that they invented it first (provided they did so within a North American Free Trade Agreement state or a WTO state).

General • Old 35 USC 102(a) does not use absolute novelty, instead favouring domestic inventors over foreign inventors. Subsections (b), (d) and (g) were similarly partisan.

• Old 35 USC 102(b) meant that even if first to invent, you still needed to file your own application in good time.

– This subsection also provided a 12-month grace period following the publication of any disclosure.

• Old 35 USC 102(f) was why the inventor had to be the applicant in the US. • Old 35 USC 102(e),(g) were novelty-only in certain limited circumstances.

35 USC 103 Inventive Step A patent won’t be granted if the differences between the claimed invention as a whole and the prior art would be obvious before the effective filing date of the claimed invention to a person skilled in the art.

Legal Notes General: • Obviousness is with respect to the state of the art immediately preceding the effective filing date of the invention, in a similar manner to the rest of the world.

Study Guide to the Patents Acts (2021 edition)

187

United States • Hence for the purposes of FD1, one can treat inventive step as the same as for UK or EP prosecution.

• However, note that applications filed before yours but published after can still be cited for novelty and inventive step in the US system; i.e., there is no concept of ‘novelty only’ prior art.

• There is no separate search and examination – citations are introduced during examination, and all can be cited for inventive step.

Old 35 USC 103 General • Obviousness was with respect to the time the invention was made, as befits first to invent.

• The section included joint development issues now moved to § 102.

• The section included protections for common ownership now moved to § 102.

• The section included a biotech method exception that no longer exists.

In certain limited circumstances outlined in old 35 USC 103 (b) and (c) the US effectively set the bar for inventive step lower if the prior art (and hence the inventive source) was from the same applicant. Old 35 USC 103 (c) could be useful where a client’s previous application was cited as prior art against their later application, but is not available under the new AIA scheme.

35 USC 112

Specification

(a) The specification contains a written description of the invention and the manner and process of making and using it (including a best mode for carrying out the invention), which is clear enough that a person skilled in the art can also make and use the invention. (b)-(d) The specification contains one or more claims; claims can be dependent or independent as applicable. (e) A multiple dependent claim (‘any one of claims X to Y’) cannot depend from another multiple dependent claim. (f) A claim can describe the performance of a function without recital of supporting structures, but is interpreted in light of the supporting structures found in the description and their equivalents.

Legal Notes • For the purposes of various rules & fees, claims having multiple dependencies are counted as a corresponding number of singly dependent claims and hence can add up fast.

• It is no longer necessary to specifically identify a best mode. For UK / EP originating applications, their requirements for an enabling description providing support for the claims are deemed sufficient.

188

Part 2: Overseas Law

United States

35 USC 119

Benefit of earlier filing date (Priority)

a) You can claim priority within 12 months from an overseas regular national filing. b) 1) Declare priority (App No, Country, filing date) within four months of filing or 16 months from priority (37 CFR §1.55(a)(1)(i)).

2) May file declaration late with surcharge if unintentional (37 CFR §1.55(c)).

3) USPTO may require a certified copy. c) (As per s5(3) UKPA & PC Art4(4)) – A subsequent filing in the same overseas country may be a basis for priority if the earlier filing was not published and left no rights outstanding. d) One can also claim priority from inventor’s certificates. e) 1)2) A US or PCT(US) application that was previously disclosed in a provisional US application can have the original filing date if filed within 12 months of the provisional application and it makes reference to the provisional, providing the filing fee for the provisional application was paid.

3) The 12 months is extended if it falls on a closed day. f)g) Plant breeder’s rights filed in a WTO or UPOV country can also claim priority according to subsections a)-c) above.

Legal Notes • The US allows provisional filings, continuations (not adding matter) and continuations in part (adding matter with a second priority date).

– Therefore, be careful to check that a particular US application is a valid basis for priority under s5(3) UKPA.

35 USC 120

Claiming the Benefit of an earlier filing date (Continuations)

A new patent application that names the same inventor(s) as a prior application can have the same priority date as the prior application if the new application is filed before grant or loss of the prior application, and provided the new application contains a specific reference to the prior application, or is amended to do so during prosecution.

Legal Notes General: • The prior application must be a non-provisional US application or PCT application designating the US. • Notably 35 USC 120 enables but does not mention the filing of divisional, continuation and continuation-in-part applications.

Study Guide to the Patents Acts (2021 edition)

189

United States Continuation applications: • These are a re-filing of the prior application that does not add subject matter. Notably therefore, only the claims can be substantively amended. A common use for continuation applications is when an examiner will allow a subset of the claims on file in an application; one may then restrict the application to the allowed claims, whilst filing the remainder as a continuation application for further prosecution without putting the allowed claims at risk.

• Whilst the prior application has to be pending, this need not be the original application.

Hence chains of continuations are possible even after the original application has been granted or lost.

• The continuation application is treated as having the same priority date as the parent application. Note that among other benefits, this prevents abusive extension of the effective term of protection using continuation chains.

• Note that because it is not the first application comprising the subject matter, a continuation application cannot be used as a priority document itself. See s5 UKPA, ‘Valid priority documents’ earlier in this book for details.

Continuation-in-part applications: • These are similar to continuations, but are a re-filing of the prior application that does add subject matter. The majority of the application will typically be the same as the prior application, but include specific additional material. A common use for continuation-in-part applications is when an inventor has substantially improved upon an invention, and so the new subject matter is closely related to that of the prior application.

• Claims relating to the original subject matter are still entitled to the original priority date, whilst claims incorporating the new subject matter are entitled to the date of filing the CIP application itself.

• Note that only the new subject matter can be used as the basis for a subsequent priority claim. See s5 UKPA, ‘Valid priority documents’ earlier in this book for details.

35 USC 121

Divisional Applications

If two or more distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is filed as a divisional application complying with the requirements of 35 USC 120, then it will have the priority date of the original application. The original application is not citable against the divisional and vice-versa.

Legal Notes General: • A divisional is in effect a continuation application triggered by a restriction requirement issued by the USPTO.

190

Part 2: Overseas Law

United States

Transitional Provisions General: • The America Invents Act (AIA) introduced a raft of changes between 2011 and 2013, some of which were phased in, or depend upon what happens during the prosecution of a case.

For a list of all the changes, see http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf.

• Most of these provisions are now unlikely to be a topic in FD1, but are included for completeness.

• US and PCT(US) applications filed before 16 March 2013 will stay under the old FTI system, and • US and PCT(US) applications with a priority date on or after 16 March 2013 will be under the new FITF system, but • US and PCT(US) applications claiming a priority date before 16 March 2013 from an earlier application, but filed after 16 March 2013, will qualify for the old FTI system, unless… the application contains, at any point in its existence, a claim that is not entitled to the priority… in which case the entire application is irreversibly re-classified as being under the new FITF system.

• Hence one can easily envisage a case where, for example, an applicant has two priority applications GB1 and GB2 filed before 16 March 2013, and then files US applications US1 and US2 after 16 March 2013, where US2 claims additional subject matter with respect to GB2. In this case, US1 is prosecuted under the old FTI system whilst US2 is prosecuted under the new FITF system. Consequently, the whole of US2 may be open to additional prior art, compared with US1.

• Similarly one may envisage the case where US2 merely contains additional subject matter but does not claim it. Then something happens necessitating a claim amendment to include the new subject matter, so that US2 switches from FTI to FITF – which in turn may make a further piece of prior art now citable under the broader novelty provisions of new § 102.

– However, the likelihood of this scenario being used in FD1 now is very small.

• Note that if you do add subject matter as per the US2 example above, then you are required to notify the USPTO of the existence of such subject matter, and also whether it has been claimed, within four months of filing the application (or four months from national phase entry), and/or when an amendment creates such a claim during prosecution. Failure to notify results in loss of your priority claim. As noted elsewhere herein, however, the number of pending cases for which this could apply is becoming ever smaller.

Miscellaneous Changes by the AIA Applicant: • The applicant no longer needs to be the inventor but can be the assignee.

– An oath / declaration by the actual inventor(s) is still required to state that they are the inventor and authorise filing. File within the time provided by the Notice to File Missing Parts to keep the patent term adjustment (the additional patent term based on the time over 14 months before receiving the 1st OA or NoA).

Study Guide to the Patents Acts (2021 edition)

191

United States Prior Use: • Since 16 March 2013, the previously restrictive US provisions on prior use were extended to any activity, and so for the purposes of FD1 can be treated as similar to s64.

Challenging validity: • This is not specifically on the FD1 syllabus for the US. However, it may be useful to note in passing the following: – You can file third-party observations, but are not allowed to state the relevance of any prior art you raise to the pending application. Given the presumption after grant of validity over reviewed prior art, this is, therefore, not such an attractive option.

– The AIA introduced the ‘Post Grant Review’ that can be requested by third parties, and which is available for the nine months following grant of an application (i.e., similar to the opposition window for EP cases). However, it is probably good to note that the official fee is roughly 30 times more than the EP opposition fee at ~$27k.

– Beyond nine months an ‘Inter Partes Review’ is available, akin to revocation proceedings; if you are a possible infringer, request this within 12 months of being sued for infringement.

Again, the official fee is very high, at ~$40k (but still much less than litigation in a US court). There is also a review scheme specific to covered business methods.

– See https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/ aia-trial-types for more details.

Other notable points under the US patent system • Co-owners can independently licence a patent / application, unlike the default position of s36 UKPA. • After grant, anyone can request re-examination of a patent in light of newly discovered art. However, there is a presumption of validity over any art already considered by the USPTO, so if applicable consider waiting until court to raise new art in order to avoid such a presumption.

– The AIA also introduced post-grant reviews and third-party observations. In addition, derivation proceedings (~entitlement) replaced interference proceedings (~inventorship).

• Similarly, after grant it is possible to extend claim scope in the first two years with a ‘broadening reissue’.

• The US is not a signatory to the reciprocal protection of unregistered designs.

– Therefore, a US unregistered design has no protection in the UK and vice-versa.

192

Part 2: Overseas Law

Japan

2.5 Japan The FD1 syllabus identifies articles relating to the basics of patentability, filing, claiming priority and requesting examination, as detailed below.

Article 29

Patentability

1) An inventor is entitled to a patent to an invention unless it is: i-iii) publically known, worked or published anywhere before the filing of the application.

2) If a person ordinarily skilled in the art of the invention would have easily made the invention based on any prior art listed in 1) above, then a patent shall not be granted.

Article 29-2 1) Where an invention claimed in the current application is identical to an invention in a patent or utility model registration filed before the current application and published afterwards, then a patent shall not be granted, except if the applicant at the time of filing the current application was the same in both cases, or the inventor was the same in both cases.

Legal Notes • This article replicates the same basic notions of novelty and inventive step found in the UK, EP and other Paris Convention countries. ‘Easily made’ can be treated as equivalent to ‘obvious’.

• Notably, however, inventors and applicants are additionally protected from self-citation for novelty-only patent prior art, in a manner similar to the old US system.

Article 30

Exception to lack of novelty

1) Where an invention is disclosed as per Art 29(1) against the will of the person entitled to obtain the patent, then Art 29(1)(2) will not apply for 12 months from such disclosure.

2) Where an invention is disclosed as per Art 29(1) by the person entitled to obtain the patent, then (except if the disclosure is in a gazette relating to patents, utility models, designs or TMs) Art 29(1)(2) will not apply for 12 months from such disclosure.

3) Provide documentary proof that you can use this 12 month grace period within 30 days of filing.

4) If it is not possible to obtain proof within 30 days, a UK applicant has two months from when it becomes possible, but not longer than six months after the time limit, to provide the proof.

Study Guide to the Patents Acts (2021 edition)

193

Japan Legal Notes • Hence Art 30 JP is similar to s2(4) UKPA, with a further provision protecting self-disclosure.

However, Japan has extended the grace period from 6m to 12 months for any disclosure made on or after 9 December 2017. Like the UK and Europe, it is necessary to file an application in Japan itself within this 12-month period. A PCT designating Japan will also count.

• The protections in subsection (1) similarly apply to international exhibitions recognised by the patent office.

Article 32

Unpatentable Inventions

Any invention that is liable to damage public order, morality or public health shall not be patented.

Article 36

Patent Applications

1) The application shall identify the name and residence of the applicant(s) and inventor(s).

2) The description, claims, drawings (where required), and abstract shall be attached to the application.

3) The description shall comprise the title of the invention, a brief explanation of the drawing(s) and a detailed explanation of the invention.

4) The detailed explanation of the invention shall be clear and sufficient to enable skilled person to work the invention, and should acknowledge related prior art known to the applicant.

5) The claims shall disclose the necessary features to specify the invention to be patented.

6) The claims shall have support in the description, be clear, concise and in accordance with the rules.

7) The abstract shall summarise the invention.

Article 36-2 1) The applicant may submit a foreign language application…

2) … but must submit a translation within one year and four months from the priority date.

For divisionals or conversions from utility models and the like, the deadline is two months after the division / conversion.

3) The JPO will notify the applicant if the deadline is missed.

4) The applicant may then file the translation within two months of this notification.

5) If the translation is still not filed, the application is deemed withdrawn from the date of the deadline in subsection (2). However…

6) … the applicant can provide justifications for a late translation within two months from the end of a cause of non-compliance (but not more than one year from the missed two month notification deadline) if the failure to comply with the time limit occurred in spite of due care.

7) Such late translations under (4) or (6) shall be deemed to be filed on time.

8) The translation will be treated as being the application.

194

Part 2: Overseas Law

Japan Legal Notes • Art 36 is similar to sections 14(2)(3)(5) UKPA and Arts 78, 83 and 84 EPC; note, however, the assumption that claims are present at filing.

• Article 36-2 also provides a mechanism similar to the reinstatement of s20A UKPA if the translation is justifiably late – note, however, that this requires due care.

• For PCT(JP) applications, file the translation within two months from when the application enters the national phase.

Article 43

Priority under Paris Convention

1) A person can declare priority under the Paris Convention, stating the date and country of the first filing.

2) A certified copy of the priority document must be provided within one year and four months (i.e., 16 months) from the earliest of the date of first filing or the earliest relevant priority claim, together with certified confirmation of the date and country of filing.

3) The filing number of the priority document should be provided with the declaration of priority. Where the number is not available at the time, it should be provided without delay when it becomes available.

4) Failure to provide the certified documents of paragraph (2) in time will result in a loss of priority claim.

5) If the priority document is available electronically (i.e., via another patent office), the applicant can just provide the application number to the JPO. 6) The JPO will notify the applicant if the deadline is missed.

7) The applicant may then file the certified copy within two months of this notification.

8) However, if this is not possible due to reasons beyond the applicant’s control, an overseas (e.g.

UK) applicant may submit the certified document within two months of finally receiving it.

9) If the documents referred to in subsections (2) or (5) are filed under subsection (7) or (8), then subsection (4) does not apply (i.e., priority is maintained).

Legal Notes • Art 43 enacts similar priority requirements to other Paris Convention members, such as the UK and EPO. • The article also provides for the late availability of certified documents.

Article 44

Divisionals

1) An applicant can file a divisional application only within the following circumstances: i. within the normal times allowed for amending the specification; ii. within 30 days of the issuance of an examiner’s decision to grant (excluding appeal decisions); or

Study Guide to the Patents Acts (2021 edition)

195

Japan iii. within three months of the issuance of an examiner’s decision to refuse.

2) The divisional shall inherit the filing date of the parent, unless the new patent is anticipated by an earlier application by the same inventor / applicant as per Art 29-2.

3) For divisionals, the deadline for filing priority documents (Art 43(2)) is the later of one year four months from priority or three months from filing.

4) Documents relating to unintended disclosure (Art 30) and priority claims (Arts 41 & 43(1) (2)) already filed in relation to the parent are deemed to also have been filed in relation to the divisional.

5) If the 30-day limit for paying grant fees is extended, then the 30-day limit under subsection (1)(ii) above is similarly extended.

6) If the three-month limit for filing an appeal is extended, then the three-month limit under subsection (1)(iii) above is similarly extended.

7) Where an applicant misses the deadline under subsection 1(i) or 1(ii) above due to reasons beyond their control, an overseas applicant can file the divisional within two months of the end of the cause of non-compliance but not later than six months from the end of the relevant deadline.

Legal Notes • Note that as with the UKIPO, the Examiner’s decision to grant precedes the actual grant date; and again as with the UKIPO scheme, there is a window (here of 30 days) in which to pay fees and file divisionals – see notes to s18 and s24 UKPA. • Notably there is also explicit provision of a three-month window to file divisionals after a refusal. Recall there is also an effective two-month window at the EPO due to the appeal period; see the notes to Art 76 EPC. • Section 44 also provides for force majeure delays.

Article 48-3 Request for Examination 1) Request examination within three years of the filing date.

2) Divisionals (or conversions from utility models) filed after this deadline have 30 days to request examination.

3) Once filed, a request for examination cannot be withdrawn.

4) If the request is not filed in time, the application is deemed withdrawn.

5) If the applicant has a justifiable reason why despite due care, they missed the deadline above, they may request examination within two months of the end of the case of noncompliance provided this is within one year of the deadline.

6) If filed under subsection (5), the request is treated as occurring on the deadline if subsection (1).

7) As per subsection (3), such a request cannot be withdrawn.

8) Where a third party began in good faith to work the invention or prepare to do so between publication of withdrawal under subsection (4) and of the request under subsection (5),

196

Part 2: Overseas Law

Japan then that person shall have a non-exclusive licence to the patent right, but only to the extent that they had worked or prepared the invention.

Legal Notes • The examination request deadline is set is with respect to the filing date. For convention filings this is the date of the JP application, but for PCT national phase applications it is the date of the PCT filing.

• The section includes a reinstatement provision (subsections 5-8) specific to this request, complete with third-party rights similar to those in s20B UKPA.

Summary • There are a number of similarities to GB/EP systems: – Art 29 JPA makes it a first to file system, as GB/EP, – Patentability, absolute novelty and inventive step are similar to GB/EP, – Restrictions on amendment (added matter) are the same as GB/EP, – There are slightly more generous unity provisions, – Publication is at 18 months (but without a search report / exam), and – Similar rights / infringement to GB, though in principle patent infringement is a criminal, rather than civil, action. However, use of the criminal aspect is very rare.

• Notable points: – Novelty-only prior art is discounted if by the same applicant or inventor.

– A30 JPA provides a 12-month grace period for both voluntary and unauthorised disclosures. As with other such grace periods, the 12 months is to file an application in Japan (or a PCT(JP)).

– One should file a translation within one year and four months from priority for convention filings, and within two months from entry into the national phase for PCT(JP) applications.

– One can request examination up to three years after filing at the JPO. – One can file divisionals between the Examiner’s notification of intent to grant, and actual grant, and also up to three months from refusal.

• An opposition process was re-introduced in Japan in 2015; alternatively one can bring a trial for invalidation at any time after grant (i.e., similar to revocation proceedings under s72 UKPA).

• For any further reading, the following resources may be of use.

– A good FAQ is provided by the JPO here: https://www.jpo.go.jp/e/faq/yokuaru/patent.html

Study Guide to the Patents Acts (2021 edition)

197

Japan – A more general FAQ is also provided by the EPO: https://www.epo.org/searching-for-patents/helpful-resources/asian/japan/faq.html – A brief summary of the JP system can also be found at the JPO website: https://www.jpo.go.jp/e/system/patent/gaiyo/patent.html – For more detail, the Examination Guidelines are also available in English at: https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/tukujitu_kijun/index.html – Finally, an English translation of the Japanese Patent Act is available from: https://wipolex.wipo.int/en/text/532862

198

Part 2: Overseas Law

Part 3 Guidelines for Taking FD1 3.1 Revision...........................................201 3.2 Reading an FD1 question............... 204 3.3 Writing an FD1 answer................... 224 3.4 Worked example.............................237 3.5 On the day..................................... 245

Study Guide to the Patents Acts (2021 edition)

199

Revision

Introduction Part 3 is intended to help your exam technique for FD1. However it makes no assumptions about what aspect of the exam process (if any) you may want advice upon, and so attempts to cover as many angles as possible. Consequently, whilst some of Part 3 may be useful to you, other parts may appear pointless or even patronising – so just take what appears useful and forgive the rest.

3.1 Revision 3.1.11 Revision Resources • The current syllabus for FD1 can be found by Googling ‘peb fd1 syllabus’ or visiting https:// peb.org.uk/patent-examination-board/support/syllabi-for-2021/. The Patent Examination Board (PEB) also provide examination guidance outlining the skill set that the exam tests for.

Hence whilst this book is intended to cover the legal references in the syllabus, PEB also usefully outlines the qualities being tested in candidates, the assessment criteria used, and the desired learning outcomes, and presents a thematic grouping of the legal references.

Finally, it also provides a comprehensive recommended further reading list.

• Useful books include: – The CIPA Guide to the Patents Acts (the ‘Black Book’) – this is the authoritative source from which to learn UK law. This study guide contains references to the 9th Edition and 1st Supplement.

– The Manual of Patent Practice (available from the UKIPO Website), provides clear commentary, albeit from a patent examiner’s perspective, – The Annotated European Patent Convention (‘Visser’) for EPC and PCT references, or References to the European Patent Convention (‘Hoekstra’) for EPC references; and – The PCT Applicant’s Guide for US and JP prosecution and further details on PCT prosecution.

• Past papers, example scripts and Examiner’s reports for the last 15 or so years can be found

by Googling ‘peb fd1 past papers’.

• The CIPA Informals lecture series is useful, and for those located outside London, recordings and slides of the lectures can be downloaded from CIPA (see https://www.cipa.org.uk/pages/informals).

In addition CIPA also organises a tutorials roster, although this year it may well not occur, for obvious reasons.

• Other online resources include the excellent cross-linked guide to the EPC and PCT at https://xepc.eu/ • Commercial residential training courses are also available, although these should generally be treated as a consolidation of your revision, and not as a starting point.

• Finally, as a complement to this book a study schedule and open discussion group is available on LinkedIn (search LinkedIn groups for ‘P2 / FD1 Study Guide’), providing the opportunity to revise and discuss exams together, and to ask questions. No sign-up to the group is required to view it.

Study Guide to the Patents Acts (2021 edition)

201

Revision

3.1.21 Overview of the FD1 Exam General: • FD1 is the Patent Practice paper. It is often referred to as the Law paper, but in fact the emphasis is on the application of the law in practice to ‘real life’ situations, and hence has strong problem-solving elements. This is discussed in more detail in Parts 3.2 and 3.3.

• Part A of FD1 comprises five or six compulsory short questions of up to 10 marks each. Part B of FD1 comprises three or four questions of 25 marks each, from which you choose two.

Each part is worth 50 marks.

Time: • You have 240 minutes. A common breakdown of this time is to assume that half an hour is spent reading the questions and checking answers, i.e. not actually writing. This leaves 210 minutes of output time.

• The pass mark is 50%, or one mark every four minutes. On the assumption that not everything you consider to be a mark is held in similar esteem by the examiners, aim for 70 marks or one for every three minutes of output time.

• Time management is dealt with in more detail in Part 3.4.

Effort: • Note that a significant majority of people achieve more than half the marks in part A, but fewer than half the marks in part B. Therefore improving one’s performance in part B can be a determining factor in passing the exam, particularly if you are retaking it.

3.1.31 The Syllabus • The Patent Examination Board are committed to covering the full breadth of the syllabus over the course of successive exams, and consequently it is important to recognise that there are no shortcuts to success; it will be necessary to know the law and practice covered by the syllabus thoroughly.

• However, there are common scenarios or subjects that occur in Part A questions that it can be useful to familiarise yourself with or at least anticipate: i. Designs – Question 2 is traditionally the question where you explain the applicability (or not) of the various design rights to the features of the client’s object. Part 1.2 above covers the issues commonly related to this question. ii. Patentability – A client has an idea that involves patentable and unpatentable matter, some explicit, probably some implicit. Identify each and explain why it can or cannot be patented in the client’s jurisdiction of choice, and/or offer alternatives. iii. Ownership – In FD1, employed inventors have a tendency to file their own applications, whilst private inventors have a tendency to make deals with crooks. Depending on the facts, you will be expected to handle the ensuing issues of ownership, entitlement, and/ or compensation.

202

Part 3: Guidelines for Taking FD1

Revision

•

•

•

•

•

iv. Forgetful confidantes – In FD1, when employees aren’t filing their own applications for inventions they instead leave details of them scattered around public places. Such situations will require that you evaluate the probability of disclosure and how to mitigate it, and subsequently handle any entitlement or infringement issues. v. The Infringer – A worried client has received a (sometimes threatening) letter telling them they are infringing. Assess the situation and advise accordingly. Check if they have anything patentable in turn. See the notes to s60, s61, and s69 for some comments on this type of situation. vi. The Patentee – the flip-side to the infringer; how do you deal with an infringer given whatever facts are presented in the question? Again, see s60, s61 and s69 for some notes on this. Both the infringer and patentee questions can also include aspects of threats (s70-s70F). vii. Foreign law question – overseas patents that enter the GB national phase late are a staple of the exam. However, occasionally a primarily PCT or EPC based question is also asked, requiring vigilance about which set of statutes to use.

In addition, there are a large number of questions that explore issues relating to patent prosecution and recovering from failures thereof. These often include clients suffering from shipwrecks, heart attacks and other inconveniences that result in sub-optimal patent prosecution, or the consequences of poor decision making or naivety, for example in a startup company. These may relate for example to priority issues, missed renewals, or failures in any other aspect of general prosecution.

You need to be capable of answering questions on all of these topics to be confident of passing Part A, and since general prosecution pre- and post-grant represents (and finds its way into) a significant proportion of the questions, it will clearly be necessary to have a good general knowledge of the law.

To reiterate, whilst the above summary highlights some frequent themes in the exam, each year the Examiners strive to present new scenarios and variants. Consequently a thorough knowledge of the law is important in order to field whatever the Examiners happen to throw at you in a particular year.

However more generally, and as will be mentioned several times in this part of the book, appreciate that there are common sequences of events, and common chains of legal and practical reasoning, that you should try to become familiar with.

The above summary is of course only guidance, not gospel. The PEB syllabus provides the definitive list of possible exam topics.

3.1.41 Question types in Part B: • The syllabus and law being tested in Part B is the same as in Part A. The difference is primarily in the depth, breadth and/or complexity of the situation you are presented with, and the corresponding demands on your organisational and problem solving skills, together with your knowledge of the various chains of reasoning and good practice that are appropriate in certain situations.

Study Guide to the Patents Acts (2021 edition)

203

Revision • Reading • Part B tends to present questions where combinations of the topics found in Part A have been made interdependent, or where variants of a particular topic are explored more fully.

• Some parts of the law are inherently more complex than others and lend themselves to part B questions, such as threats, or secondary infringement. Others are a compact way to generate numerous marks because they allow easy juxtaposition of different circumstances, such as infringement by different parties or by different products, or entitlement for different employment situations.

• Likewise, certain topics combine naturally (see section 3.2.3 below) to generate a more substantive question.

• Hence part B questions tend to gravitate to certain more complex sections of the act, or explore parallel branches of sections of the act, or use thematically grouped issues. Recognising this and that in most cases there are corresponding chains of reasoning and answer structures goes a long way to addressing how you should deal with such questions – see Part 3.2 below.

3.2 Reading an FD1 Paper This section provides guidance on how to read the Exam questions, glean hints from them, and identify salient issues.

3.2.11 The Questions • It sounds obvious, but read the questions carefully. Since common sense can fail you on exam day, it’s preferable to get into the habit of self-consciously analysing questions as soon as possible, and begin to develop an instinct for what they want.

• Pretty much every word in each question is there for a reason, from the awful pun-names to the dates and deadlines. Some are hints over and above the bare facts of the situation, and are there to direct you toward the marks and away from irrelevancies.

• As an example, look at the facts [A…] and hints [1…] embedded in Q5 2007, which took place on 29 October 2007: Your long-term [1] client Farmer Agrochemicals (AG) handles its own renewal fees [A]. They did an internal audit [2] and found that the 2007 renewal fee for an important [3] UK patent [B] filed 15 May 1999 [4] had not been paid by the 2007 deadline [C]. Therefore they tried to pay the fee with surcharges [D].

However, The UKIPO recently refused to accept this payment for the renewal fee, because the case had lapsed for failure to pay the 2006 renewal fee [E]. This was a surprise [5] to AG because this is the first [6] communication from the Office they have had identifying there is a problem with this case [F].

They have established that their system was upgraded and a bug [7] in the system meant [8] that no reminder was generated for this case, which caused [9] them to overlook the payment for 2006 [G]. They work in a fiercely [10] competitive area of technology and they are worried that if this case has lapsed it will give a competitor the opportunity to sell one of their key products in the UK [H]. AG understands [11] that the deadline for paying the 2007 fee with surcharges expires 30 November 2007 [12].

204

Part 3: Guidelines for Taking FD1

Reading

What course of action [13] should AG take to maintain their patent in the UK, highlighting what, if any, are the implications [14] of your proposals?

– 6 Marks [15]

• Bare facts of question (other than dates): [A] – The client manages their own renewals…

[B] – … on a granted UK patent. (Therefore be sure to use UK law, not EPC or PCT!) [C] – They missed a renewal fee deadline (that needs to be calculated).

[D] – They apparently did the right thing to remedy the 2007 payment…

[E] – … but the 2007 fee remains unpaid as the 2006 fee may also have been missed.

[F] – They only received one communication from the UKIPO. [G] – They failed to pay the 2006 renewal fee.

[H] – They are concerned about the consequences of a lapse.

• Note that each sentence in the question roughly equates with one of these facts.

• Hints: [1] – A ‘long-term’ client suggests experience, as opposed to a new private inventor.

[2] – They audit themselves, suggesting they have decent record keeping systems and are ‘responsible’ in their approach.

[3] – This may be indicative of the costs they are prepared to incur, and/or their level of care with such a case. Together with [10] below, it also suggests exclusivity is important.

[4] – The exam paper highlights the filing date in bold (The exam itself was on 29 October 2007).

[5] – In conjunction with the ‘because’, it serves to highlight the following point: [6] – The response to the late 2007 payment is the first indication of a missed 2006 payment. Perhaps there was a missing indication in 2006.

[7] – A ‘bug’ is an uncharacteristic error…

[8] – … and whilst they have a reminder system, the bug meant it didn’t work…

[9] – … causing them to overlook the payment.

[10] – ‘Fierce’ competition underscores the urgency regarding third-party rights.

[11] – ‘The client understands’ – this begs for confirmation or correction in an answer, and here also highlights the need for restoration of the 2006 payment before needing to restore the 2007 payment too.

[12] – All dates, in every question, are important. This one also acts as a template/ reminder for calculating deadlines for the 2006 renewal fee.

[13] – A course of action is required in the answer.

[14] – A risk assessment is required in the answer.

[15] – You are looking for 6 marks over the whole question. Divide effort accordingly.

• In this question, like almost every FD1 question, most sentences contain relevant information – there is very little flab in FD1. The question clearly directs you to use UK law [B] to deal with the issue of a lapsed patent [E] and separately a late renewal fee [C], where these may be due to a computer error [G] and/or a failure of the UKIPO to send a reminder [F]. The client wants to know what the consequences are/will be [H].

Study Guide to the Patents Acts (2021 edition)

205

Reading • The directions [13], [14] suggest that the answer can be organised into two main aspects (analysis/actions, and then consequences). The hints then influence your analysis of the issues, and often act as evidence or inputs for legal tests, as we will see.

• A good answer structure follows a basic pattern relevant to many questions: i. state or derive the current situation(s); ii. propose action(s) to address the situation(s); and iii. discuss any consequences of those actions or of unresolved situations.

In this case, the question helpfully lists stages (ii) and (iii) as requirements in the directions.

• The following is not an answer itself but illustrates the thinking behind an appropriate answer according to the above approach: Course of Action [13]: i. A responsible patentee ([1], [2], [3]) has missed a renewal fee date due to an uncharacteristic error ([7], [8], [9]); advise how to fix this ([13]) using s28 and the available information ([4], [12]). ii. The client also missed the subsequent renewal fee date. Assuming the patent will be restored, propose the action required to fix this too (s25(4)), correcting or confirming ([11]) the client’s assumptions.

– This states/derives several related aspects of the situation and then addresses them, as per the structure above. This was worth 3 marks, including the proper calculation of dates and deadlines. iii. A notification from the UKIPO seems to be missing ([5], [6]). Therefore, alternatively or in parallel consider rectification due to a UKIPO irregularity (R107 re s25(5)) ([13]).

– Again this states/derives another complementary aspect of the situation and then addresses it, as per the structure above. Worth 1 mark.

Risk Assessment [14]: iv. Note that under route i/ii. above, competitors working or preparing to work the invention and demonstrating good faith will have third-party rights from [previously calculated] dates (s28A) ([14]), so act ASAP ([10]).

– Then discuss consequences, as per the structure above. Worth 1 mark. v. Note that under route iii. above, third-party rights are not automatic, but are at the discretion of the comptroller (R107(2)(b)) ([14]).

– The elusive sixth mark, here again relating to consequences.

• In this question, a maximum of 4 out of 6 marks were for available for assessment and actions, whilst a third of the marks were allocated to implications of those actions. Clearly therefore it is worthwhile paying attention to the requirements in bold at the end of a question in order to be able to access all the potential marks (similarly even when not made explicit by a question, it is usually worth considering the repercussions of your conclusions and/or advice for your client / relevant parties, as there are likely to be marks for this).

– Don’t be afraid to carefully re-read the question if you think you have missed something.

– Whilst the above example separated out the ‘course of action’ and ‘implications’ parts, this is not necessary and it is perfectly acceptable to mention them as they occur to you or as they naturally flow in your own answer.

• As can also be seen, this question bends over backwards to direct you away from a tortuous discussion of ‘unintentional’ regarding the application of s28, both in terms of the hint

206

Part 3: Guidelines for Taking FD1

Reading

•

•

•

•

•

words used and the directions at the end of the question. In particular, the overt causality in hints [7]-[9] of the question indicate that the situation should be taken as fact and that you shouldn’t, for example, insert a human decision-making step in there in order justify a rote- learned discussion of the issue. FD1 is not an exam where showing off a party-piece out of context would earn marks.

Other common question hints are the name of a client (though this is not a ‘fact’ as such, and should not be part of a reasoned answer), and indications of financial status. For example, an inventor who is now unemployed probably wants to get money from their invention quickly; therefore consider licenses or settlements as a first option prior to lengthy and expensive court action.

– From this it follows more generally that you should accept constraints imposed on your actions by the facts of the question – this tests your ability to practice in the real world.

Finally, note that any explicit date given in a question should be used. If you don’t use it, ask yourself why you haven’t and then look for what issue does use it. On average, 10% of the marks in FD1 relate to the correct calculation / use of dates. See part 3.2.10 below for an example of analysing dates.

With practice, the hints in exam questions will become apparent to you if they don’t already.

If they are not immediately apparent when reading a question, then when you read the examiners’ comments consider returning to that question to see what words in it pointed towards the examiner’s approach, and try to develop a feel for them. At least initially, therefore, consider reading the examiner’s comments immediately after attempting a question, since at this point all the issues and your initial understanding of the question will be fresh in your mind. For these early attempts, it is not important to do the questions to time, or in a complete block.

Whilst the example above clearly lends itself to this analysis, it is fair to say that some questions are better written than others, and sometimes you might simply find yourself on a different wavelength to the examiner. However even in these circumstances it is possible to demonstrate that you are a safe pair of hands and gain respectable marks if you methodically work through the three basic steps of identifying the current situation, proposing actions to address the situation, and considering the consequences of any outcome or lack thereof.

So in summary, use the facts and hints in a question, together with any appropriate law, to fully characterise the status of the current situation; then choose appropriate legal remedies to address the situation, using any hints in the question that guide your choice. Finally, discuss the risks or further legal and business repercussions of these actions for any relevant parties in the question.

First Conclusion The exam questions provide facts and hints relating to a finite set of possible legal issues.

Identifying these, and in particular following the directions given at the end of a question, are key to answering the actual question – as opposed to a perceived question that you happen to know a good answer to – and hence to gaining the actual marks available in the exam.

Study Guide to the Patents Acts (2021 edition)

207

Reading

3.2.21 Part B Questions – Evaluation • It is important to evaluate Part ‘B’ questions up front, because the odds are that if you run into trouble on one Part B question then you won’t have time to properly do justice to another in its stead.

• Often (and perhaps preferably) it is just obvious that you don’t want to do one of the Part B questions, which makes your choice by default much easier and quicker (though beware of missing out on an easy question just because the ‘window dressing’ looks daunting). Other times it’ll be equally obvious which ones you do want to do. However, if you are left with two or three equally unappealing options, it is useful to invest some time in evaluating which question has the most issues you feel confident about. You can probably afford 15 minutes to do this; further details on time management are found in part 3.4.

• One option is to generate a mnemonic to use and expand out during the exam. For instance, you could memorise ‘ODD EPO VIP’, as seen below.

• Make a crude tally of the different issue categories that turn up in each question (bearing in mind each category can have multiple issues) and you will get a (very) rough profile of the questions: Part B 2007

Q7

Q8

Q9

Ownership ||| |

Disclosure |

Entitlement | | Priority

Designs

Overseas Validity Infringement Prosecution (Other)

|

|

||

||

|| |||

| (new app?)

• Don’t try to absorb the question too deeply at this stage; simply see where a different problem is described or hinted at, or (more riskily) simply gauge the acreage that a topic has in the question, and categorise it in your chart. Part B 2007 as charted above was relatively simple (Q9 being the hardest to characterise).

• You can now weigh up the pros and cons of each question as you see them. The chances are you’ll get a gut feeling for the questions in any event as you generate such a table, so don’t adhere to its indications too slavishly.

• Finally, however, don’t use such a table as the basis for your analysis when answering an actual question – it is far too crude.

208

Part 3: Guidelines for Taking FD1

Reading

3.2.31 Issue Clustering • As was noted in section 3.1.4, certain topics tend to be combined in Part B (and to a lesser extent in part A). As seen in the 2007 Part B analysis above, a common example is Ownership, Entitlement and Disclosure. Consequently if you feel confident with ownership and entitlement, for example, be sure to revise disclosure since the Part B question best suited to you will probably also have some marks related to disclosure in it (and indeed may hinge on the issue). Other popular clusters are Infringement, Validity and Overseas, and also the pairings of Infringement and Threats, and Overseas prosecution and Priority.

• Another significant type of clustering is the exploration and juxtaposition of variations on a theme for those sections of the act where various outcomes are possible; a frequent example is to explore the effects of different employment statuses on ownership. Another example explores the status of different would-be infringer(s) in relation to a patent claim or claims.

Consequently ensure you are familiar with all the permutations of such provisions.

• As can be seen from the above rough analysis, each of questions Q7, Q8 and Q9 in 2007 show fairly typical clustering behaviour.

• Whilst such clustering is a reasonable expectation, given that issues have a tendency to interrelate and that the Examiners need to fit a set of substantive issues into a short time and a single exam page, it is of course worth being aware that the presence of one issue does not automatically infer the relevance of others, and you should avoid constructing hypothetical arguments and situations in order to create clusters that aren’t there. Similarly, as with Part A the Examiners are always trying to present new situations to candidates, and so you should expect at least one novel combination of issues (or deep exploration of a single issue) to arise.

• Conversely, but again because of the desire to keep the exam fresh, superficially different scenarios can mask the same underlying legal issues; hence for example a question relating to infringement and validity may be presented from the side of the patentee or the infringer, and from the perspective of suppliers, start-ups looking to enter a market, would-be investors considering the value of a portfolio, patentees with or without imminent business needs, and so on. In each case the underlying law and reasoning is the same, and a good core answer is possible, whilst sensible advice tailored to this year’s specific circumstances will then likely gain some additional marks.

• There are advantages and disadvantages to clustering in questions. With clear clustering, a comfortable set of marks should be available if the subject-matter suits you, but it can be more difficult to read the Examiner’s mind and determine where to concentrate efforts (and hence obtain marks). By contrast, a question with a wide distribution of issues may take you out of your comfort zone a couple of times, but you may be better able to identify all the distinct issues and treat it like a collection of Part A questions. Only practice will tell if this is a relevant issue for you.

Study Guide to the Patents Acts (2021 edition)

209

Reading 7. Your client writes as follows: At the beginning of last year I was running my own business and in my spare time I developed a new type of digital radio So who owns? (radio 1), which was cheap and efficient to manufacture and had excellent sound quality.

I approached Mega Radio Resources Plc (MRR) and asked them if they would be interested in developing my radio. We had a first meeting in June 2006, to discuss my radio. In the meeting Confidential? we identified some problems with my original design but we Inventorship?

Any contracts? managed to overcome these with an improved radio (radio 2).

After a few months I contacted MRR to see if they were interested in developing the radio. I was surprised to be told that they owned the improved radio (radio 2), which they were Ownership…

Any profit? developing and that they did not have any obligations to me.

Comment Furthermore, they had filed UK and US patent applications in July 2006 covering the concept. Nevertheless, they had been very ≠ payment… impressed with my approach and offered me a senior position running their Research Department. I took the position because my business was doing badly, at that time.

Now senior Once I took up my position in MRR I further improved employee the radio 2 to provide a radio that gives excellent sound even when the strength of the input signal is low (radio 3). A patent application was filed by MRR directed to this further improvement and the model was put into development.

Any profit?

Special In my spare time I realised that the technology could be obligation? adapted to apply to mobile phones to assist them working in Section 2(4)? areas of low signal strength. When I told my boss in confidence about the new invention he told me that MRR owned this invention. I think I may have signed some papers confirming True? this as I seem to remember receiving a commemorative one Ambiguous?

Is £1 enough pound coin. They have filed a patent application on this signal for £10m from strength technology and I have recently heard a rumour that it patent? has been licensed to Colour Mobile Phones for £10 million.

I found out today that MRR is moving its Research Department to a cheaper location outside the UK and I am to be O’seas pats?

Nothing to lose made redundant.

I am really frustrated because I have made a number of Client’s goal inventions that will make someone lots money and I have not received any financial reward for my contribution.

Is there anything I can do to benefit from my inventions?

Advise the client what, if anything, can be done in the UK to Advise… Given these constraints secure some reward in his inventions making sure to point out any actions he should take and anything that can be done to improve his position and highlighting any relevant time periods for same.

25 Marks

210

Radio #1

Radio #2

P: UK(R2) P: US(R2) > 1 year…

Radio #3 P: ??(R3)

Mobile #1

P: ??(M1) < 6m?

Part 3: Guidelines for Taking FD1

Reading

3.2.41 Analysing a part B question • I suspect that there are as many ways to tackle Part B questions as there are candidates.

The next few sections show successive techniques that migrate from the laborious and time consuming (but possibly instructive) to a more confident seat-of-your-pants approach that makes good use of exam time and reflects a well-internalised knowledge of the law and attendant considerations.

• Roughly speaking, the following methods represent a spectrum in terms of the degree to which you impose a structure (implicitly, an answer structure) on the analysis, prior to actually answering the question.

• Hence method 1 is a reactive, bare-bones approach that does not provide any real structure unless you add some yourself. Meanwhile method 2 is a version of method 1 that imposes a structure on the analysis that is driven mainly by the structure of the question, and hence is ad-hoc. Method 3 is driven by an assumed answer structure based on the structure of the underlying law and common threads of reasoning. Finally, method 4 is an internalisation of the preceding methods, and in particular method 3.

• Hence the methods reflect your confidence in how an answer to the question is likely to look. As you gain experience and confidence with part B questions, you are likely to migrate from something like method 1 or 2 through to method 4.

3.2.51 Method 1 • The first method given here is a bare-bones approach intended to organise your thoughts as you first read the question, and uses as few frills as possible: i. Consider reading the closing instructions at the end of the question first, to gauge what the requirements of the question may be before you read it. ii. As you read through the question the first time, identify significant issues in one margin, and facts in the other. This may sound banal but it imposes some initial organisation on your thoughts and ensures that you flag these key elements at an early stage. It also slows you down as you first read the question, which is valuable in itself. Also consider underlining any hints or key points so you don’t lose sight of them later on.

• For FD1/P2 2007 question 7, you might well then make the following notes [see the example on the facing page] upon first reading the question.

• As a caveat, note that this is not a perfect analysis, but a realistic one. See part 3.3.5 for an answer and marking analysis of this question.

• At first glance, question 7 typifies the ‘permutations of ownership with regards to employment status’ issue cluster mentioned previously; this issue could affect each invention, and the mechanisms chosen for obtaining any financial reward. Unsurprisingly for the exam, it looks like several mechanisms will apply.

• Additionally, there is a clear progression through the client’s story, punctuated by inventions and patents, which may invite an answer that is correspondingly structured by these inventions and patents.

Study Guide to the Patents Acts (2021 edition)

211

Reading • Thus a possible answer structure to note down (and later tick off) is: Radio 1

(Ownership / no patent – confidentiality)

Radio 2

(Entitlement / joint owner? / UK & US Pats)

Radio 2 Radio 3

Mobile 1

(Inventorship / confidential / obligations) (Ownership / compensation)

(Ownership - Ambiguous? / compensation in each case)

• This way of organising the question may seem repetitive or longwinded, but in fact encourages you to systematically extract the marks available and assist you with structuring your answer. Note that in this case if you obtain just one mark for each of the aspects identified above, you will have already scored over 50%.

• As will be discussed in section 3.3.5 below, being very systematic is advisable in FD1, since marks are often obtained by taking each presented situation, ‘cranking the handle’ of the relevant legal test(s) and advising on the result; being systematic ensures proper identification of each situation (and/or each permutation of a situation) and hence also the appropriate legal test and relevant conclusion, so improving the chances that the full range of marks are tried for. It is notable that the Examiners’ Comments for Q7 2007 say ‘Candidates often did not separate Radio 3 from the mobile phone technology when considering compensation, nor did they distinguish between s40(1) and s40(2)’ (i.e., different compensation assessments depending on Mobile 1’s ambiguous ownership). Performing a proper analysis and identifying an answer structure like that above goes a long way toward avoiding such oversights.

3.2.61 Method 2 • The second method attempts to sift the information according to some sort of structure, generally driven by the structure of the question. This is helpful when the question itself is well structured and/or appears to be a collection of fairly disparate elements: i. Based on the assumption that there may be 4-6 sections to a part B question, divide a blank sheet into six parts, or just plan to make notes on different issues on different parts of the page. ii. In each part, identify topics as you encounter them and then populate with facts, comments and thoughts as you go through the question. Expect to return to sections as new information comes to light. The topics might need some restructuring as you go.

As noted above, in Q7 2007 the question invites an invention-by-invention analysis. Still consider underlining significant terms in the text.

• Again note this example is a representative rather than a perfect analysis. For the sake of exposition, it is also perhaps more verbose than necessary.

• As can be seen, this second method provides more room to note down issues and further thoughts as they initially occur to you, and structure your approaches to answering them (as opposed to the marginalia of method 1). Since the sections tend to reflect the order as initially perceived in the question, arrows can help cross-reference or re-structure the information as new elements fall into place.

212

Part 3: Guidelines for Taking FD1

Reading • This particular question has a definite chronology, making a possible structure clear. However, one can appreciate that in a question with, for example, a client with a product and a patent, and a competitor with a product and a patent, then the ability to identify and make notes on the various interactions between these in a reasonably structured manner is potentially useful.

Radio 1

Client owns biz – special obligation?

– but ultimately owns anyway Improve situ Patent Radio?

Was meeting confidential?

Radio 2 publishes 7/06+18m = deadline for filing if details overlap?

– s2(3) anyway – so what’s in R2 pat?

Check when pub’d & advise

Radio 2 – improve situ

7/77 due Nov 07 – try talking to MRR re UK & include both parties?

Else entitlement – S8 UK S12 US Note ‘developing’ – any profit?

Radio 2

Who ID’d the trouble?

Who did improvements? Check.

‘We’ means joint inventors?

– add to inventors – So joint applicants too explain s36 to client Job offer not a payment

Radio 3

*CLIENT NOW SENIOR EMPLOYEE* Patents further improvement, so leave issues with Radio 1 & 2 – MRR owners by employment.

– In development – Compensation? s40 & 41

Mobile 1

“The technology” = improvement of R3 but now in phone?

– called ‘new invention’ so go with it – spare time but senior – who owns?

– If MRRs then as R3 – If clients then £1 would be enough to assign but not much re £10m – is it adequate compensation?

Method 2

• Clearly, the amount of detail you put in your plan can be tailored to suit your needs and any time constraints. However, avoid the temptation to plan to the Nth detail and end up effectively writing your answer twice.

3.2.71 Method 3 • Method 3 recognises that whilst each year the questions may change, the law stays the same. In other words, treat the question as firstly a test of your ability to spot the issues and hence which laws apply, and then secondly as a set of data to feed into the tests embodied in

Study Guide to the Patents Acts (2021 edition)

213

Reading these laws or in common causal chains of events, patterns, or reasoning. Hence the structure of the analysis is more akin to a fill-in-the-blanks exercise based on your knowledge of templates formed by the (relevant) laws and actions.

• Hence for Q7 2007 the first step is to identify that this is predominantly a question on the variants of employer/employee invention ownership. The tests of s39 and s40 should

214

Part 3: Guidelines for Taking FD1

Reading

•

• •

•

• •

•

•

•

•

spring to mind. Knock-on issues such as those of s41 and possibly s8 and s11 are also worth noting to yourself. These can be thought of as a standard set of tests with a clear order of dependency, and as such form a template for an answer. s39 lends itself to an answer structure based on the different possible employment statuses – not employed (s39 and 40 do not apply, s8 and 11 more likely to) – employed but invention not made in normal duties or duties do not confer special obligation (employee likely owns, s40(2) might apply) – and employed and invention satisfies 39(1) (employer likely owns, s40(1) might apply).

This represents a series of branches within the template that your answer can follow.

Again in each case, it is likely that you will want to state/derive the situation, advise on actions for the client (possibly for alternative situations where these are deliberately unclear in the question), and note any repercussions of those actions.

Note that additional issues may be introduced at a branch point (e.g. identify evidence for a more likely branch, or derive information needed to determine the current situation), and/or might be common to all cases and dealt with separately at the end (e.g. the client’s financial status).

By happy coincidence, the inventions in the example question divide up in a similar way to s39, making organisation simple. [See the flowchart on the adjacent page].

As can be seen, the flow of the analysis in Method 3 is more strongly driven by the structure of the legal tests and also the structure of common chains of reasoning for perennial sequences of law / actions / consequences. Each thread of the answer typically starts with a fact-finding phase, followed by the application of a (possibly branching) test and a discussion of outcomes and consequences. In this particular case, using the provided ambiguities and attendant chains of reasoning in relation to the mobile phone unpacks a lot of the question’s marks.

One can see that many different questions on employment might fit a similar layout but with ‘discussion’ points occurring at different places in different exams, depending on the additional issues or ambiguities thrown into a particular instance of the question. Hence this method fits analysis of the question to a fluid series of templates themselves based on common chains of legal reasoning.

These templates are best identified and learned by practicing the exam and looking at the Examiner comments with an eye to identifying sequences of reasoning. Common threads of law and/or reasoning exist for questions on ownership, entitlement, infringement, threats, restoration, and others. Look out for them.

Clearly, in the exam a flowchart like that shown here will take too much time to prepare, but a shorthand version may still be of use in allowing you to see both where issues need to be discussed and also to form an overall shape of an answer – a shorthand version is illustrated in section 3.2.8 below.

Finally, as will be seen in Method 4 later on, ideally these structures of reasoning will become sufficiently familiar that it is no longer necessary to explicitly plan them.

3.2.81 Combined Example • The above three analyses are now shown in comparison for Q8 2007 (see overleaf):

Study Guide to the Patents Acts (2021 edition)

215

Reading

So disclosed.

Current Liability=UK Client Goal

Workshop variation?

Wonder why only halogen needs this…

Validated?

In Oppo. period

Do we infringe?

Prior use? no time info

Client Goal!

Ownership

Different re French? - Yes Still friendly

Validity of both patents…

Risk assessment & Actions to improve

8. Your client manufactures electric heaters for ceramic cooking hobs [1]. The client’s heaters have a C-shaped wire heating element [‘W’] supported on a layer of insulation [‘I’] arranged in a circular metal dish [‘M’] [2]. Your client at present [3A] only markets its heaters in the UK, but plans to export to other European Union countries shortly [3B].

Your client has recently become aware of a heater which has been introduced by a French [4] competitor based on halogen bulbs which generally have a filament arranged in a halogenated atmosphere within a straight [5A] quartz tube [‘H’]. Although these bulbs are generally used for lighting, most of the energy is emitted as heat. The competitor claims that if halogen bulbs, with the quartz tubes extending across the insulation [5B], are substituted for the wire heating element they work well as heaters provided there is a reflective layer [‘R’] on the insulation [5C] to reflect light and heat through the ceramic hob surface [6].

Your client has found a European patent [7] in the name of the French competitor. Designation fees for Germany, France and UK were validly paid [8] for the case. The European patent was granted in June 2007 [9] with the following claim: An electric heater comprising a metal dish containing a layer of thermal insulation and a heating element, characterised in that the heating element comprises a halogen lamp and in that a layer of reflective material is provided between the insulation and the lamp [10].

The competitor’s new heater appeals to customers because it heats up quickly and appears particularly bright to the user.

Your client considers it essential [11] to produce a similar heater.

Your client has commissioned [12] a consultant to devise [13] alternative arrangements. The consultant has reported that to his surprise [14] the heater is just as effective when the reflective layer is omitted [15] because the surface of the insulation itself acts as a reflector. The consultant has also reported that he has filed a patent application in his own name [16] and is willing to grant a licence to your client [17].

You have carried out a prior art search and determined that electric heaters for ceramic cooking hobs were known before 2002 with halogen lamps and a reflector in the form of a metal dish [18], but without any insulation [19].

Prepare notes [20] for a meeting with your client including advice on what impact [21] the competitors patent is likely to have on the proposed new product and any actions that your client could take to improve his position [22].

Client:

French:

P:EP (Reflector) French Claim:

Commissioned:

P:??(No Refl.)

Prior art:

25 Marks

216

Part 3: Guidelines for Taking FD1

Reading Facts & Hints: [1] – Clearly demarcates the scope.

[2] – Draw it.

[3A] – Could only infringe in UK? Note no time info about when client started. [3B] – Europe soon – a risk of future infringement? Client’s own patent portfolio?

[4] – Signals the European angle again.

[5A-C] – Draw it and compare with client’s invention.

[6] – Just to nail the relevance re [1] above.

[7] – Patent, not application. European, so immediately think about opposition.

[8] – Designation fees OK – does anything else need to be ‘validly’ done for these patents to take effect (hint, hint)?

[9] – The exam was on 29 Oct 2007, so we are within the opposition period.

[10] – Draw it; note it is broader than the specific embodiment (no requirement to be straight in claim – might a ‘C’ shape halogen filament be a problem?). Note the text only says ‘generally’ in a straight tube.

[11] – So you are going to put a lot of effort into fulfilling this goal.

[12] – Not hired, employed, etc, but commissioned. Consider IP clause of contract.

[13] – Word chosen to recall s7(3) UKPA – the inventor is the deviser of the invention.

[14] – In FD1, surprises are always inventive.

[15] – Check claim; yes this would get round it.

[16] – Ownership, entitlement; is his app any good anyway, file your own too (where?), etc.

[17] – So; consultant is cheeky but cordial – look at contracts & clarifications first.

[18] – Not like the consultant’s version – so good prospects.

[19] – Would the need for insulation in a domestic appliance be obvious? Consider for opposition.

[20] – No formal letter required, i.e. bullet points would be acceptable.

[21] – Infringement and risk assessment issues now and in future.

[22] – i.e. improving his portfolio and quashing competitor’s patent.

• The question appears to be about infringement and validity, with a side order of ownership.

Taking account of the instructions at the end of the question, a possible answer structure would be: 1. French: Impact

4. Client:

Ownership

2. French: Validity

5. Client:

Validity

3. French: Actions against

6. Client:

Actions for

Study Guide to the Patents Acts (2021 edition)

217

Reading Using method 2 instead, we get the following:

French: Impact

French: Validity

French claim: Current product – no reflector New product – no reflector So do not appear to infringe ‘Essential’ copy would infringe, though

Consider further prior art search esp. re reflectors

Designated DE FR GB – Validated?

Client only sells in GB – limits infringement exposure Free to sell outside DE FR GB? – check o’seas?

French: Actions against

Novel combination of features?

Inv. Step – is reflector layer obvious if removing it is ‘surprising’? No real facts – Prior art has dish reflector but no insulating layer, so is it ‘just’ restoring occluded reflector back to top?

– Little guidance, could be either way

Client: Ownership

Opposition period is 6/07 + 9m – Possible ground of I.S. – unclear if can combine client insulator with prior art too – ask dates?

Check contract for IP clause – note if clause & if OK ask for transfer or then go for entitlement – else if none discuss whether contract of/for service – if think client’s then as per clause – if contractor’s then pos. pay for assignment or exclusive license

Client: Validity

Client: Other Actions

Novel combination of features (list)?

Inv. Step – just swaps halogen for wire of client’s current heater…

– But described as ‘surprising’ so note and assume inventive – If can’t get exclusivity then consider observations to UKIPO?

File own version of application for commissioned hob ASAP. Consider options if also get consultant’s.

• In this case it would still appear prudent to draw the inventions.

• Note that method 2 highlights that there are quite a few uncertainties in this question, which may not be immediately apparent from method 1. Knowing this up front may help you to be more confident when dealing with them in your answer. Note that again the given example is perhaps too verbose.

• Finally, note again that these analyses are not perfect, but realistic.

218

Part 3: Guidelines for Taking FD1

Reading Using method 3:

• Question 8 breaks down into two overarching themes – an infringement / validity analysis using claim construction, and a question of ownership. In this question, the series of templates are therefore less directly driven by specific sections of law and more by common chains of reasoning that crop up repeatedly in such FD1 questions. [See the first flowchart overleaf].

• So here we see two discussions of infringement with respect to a claim. The first discussion can go into length about the usual consequences and actions and also discuss the validity of the competitor patent, and the second discussion can double up as a discussion of the validity of the client’s patent on the commissioned heater. It looks like there’s probably less to discuss in the ownership part, and that can also help with your planning.

• Of course, a more realistic version of this on the day would be something like the second flowchart overleaf.

• Compared to method 2, this approach provides more repeatable and predictable answer structures as part of the question analysis process as it is less reactive to the structure of the question.

– As noted previously, a typical thread of reasoning will have these basic features: i. Gather initial facts needed to proceed (e.g. what rights are there and who has them) iia. Apply relevant test, with branches if ambiguous (or choose branch if likely), and/or iib. Perform relevant action iii. Discuss typical consequences of outcome – The actual fine details can be left for the answer itself.

• It’s worth noting that, like the Q7 example before it, in the Q8 2007 example above having formed a flowchart for your answer (with relatively little fuss), if you are able to extract just one mark from each of these 13 identified stages then you will get over 50% for the question.

The average mark in the actual exam was 32%.

3.2.91 Method 4 • The 4th method is effectively the same as the third, but without the flowchart. In effect, it is simply a method of making notes that you can see would be relevant to such a flowchart, and using knowledge of what such a flowchart would expect to include, and also identifying any curveballs early on.

• The 4th method is illustrated as part of a question and answer example in section 3.4 of the book below.

Second Conclusion A well-structured analysis of a question will help to identify the issues for which marks are available, and will help you to track and balance these in your answer.

Study Guide to the Patents Acts (2021 edition)

219

Reading Ownership of commissioned heater patent.

Rights: Does s39 apply? (Probably not – explain)

Infringement of FR claim Rights: Valid where? Confirm

If employee, does s39(1) apply?

Discuss whether client’s current heater infringes FR claim

Discuss whether commissioned heater infringes FR claim

If contractor, was there an IP clause? Check

If yes, discuss current & future impact

If no, discuss validity of new heater patent

If yes, use s8 or if cordial, assign

Suggest opposition anyway & dates; Discuss validity of FR claim

Discuss any change that is still ‘similar’ to FR heater?

If no, is ‘licence’ good enough? exclusive / assign

FR Infringed ? – validated & in force?

current heater y/n ?

Ownership - s39 y/n? (Prob no)

N - Check if IP clause y/n?

Y - s39(1) test

}

commissioned heater y/n ?

Can client file own version ? (deadlines re novelty)

Y

N

Discuss impact for UK and future

Valid too? y/n

Opposition dates – FR Valid?

N - Poss changes

220

Y - s8 or poss assign

N - discuss ‘licence’

Can client file own version ? (deadlines and suggestions)

Part 3: Guidelines for Taking FD1

Reading

3.2.10 Analysing a part B question – Timelines • Some questions in part B (and for that matter part A) are better represented/understood at least in part by the use of time lines.

• In a similar manner to Method 1, a good way to present a timeline is as three columns; a timeline, facts and descriptions, and law and issues.

• For more complex timeline questions, it can also be a good idea to do a one-minute rough version that lists the dates involved, including any implicit dates that immediately occur to you, so that you can sensibly space out your final timeline.

• For example, suppose that on 2nd November 2019 the following hypothetical exam question was set: “A client filed a UK application on 1st August 2015 without claiming priority.

During prosecution, a unity objection was raised and the claim to invention B was deleted. Meanwhile, remaining invention A is expected to grant soon.

However, the client has now discovered that his competitor is selling invention B and wants to know what steps can be taken to protect his interests.

(10 Marks)” • Hopefully, your answer would include filing a divisional to invention B and various advice on prosecution and infringement matters. However, a considerable number of the marks for this question are to be found in the calculation of dates.

• In this case, it is important to notice that the application is over four years old and hence approaching the Rule 30 period for getting the application in order. The question tells you that the current application is thought to be in order, so this itself is not the main issue. The main issue therefore is how the R30 period interacts with the filing of the divisional.

• Using the date in the question and the date of the exam, the following timeline can be constructed [see opposite].

• The timeline allows you to methodically work out the issues related to filing the divisional, and from that to also methodically present an answer. As will be appreciated, in this case the timeline has been organised to track the current situation on the right hand side, and possible actions on the left hand side. Simply by following the arrows in the time line, an efficient response to the date issue flows out: The Rule 30 period for an application with a priority date of 1st August 2015 is (assuming

timely prosecution) 4 ½ years later, i.e. 1st February 2020. Rule 19(1)(a) requires that

divisionals are filed at least 3 months prior to this deadline, i.e. by 1st November 2019, which was yesterday. Therefore, as things stand a divisional filing to invention B is not possible.

However, the R30 period can be extended as of right by 2 months using Rule 108(2) and

paying the fee, making the Rule 30 period expire on 1st April 2020. The deadline for filing a

divisional therefore becomes 1st January 2020. As this is a bank holiday, under Rule 120(2) the deadline moves to the next working day [2 January 2020].

Study Guide to the Patents Acts (2021 edition)

221

Reading We can then file the divisional (marking it as ‘urgent’ since it inherits the R30 period

of the patent – s15(9)) before this date and preferably as soon as possible.

Since the filing date will be within the last 6 months of the R30 period (i.e. after

1st October 2019), I note that in accordance with Rule 22(6) all the requirements of

s15(10) must be met on filing (including filing claims and abstract, and payment of

filing and search/claim fees), and similarly the Examination/page fees must be paid on filing in accordance with Rule 28(6).

1st Aug 2015 Filing & priority date

R22(6) Divisionals filed 1st Oct 2019

within 6 months of R30

- 6 months

deadline must comply with all s15(10) acts at filing

1st Nov 2019 - 3 months to R30 2nd Nov 2019

1st Jan 2020 - 3 months

R19(1)(a) Deadline for filing divisional is 3 months prior to R30 period

(Today)

2nd Jan 2020 s.120(2) Default period for putting 1st

Feb 2020

R 30 Period 1st

an application in order for grant – R108 Available

April 2020

R30 + R108

222

Part 3: Guidelines for Taking FD1

Reading • Note that this summary doesn’t get tied up in hypotheticals about late exam reports and the like – if these were an issue they would be hinted at in the question.

• It is not mandatory to recite the section and rule numbers in your answer, providing it is clear what you mean. A more detailed discussion of answer technique is deferred to section 3.3 below.

• In conclusion, as a general rule if an exam question uses a specific date (or implicitly revolves around the exam date), then that date will be significant, and a quick timeline may be useful to reveal any hidden issues.

• Clearly, this method could be combined with any of the discussed methods for analysing a longer question.

Study Guide to the Patents Acts (2021 edition)

223

Writing

3.3 Writing an FD1 Answer This section discusses what examiners expect from an exam answer, and how to write an answer that achieves this.

3.3.11 What is being examined • The examiners assume that if you are taking FD1 then you know the law. FD1 is designed to assess how well you can apply that law in practice. After all, if you pass the finals then in principle you could set up shop as an independent practitioner the next day.* • Consequently, what the exam and the examiners are looking for is a safe pair of hands; someone who is capable of assessing a client’s potentially complex real-world problems, and then applying the law to these sensibly.

• Therefore: i. To answer a question, you must properly recognise what situation(s) have arisen and what laws are applicable to them to protect or further your client’s interests; and ii. To get good marks, your answer must actually show how the law applies to the situation in the question and the consequences of this for your client. This requires a very methodical approach to your answers.

• The answer to a question can be looked at from both a micro perspective (individual marks) and a macro perspective (the overall structure). Each is dealt with in turn below.

3.3.21 The three-thirds model • From the micro perspective, one can think of a typical single response to an issue in the exam as having three components. Depending on the question, these may give rise to anywhere between one and three marks: 1/3 The (correct) identification of a relevant legal issue, 2/3 application of the facts of the question to that legal issue, and 3/3 a reasoned conclusion for the consequent outcome.

– Clearly in practice these three parts may end up being widely distributed over your answer, but still need to be included.

• By way of a concrete example, suppose a question involves a junior worker, Mr. X, who invented something in his own time and is upset with his employer for then patenting it.

• A poor answer (from a person who nevertheless seems to know the law) is to say: Mr. X is entitled to the invention.

• Whilst correct, this bald assertion does not demonstrate an application of the law to the facts of the case, and does not demonstrate a reasoned conclusion – two-thirds of the answer is missing and full marks are unlikely.

• So – let’s pull in the law: * Don’t.

224

Part 3: Guidelines for Taking FD1

Writing An employee can keep his invention unless it was made in the course of normal duties of the employee, or it was made in the course his duties and these impose a special

obligation to further the interests of the employer. Therefore Mr X is entitled to the invention.

• This answer uses key words from s39(1)(2) UKPA (i.e. ‘normal duties’ and ‘special obligation’) that embody the legal tests inherent in that section. This signals to the examiner that you have identified the relevant tests. The use of key words from the act in this way is strongly recommended. Use of the word ‘therefore’ or an equivalent appears to signal that you have used that test to reach a conclusion. So on the face of it, this might feel like a good answer.

– However, where are the facts of the question? Have they been applied to the law? Is reasoning really shown here? The same answer could be written by reciting the statute and then tossing a coin.

• So – let’s combine the law with the facts: The invention was not made as part of Mr X’s normal duties and he does not appear to

have a special obligation to the firm. Therefore, he is entitled to the invention by default.

• The key words are there, and so is Mr X. All the statements made are correct. However, that is all they are – bare statements. They apply the facts to the law, but do not give reasons why each statement is true. This answer therefore only shows implicit reasoning.

• So – including the law, the facts and reasoning: Mr X is entitled to the invention by default because it was made in his own time and

therefore not as part of his normal duties, and because he is a junior employee and so does not appear to have a special obligation to the firm.

• This is a good answer. It clearly applies the facts of the question to the relevant law, and justifies the stated conclusions. It’s also worth noting that it’s actually shorter than the rotelearnt response in the second version.

• These four answer styles can be characterised as follows: i. Bare assertion; ii. Recall and coin toss; iii. Implicit reasoning; and iv. Explicit reasoning.

You should be aiming for type iv, in whatever form the actual answer takes.

• There is of course a balancing act between showing explicit reasoning and re-writing the whole question in your answer. Avoid superfluous elements of a question in your answer, and if you tend to ramble then consider answering using bullet points for discipline: – Mr X is entitled to the invention by default, since

– it was made in his own time, – so not part of his normal duties; and

– he is a junior employee, – so has no special obligation to the firm.

conclusion, based on fact input, justifying test’s output, and fact input, justifying test’s output

• Keeping your answers brief keeps them clear for the examiner and also minimises the time penalty incurred when a point you make doesn’t earn a mark. It’s worth bearing in mind that the exam uses a positive marking schedule, meaning that only points listed on the

Study Guide to the Patents Acts (2021 edition)

225

Writing schedule gain marks. As a result it is possible to recite valid points that are not awarded marks in one year / question despite being awarded in another. Therefore try to keep individual points concise.

Third Conclusion If you write relevant statements establishing facts, applying legal tests, and demonstrating reasoning, they will probably earn you marks. Try to ensure that at least one ‘therefore’, ‘because’, or other indication of explicit reasoning with respect to the facts in the question is clearly present when making such statements. To keep your answers manageable it is also a very good exam technique to use key words from the statute to signal your selection of the relevant legal tests in an unambiguous but economic fashion.

3.3.31Gaining marks – Legalistic vs. Practical answers • Given the above discussion of what constitutes a well-reasoned response, and preferably with reference to a good structural analysis of the question that indicates what responses are needed, you will have a rough idea of how many of the core marks you have addressed in your answer.

• However, often the immediate problem in the question clearly does not generate enough marks on its own. An example of this can be seen in the following toy question: “A new client, Mr Goldfish, phones you up in a panic because he’s got back from holiday to find that he did not request a search of his patent application by the due date, which expired last week. What would you do?

(3 Marks)” • An answer that successfully demonstrates an application of the law to the reported situation and indicates the outcome, thereby earning yourself one mark, is

– “To remedy the situation, within two months of the expired due date request an

extension as of right and pay the extension fee, request the search and pay the search fee and any excess claim fees”.

–

But where are the other two marks?

• The other two marks highlight the fact that FD1 is a practice paper, not a legal paper per se.

• Leaving aside one’s own registration as a representative, one may decide that the other marks are in your knowledge of the law, and try the following:

i. To remedy the situation, within two months of the expired due date request an extension as of right under R108(2), pay the extension fee, request the search and pay the search fee any excess claim fees.

ii. If necessary, a discretionary further extension is also possible under R108(3) if applied

226

Part 3: Guidelines for Taking FD1

Writing for within the two months.

iii. Finally, if the above two options are unavailable, then because Mr Goldfish’s

forgetting of the request appears unintentional, it should be possible to reinstate the application under s20A.

•

•

•

•

– This may even feel like a good answer, since Mr Goldfish’s forgetfulness and panic seems to tie into the use of s20A. The problem is that these two additional points are of no practical value to the client whatsoever in the given situation – if you do step i., then as the answer itself says you have remedied the situation and hence the other two points are moot. Consequently, you would still only get one mark, and worse, waste your time (particularly if you don’t keep your answers brief) and make the examiner wary of your approach to future questions.

So in this case we are compelled to look for other marks. Recall the examiner’s expectation that you must recognise what situations have arisen and what laws are applicable to them to protect or further your client’s interests.

Hence a practical approach is to recognise that the situation might be broader than what your forgetful client has reported. The question suggests that the client didn’t do anything at 12 months. Therefore, a good chain of reasoning would check through what other actions should be completed by this 12-month deadline.

A practical answer that properly safeguards Mr Goldfish’s interests would be: i. To remedy the immediate situation, within two months of the expired due date

request an extension as of right, pay the extension fee, request the search and pay the search fee and any excess claim fees.

ii. As Mr Goldfish seems forgetful, also determine whether he has overlooked either of the following, also due by the same 12-month deadline: a. filing claims and an abstract; and b. paying the application fee.

If necessary, each can be remedied with a respective request of an extension as of right and fee, and completion of the respective act(s) within two months of the missed deadline.

• This answer clearly demonstrates recognition of a potentially broader situation, addresses the legal issues that arise from it, and notes the outcomes. It would get the 3 marks for addressing the three possible omissions.

• Note that you could go overboard and start discussing late convention filings, but whilst in principle this is also a 12-month issue note that there is no hint in the question of whether it is relevant, and more significantly no information is made available to whittle down such an open-ended issue (filing where – US? JP? EP? PCT?). In general avoid constructing hypothetical problems such as this that go beyond the remit of the question, as it will simply waste time (it’s a fair criticism that this example does so itself to a certain extent, albeit in order to allow examples of both legalistic and practical answers from a short question, but in this case the search is also justified by the available 3 marks).

• Understanding what the remit of the question is, of course, requires some practice and an ability to properly analyse the question, as discussed in section 3.2 above. In the present case, if in addition Mr Goldfish was phoning from Taiwan and said he wanted worldwide

Study Guide to the Patents Acts (2021 edition)

227

Writing protection and the question was for 6 marks then a discussion of convention filings may be appropriate, but not in the toy question above.

• Another point worth making is that you would not get any marks for saying ‘I would not have overlooked the search request in the first place’. This is just another hypothetical position, albeit one that simplifies rather than complicates the problem. In general, accept the situation as it is presented; if the question is actually about dubious facts, this will be clear within the framework of the particular question.

Fourth Conclusion If a part of your answer appears to protect or further the interests of your client (including any necessary evaluation, analysis or clarification of a situation in order to provide subsequent practical advice), then it is likely to be worth marks. However, if it simply devolves into law for law’s sake, then this is much less likely.

3.3.41The Bigger Picture • The discussions above relate to how to deal with single issues; a single question of employer / employee ownership, and a single missed deadline. They illustrate that the law can provide a good structure for an answer (e.g. in the case of employee ownership) or that common chains of reasoning can guide an answer (in the particular case of a missed deadline above).

• A typical part ‘A’ question will deal with one such issue more fully, or two related issues (such as in the missed renewal fee example recited in section 3.2.1 of this book). There will be facts to gather or derive, and these facts are applied to aspects of the law to determine the current state of affairs, and what the outcome of any remedy might be. You then provide clear advice on what to do, and note any consequences.

• As noted previously, the sentences in Part A questions are generally all relevant to one of these steps, either flagging up what issues are relevant, what aspect of the law (or particular branch of a section) may be involved, or providing facts relevant to one of the current situation, the remedy and/or the consequences. Analyse a question with this in mind.

• For part ‘B’ questions, the law hasn’t changed, just the breadth or depth of the issues. Hence we now move from the ‘micro’ perspective to the ‘macro’ perspective: • A question’s depth may be obtained in several ways. Many parts of the law have conditional outcomes, and so exploring these for different conditions can result in a compact but deep question. Examples of this include inventions made during different employment statuses in an ownership question, or applying the circumstances of different infringers to the questions in s60(1-3) and (5). This tactic can also be seen in questions having multiple claims, or items for sale, or prior art to compare in an infringement / validity question. Depth can also be increased by adding consequences, such as third parties infringing at different times during restoration of a patent, licensees or co-owners affected by an entitlement issue, and so-on. Depth for any of these may in turn be increased using the complexity of a timeline. Depth is often increased by including ambiguity for at least one step in a legal

228

Part 3: Guidelines for Taking FD1

Writing

•

•

•

•

•

process, inviting discussion. Meanwhile, some issues naturally lend themselves to in-depth questions, such as the various tests in s70A-F (threats).

Individually, these issues are no more difficult to tackle than the single issues in a part ‘A’ question – but they need be identified in your analysis, and you need to have developed an appreciation of the common threads in law and reasoning that these deep questions follow.

‘Breadth’ can be obtained by linking separate issues together. For example, you may need to address a priority problem or a restoration problem before it is then possible to move on to an infringement issue.

Stretching the analogy somewhat, the Examiners need to construct questions whose combined ‘depth’ and ‘breadth’ have a total ‘area’ of 25 marks. Hence you might end up seeing, say, three issues in a question, but one will be ‘deep’ and account for 15 marks whilst two will each broaden the question out by 5 marks. Trust your analysis of the question, and don’t assume that there are equal marks for different issues.

To start this analysis from the top-down, it is useful to step back from a question after reading it, and ask: ‘What is the big picture in this question?’ Characterise the question using a couple of bullet points, as in ‘variations on employment, plus licensees and disclosure’, or ‘threats; ambiguity about whether recipient was the importer’, or ‘variations on infringement by product, no threat, one case may be just experimental ‘. Identify the main issues and the main talking points for these issues, as these will be where the core marks are. Then perhaps even briefly sketch out the branches and threads of these issues as per method 3 above. It’s not unreasonable to spend 5-10 minutes preparing to answer the question in this way.

As was discussed in section 3.2, it is possible to anticipate the structure of an answer once you know the big picture. However, in general the key stages will be to: – Firstly, establish the facts of the current situation (using any time lines, legal tests and justified assumptions necessary); – Secondly, identify and use whatever legal steps are appropriate to solve the problem(s) posed by the current situation and/or to identify the consequences of the current situation (or your solution); and – Thirdly, provide sensible advice on what needs to be done either to apply the solution or identify/mitigate any risks.

By breaking the answer down into such a structure or template, it becomes tractable and more like a logical sequence of Part A questions, hopefully with an attendant collection of marks.

3.3.51 Example Answers for FD1 2007 Q7 Consider attempting FD1 2007 Q7 yourself before reading this section (though this is not essential). If necessary, attempt it open-book and without time constraints. Don’t worry about leaving this exam paper ‘intact’ for later revision as it will be useful to learn about your own answer style early on – if and when you do the 2007 paper again properly, you will find you only half-remember the question anyway. I would also recommend prioritising more recent papers for practice purposes.

Study Guide to the Patents Acts (2021 edition)

229

Writing • The following example answers are intended to be equivalent, in the sense that they are based on the same analysis of the question and so pick up on the same issues.

• Three versions of an answer to FD1 2007 Q7 (as analysed in section 3.2 above) are presented.

• The first version is a reasonable and realistic answer. Notably, in addition to answering the question, the answer also indicates to the examiner what parts of the answer are being dealt with at any time and also any assumptions that the answer is based upon. This enables the examiner to clearly determine both where you are in your answer structure and where you are coming from with your approach. Such a clear answer structure (together with a clear question analysis) also gives you a good idea of your progress against the clock.

• By contrast, the second version caricatures a failure to demonstrate reasoning and a tendency to reach conclusions or advise actions without substantiation. In principle the hypothetical author of this answer knew the same amount of law as the author of version 1 and was using a similar analysis. Thus whilst it is clear to the reader that the author of the second version knows a similar amount of law, it will be very difficult to award them a comparable number of marks. In addition as a side effect of this brusque approach, some discussion points raised in version 1 that were worth marks are not explicitly discussed at all, further penalising the author.

• The third version replicates the reasonable answer of version 1. In theory the person writing this answer is capable of earning as many marks as the author of the first version, but in practice almost certainly won’t because otherwise valid marks are buried in a morass of waffle and extraneous analysis, and fail to use key words and phrases from the statute to signal to the examiner what is being thought. This is then compounded by poor presentation and poor organisation of the answer itself. Read it and then do yourself and the poor examiner a favour by avoiding this writing style.

FD1 2007 Q7, Version 1 Q7 Radio 1 Analysis:

Client’s employment status in own business and the relevance of Radio 1 to that business are unclear.

– Need to be resolved to determine if consequently he had a special obligation (since would be very senior) that confers ownership of invention to his business.*

– In any event, note that the client either owns the invention directly or via his business.

Improve Situation:

Request details of business and duties of employment (if any), then if necessary sort out any assignment to the desired party.

File an application for Radio 1

– provided June meeting was confidential (else Radio 1 disclosed) – Conclude was likely confidential since Radio 2 was filed

230

Part 3: Guidelines for Taking FD1

Writing Advise filing before Radio 2 app is published: ~ 7/06+18m = 1/08, to avoid this being citable for inventive step against Radio 1

– Note to client that Radio 2 will be citable for novelty – significance is a question of facts.

– Nonetheless in meantime should improve client’s bargaining position with MMR.

Radio 2 Analysis:

Request minutes/breakdown of the June ’06 meeting to determine who contributed to Radio 2, and to confirm confidentiality.

– Note client writes ‘we … overcame’ - therefore I will assume some relevant input from MMR

– So conclude Radio 2 jointly invented by client and MMR. Consequently client is rightfully a joint applicant with MMR

– Can work invention independently once this is sorted out – But can only license / assign with permission of MMR – As an individual this would be the realistic option.

Whilst a job offer is not a payment, check with client if any agreement was signed – Assume not for purposes of question.

Actions re financial reward:

Request that client is added as inventor under s13(1). Form 7/77 not due until 7/06+16m=11/07

– So ask MRR to include client as co-applicant now as simple to do.

– Preferable to keep MMR cordial.

– Either request agreement permitting client freedom to license / assign, or simply offer to assign share back to MMR for a reasonable sum.

If MRR won’t add client, use entitlement proceedings to become joint applicant – Use s8 for UK app

– Use s12 for US app.

If facts actually indicate client is sole owner of Radio 2 then request a transfer from MMR or if uncooperative start entitlement proceedings as above.

Radio 3

Analysis:

Client now in a ‘senior position’ at MRR, and so likely to have a special obligation to

them for any relevant inventions. Also, as a researcher, inventing is likely to be part of his normal duties. Request employment contract to confirm.

Study Guide to the Patents Acts (2021 edition)

231

Writing Thus it appears highly likely that Radio 3 is owned by MRR since relevant to firm and invented by client at work.

Actions re financial reward:

Seek employee compensation in case where employer is owner – s40(1) – Requires:

– Patent or invention to be of outstanding benefit – This is unclear from question – investigate.

– Must consider size of MRR and how much of benefits obtained are down to MRR’s own contributions (e.g. marketing)

– Can be difficult to quantify, esp. if ex-employee

– Also note Radio 3 currently an application, not patent – must wait until grant: consider filing caveat to be informed

– Note that historically this requirement is hard to satisfy and a payment is unlikely.

Mobile Phone Analysis:

I assume ‘the technology’ refers to the improvements of Radio 3, as transferred to mobiles.

Client invented in spare time.

– So client owns invention,

– Possibly, unless has special obligations due to seniority.*

Consider both possibilities: Actions re financial reward:

i. If MRR owns invention due to special obligation, client can use s40(1) as per Radio 3, with similar requirements.

– This time, we know the patent is worth £10m

– Therefore it’s easier to quantify the benefit of the client’s contribution with respect to other factors outlined previously. Success will depend on facts.

– Again must wait for grant – Consider filing a caveat.

ii. If the client owns invention, then confirm that they validly assigned to MRR for £1 (note £1 is enough for a valid assignment).

– If not valid for any reason, then still own; consider entitlement under s8.

– If win under s8, MMR’s licence with Colour Mobile lapses – licence with client on similar terms (s11(3)).

232

Part 3: Guidelines for Taking FD1

Writing Assuming valid assignment, then seek compensation in case that employee is owner and assigned to employer – s40(2)

– has lesser requirement that compensation (£1) is ‘inadequate’ re benefit to MRR.

– Strong argument that £1 is inadequate re £10m benefit of patent, and so this seems a promising option.

– Again requires granted patent, so file a caveat.

Note that in this latter case, a strong position may also improve bargaining re Radio 3 and Radio 2.

* It is worth noting that in principle if a client makes an invention in their spare time then it is not part of their normal duties, including where those normal duties confer a special obligation to further the interests of the employer. However, this is not so clear cut in case law, and in FD1, in particular for senior employees where the bounds of normal or special duties may be blurred, it is best to explore both ownership possibilities in order to mine for marks.

Missed marks: • I missed the following points (each worth a mark) when attempting the question: i. In addition to assignments, check for any contractual obligations on the client following the June meeting (e.g. ongoing confidentiality); ii. Co-owners can license independently in the US; iii. Look at the Radio 2 application when published to gauge client’s contribution; iv. Request to file a replacement application for subject-matter of Radio 2 owned by the client.

• Of the remaining marks, roughly 18-19 are identifiable in the answer. In 2007, the average score for Q7 was 11. Typically, a score of 18-19 should be achievable for most part B questions if you have enough knowledge to pass part A, perform a careful analysis of the question, and understand how the examiners build up the marks.

FD1 2007 Q7, Version 2 Q7 The client probably owns the radio 1 invention as he invented it in his spare time, and he should file an application for it ASAP to beat any future disclosures. If his business does own it, then of course he owns the business anyway.

Check any minutes to confirm the client and MRR invented radio 2 together at the meeting, and so should be joint applicants as per s36. I will register the client or failing

that use entitlement proceedings (s8 for UK, s12 for US). The client can only make money

Study Guide to the Patents Acts (2021 edition)

233

Writing from licensing/assigning his share with MMR’s permission, so probably easiest to offer back to MMR.

MRR own radio 3 since the client was a senior employee when he invented it. You can get

employee compensation for an employer’s patent under s40, but it’s difficult to prove you are entitled to it.

It ’s not c lea r if t h e c l i en t o r MRR o wns t h e Mo b i l e Pho n e i n v en tio n . If MRR o wns t h e i n v en tio n, t h e n t h e c l i en t c a n us e e m plo ye e co m p ensa tio n un d e r

s40(1) as abov e, an d t his t i m e h e c a n argu e fo r co m p ensa tio n based o n t h e pat en t b e in g wort h £10m. Bu t if h e o wn ed t h e i n v en tio n, t h e n argu e tha t £1 is not en ough co m p ensa tio n fo r a £10m pat en t, us in g s40(2).

Marks: • It is actually quite difficult to predict how many marks Version 2 would get. Part of the reason is that whilst some facts are correct, e.g. you can get compensation for a patent (but not an application) under s40, due to the lack of explicit reasoning it is unclear if this is deliberate or accidental on the part of the candidate. It would be very surprising if this made it near 10 marks.

FD1 2007 Q7, Version 3 Q7. My client developed his digital radio in his spare time, and so does not seem to have developed it when working for his business, though it isn’t clear if he worked for his

business (though if he did he’d probably count as a senior employee) or just owned it or indeed if the business was involved with radios in the first place, so it’s not clear if he or his business own the invention. If he owns it, then we need to check that the

meeting with MRR was confidential and so he didn’t end up disclosing the idea to the

public – of course this also true if his company owned it – but if it was not disclosed then either he can file an application for radio 1 in his own name or sort out filing

it in his business’ name (or transfer it to himself) if his business owned it. It would be best to file it before anything to do with radio 2 is published, so we should watch

for publication of the radio 2 application in around January, though of course this publication is based on an earlier filing and so can be used for novelty against radio 1

in any case. On balance the client should still file an application anyway as it might put some pressure on MRR. – The meeting in June 06 probably was confidential since radio 2 got filed, so filing should be OK. At the meeting, it seems as though the client

and mega radio both found there were problems with radio 1 that needed solving, and

came up with radio 2. It would be helpful if the client could provide any confirmation about who contributed to radio 2, but it seems as though it was probably both of them

so I think that the client should be named as an inventor on the radio 2 application. He

234

Part 3: Guidelines for Taking FD1

Writing may want to also become a joint applicant on the patent applications, and so he should

talk to MRR about being added in, preferably before the statement of inventorship is due in November this year. As a co-owner he can trade in the application with MRRs

permission. I should check that he didn’t sign any agreements about ownership at

the time or when he got the job at MRR, but if not then he can also make the radio himself though he may not have the ability to do so. Maybe he should consider selling

his share to MMR instead. If MRR don’t want to cooperate then he can use entitlement

proceedings, remembering that the US application requires separate entitlement proceedings. If the minutes of the June meeting show that the client was the sole inventor of radio 2 after all, he should either request a transfer from MMR or if they

won’t cooperate then again entitlement proceedings. After the client became a senior researcher he invented the method of improving sound at low signal levels for radio

3 but he would probably be expected to invent such things and also may be required

to let the company have it anyway; I can check his contract to confirm. He should check for when the patent is granted as he will be unemployed by then and so should

consider seeking compensation from MRR since he will not really be in a position to

benefit from the invention’s success. However this can be very difficult to do especially

if as in this case it is unclear how much of the radio’s success is down to marketing and suchlike or in fact whether the development of the radio has even lead to anything

valuable yet, so he should not hold his breath. Then at some point when at home the client realised that these improvements could also work in mobile phones, but he is a bit unsure about the details of how come MRR ended up owning the invention. It’s

possible that MRR owned it because he was a very senior inventor at the time in which

case he can again consider seeking compensation from MRR at grant, but this time he

can point to the license being definitely worth ten million pounds, which would seem to rule out most of MRR’s involvement in terms of marketing, etc though of course it may be that if the client as an individual had had the patent then Colour Mobile would not have been interested in talking to just him or have much confidence in the invention so it is still hard to quantify how much of that money is down to MRR and

its licensing team, so again he might run into difficulties with this. He’ll need to wait until the patent is granted anyway to find out. Of course it is possible that despite

being senior he still owns the invention, and I will ask the client to be more clear about what papers he signed about this and whether he really received the commemorative

coin. I think that you probably don’t dream up stuff like that so he probably assigned it to MRR, so once the patent is granted he can argue that the one pound is not very

much when compared to the large amount that Colour Mobile are willing to pay for a licence under the employee-owner compensation law, but if he didn’t then he could

sue for ownership and then licence to Colour Mobile himself. I think that the client could probably use this issue to apply some pressure to any discussions regarding radio

3 or 2 that come up and so these should all be orchestrated carefully. I think that this will help the client to secure some reward for his inventions in the UK (and the US) by improving his position on the radios and mobile phone.

Study Guide to the Patents Acts (2021 edition)

235

Writing Marks: • The likelihood that all the marks available from Version 1 will be awarded to Version 3 are low.

In particular the incoherence of Version 3 often obscures the intent of a point and, coupled with the poor use of language from the statute, may cause a point to be discounted as unclear or just be overlooked. Of course, in practice this unstructured approach is also likely to cause the author of Version 3 to forget to include parts of their answer (unlike in this example) as they follow a stream of consciousness through the issues of the question. They are also more likely to run out of time.

• Consider reading the three sample scripts from the PEB website to see three further versions of this answer, each of which passed to a greater or lesser degree. Among other things, it is useful to note that there are several ways to structure the answer, as well as the differences in writing style.

3.3.61Summary – Writing an Answer • Use the ‘big picture’ and your question analysis / answer template as a guide and as a checklist.

• Tell the examiner where you are in your answer and what you are thinking.

• Where appropriate use the three-thirds model to structure individual elements of your answer.

• Focus on practical analysis and advice for your client… … based on the client’s goals and the directions at the end of the question.

• Keep each point concise and separate.

• For your notional client: – assume they are an intelligent but lay person, – explain the current situation where needed, – explain what needs to be done and why, based on the situation as given/derived, – explain the outcomes, – explain the risks, and – enable them to make a reasoned decision based on your advice.

236

Part 3: Guidelines for Taking FD1

Worked Example

3.4 Worked Example Worked example using method 4: • As noted previously, Method 4 is a rather grandiose term for applying the reading comprehension techniques of methods 1 and 2 and the legal template analysis/answer structuring of method 3. To illustrate this, I sat Question 7 of the 2015 paper blind, as reproduced below. Hence the following is a reproduction of Question 7 interleaved with what I actually noted down as I went, in cursive script. My thoughts at the time (in italics) and any additional commentary are provided on the right.

• As with the previous worked example in section 3.3.5, consider attempting FD1 2015 Q7 yourself before reading this section. If necessary, attempt it open-book and without time constraints.

FD1 2015 – Question 7 1- During due diligence on behalf of a UK client for the potential purchase of another UK business, you identify a third-party patent family which may be of significance.

1. Infringe? re 3rd party

Due diligence ≈ infringement checks.

So – will need to look for rights available, parties, possible infringements, remedies

2- The business which is under consideration designs and manufactures highly customised large industrial microwave ovens for ceramics factories in the UK and elsewhere in Europe.

2. Parties – client?, target business MWaves for ceramics in UK and EP

Don’t be put off by the exam’s window dressing – it’s going to have to relate to the law you know. In this case it’s going to basically mean ‘infringement’ but where the patentee may not know about it (yet).

3- Technically, the ovens have remained largely unchanged for a number of years, but in the middle of last year the business discovered a new coating for the inner surfaces. Due to an error the usual coating had become contaminated with small amounts of tin, and it was observed that the efficiency of the oven had been increased due to improved internal reflection of the microwaves.

3. Accident > tin coat > obviousness? No? 4- Further investigation identified that lead could also be used to achieve a similar effect. Since lead is much cheaper than tin, the business is planning to exclusively use lead containing coatings from the end of the year. From January 2016 lead coatings will be used in all ovens which are sold.

Study Guide to the Patents Acts (2021 edition)

Current product largely unchanged – good!

Accident with tin coating – any impact on obviousness of 3rd party patent? ‘Error’ more likely a pointer to being unexpected Possible infringements or alternatives? What about before Jan 16?

237

Worked Example 4. Investigate > lead too, cheaper Plans to use lead ‘exclusively’ from Jan 2016.

Not clear if sold any using tin. Investigations prob exempt

(Numbering paragraphs can make referencing them in your notes easier).

5- The third party patent family is in the name of Microplus s.a. (MP) a French manufacturer of domestic microwave ovens. The patent family has two active cases, UK patent GB1 and European patent application EP1 which were filed in October 2013, claiming priority from an identical earlier French application FR1 which was filed in October 2012 but has now lapsed. GB1 and EP1 published in April last year, and while GB1 is in English, EP1 is in French.

5. 3rd party patentee ‘MP’, make FR domestic mwaves Publication is before target firm’s discovery (from timeline) Note EP1 pub in French

Did a small timeline here (see section 3.2.10 above for separate discussion of these).

FR1 is just there as means to create GB and EP sister patents.

Don’t worry about trying to revive a lapsed French national patent, since don’t know how.

They bother to mention & juxtapose the publication languages – make a note, it’s probably important

6- GB1 and EP1 describe and claim microwave ovens with internal coatings containing silicon, tin or lead.

Silicon and tin containing coatings are said to be preferred since lead is less desirable in domestic ovens where food may be cooked. The only example demonstrates an improvement in oven efficiency for tin only.

6. silicon, tin and lead in spec Licence lead?

Support for Si / Pb?

Coatings of silicon, tin and lead MP unlikely to use lead for domestic mwaves = hint to licence since not direct competition?

Tin only – Support issues for Silicon and Lead?

7- A literature article cited against GB1 showed that silicon containing coatings may be poor reflectors of microwaves, MP then limited the claims to microwave ovens using tin containing coatings and the application then proceeded to grant.

7. Granted GB - only claims tin

Does this affect EP too?

8- The European search report did not identify the literature article and the written opinion of the EPO was entirely positive. Nevertheless, when requesting examination MP has limited the claims and description to microwave ovens using silicon or tin containing coatings. It appears that a notification of intention to grant can be expected at any time.

238

Need to worry about EP for lead?

EP limited to silicon and tin at the mo. Expected to grant at any time – should replace GB & so expand coverage from just tin.

Grant without lead ? Good.

NB can still add lead!

Opposition re silicon literature or Support issues?

Part 3: Guidelines for Taking FD1

Worked Example 8. Will add silicon to GB rights Can still add lead pre grant – NB launch timing Oppo re Si lit or support 9- Write notes for a meeting with your client, considering what issues arise and what options are available?

9. Brain Dump – past / future, diff metals, investigations, French pub, amendments, launch timing, licences, opposition

So – I’m primed to think about existing and potential infringements, the affected parties, and what MP could do to make things worse, and what we could do to avoid / mitigate that.

Jotted down the most obvious likely issues as a more compact aide memoir. Didn’t worry about a particular order.

• The result is a sheet of basic notes summarising facts/issues in each paragraph, and an appreciation that the question is basically an infringement/validity question with a few likely curveballs relating to publication languages and opposition grounds.

• The window dressing aspect of the question is that it is effectively split into what tin/lead activities might have already infringed, and what tin/lead activities might infringe in the near future. There are some obvious validity issues to discuss, and probably some commonsense discussions about timing your launch or licencing if necessary.

• We can now decide on a basic answer structure based on an infringement and validity template.

• The big picture is that it is an infringement and validity case, and there are several ways to slice the structure up: GB/EP (poor, since overlap); tin/lead (better, but can foresee complications with timing and missing out any discussion of silicon, esp. re opposition) and past/future (helps with identifying actual vs potential infringements, and note that the types of infringements appear different in past vs future). So let’s choose past vs future, and then GB and EP for each.

• So we can anticipate a structure as follows: 1. Establish facts of situation (in particular, rights) 2. Infringement, past and future, for those rights 3. Validity of those rights 4. Common sense advice based on the above • The following is then a reproduction of my answer to the question, again with additional commentary provided on the right.

Study Guide to the Patents Acts (2021 edition)

239

Worked Example Establish facts – MP’s rights: MP have granted GB patent covering tin.

Check if renewal fees paid / patent is still in force.

- If so then note MP can enforce this patent immediately.

Tell the Examiner what you are doing. The first step should always be to clearly figure out and state the current situation.

So first establish MPs GB rights & low hanging fruit re consequences.

MP have EP application covering tin and silicon.

Can still be amended to cover lead at this stage.

But unlikely unless MP are given reason to do so, since bad for domestic MWaves and MP expect imminent grant as-is

Speculate on MPs future EP rights that will become relevant soon.

Note the additional discussion of MP’s motives is reasonable, but there were no marks for this comment.

Note EP(GB) will replace current GB at grant; effectively broadens scope of GB to tin and Si (current GB cannot be amended to broaden claims after grant).

Make some sensible points about what might grant where and impact on MPs rights

EP grant imminent – can expect before or shortly after target firm’s product launch – so monitor EP1 to check for grant.

- If infringe, monitor where in Europe it is validated re overseas sales.

Provide sensible suggestion to monitor EP1 grant & validation. Could leave to end but would probably forget.

Infringement - Any existing liabilities for target company?

Move on to next part of answer, relating to past & present infringement. Tell Examiner.

Check if MP’s claims limited exclusively to domestic MWaves in some way.

- Assume not.

Again, establishing facts relating specifically to infringement.

Where clear answers are not available to sensible questions, make assumptions that progress the answer.

240

Seems to conclude basic ‘current’ situation. It’s a bit different to normal because there are current and future rights involved, but clearly all within timeframe of question.

Part 3: Guidelines for Taking FD1

Worked Example For GB1, possible existing infringements would have to relate to tin.

Tin discovery in ‘middle of last year’, so after April publication of GB1 - So no prior use defence.

Starting with GB1: Relate infringements to claim scope (what). In this case, also relate infringements to timing (when).

Consequences (note prior use must occur before priority date, not publication – poorly worded on my part).

Not clear if target firm sold tin MWaves before end of year.

- Ask for clarification.

- If sold, then could be liable for s60(1) infringements in UK back to date of publication – published claims had reasonable expectation of granting, and infringing portion (tin) same at publication and grant.

- If not sold then no infringement for sale etc

Now look at firm’s activities and make sensible conclusions based on law. Questions are often deliberately ambiguous – consider both outcomes.

Invoking s.69 here. Probably should have listed the s60(1) infringements or used ‘Moduik’ shorthand.

No harm stating the obvious sometimes.

Note any ‘investigations’ likely be exempt under s60(5) as experimental regarding any actions for tin (or lead).

Looking at what else target firm did in the question, by way of mopping-up this section, and commenting appropriately.

For EP1, note that French publication only.

Move on to EP case in second branch of infringement part of question.

Again s69 is relevant; I should have added ‘because rights only available from publication if in English’ – hence I only gave implicit reasoning, having already discussed publication in some detail for the GB case.

The potential cost of implicit reasoning has been noted previously in this book. It’s easy to do, so be vigilant.

Therefore, target firm not liable for any potentially infringing actions before grant in UK under EP1(GB), once it replaces GB1.

But clearly relevant in France, where sales of tin (or SI) would infringe back to publication.

- Check if target firm sell elsewhere and discuss other validated states with o’seas associates as necessary.

Study Guide to the Patents Acts (2021 edition)

Note European impact but don’t get tied up in whether it’s going to be a problem in Monaco or some such. Know when to stop.

241

Worked Example Future Liabilities: Vary depending on whether MP amend EP1 to cover lead

Move on to future infringements. Again, inform the Examiner.

- Note EP1 description has been amended to remove reference to lead. If deleted without prejudice, could be reinstated before grant - If lead claimed, may not incur damages since publication if not reasonable to expect grant.

- Previous investigations for lead likely s60(5) exempt as experiments in any case - But would seriously impact target firms plans for future.

- MP could also file a divisional to lead before grant

Classic set of what-can-thepatentee-do-and-what-effectswould-this-have list.

If lead claimed & granted, could seek a licence: - MP may be amenable since would not be direct competitor (can’t use lead in own products).

Consider outcome so can talk about dealing with it sensibly.

This bit of advice flows naturally from the discussion, but try to corral advice in final section. Make notes as you go.

Validity of GB1

Move on to next part of question – Validity

Question whether sufficiency for Si since only worked example is for tin; however claims only directed to tin so assume likely valid. However, note GB1 will be replaced if EP1 grants as expected.

Looks like GB1 is probably valid, so client might be liable under GB1 if sold tin lining MWaves

Validity of EP Similar issue re sufficiency for Si claim since only worked example is for tin. Similar issue for lead if claimed. Problem for Si underlined by literature article not cited against EP case.

Possible that only tin claim is valid, but depends on the precise facts.

- Therefore, possible would not infringe any enforceable claim for EP1: - Tin published in French, may have not used / ceased use before grant, - Lead possibly not valid at grant.

EP1 tin is probably valid.

Silicon and lead may have sufficiency problems. Case against silicon probably stronger. Case against lead may depend on whether content of EP1 clearly points to food preparation, for example.

Summarise, but cannot call the result for certain.

242

Again s69 possibly relevant Some actions possibly exempt …because firm would infringe lead under s60(1) for sales after grant. Implicit reasoning again.

Part 3: Guidelines for Taking FD1

Worked Example Actions and Advice

Move on to last part of answer and tell Examiner

Target firm might infringe GB1 if sold tin lined MWaves after GB1 published. Note GB1 will be replaced by EP1(GB) ‘soon’, which tin MWaves would not have infringed (since pub in French).

- Get target firm to indemnify client against damage/costs for any possible infringements

Clearly inform of any bad news. Probably should have spelled out possible consequences here.

EP1 could be amended to include lead, or a lead divisional could be filed, before grant.

- Therefore, advise waiting until EP1 grants before launching / publicising lead lined MWaves – MP can’t add lead or file div after grant – can continue with current ‘unchanged’ product in meantime. MP then has not motive to add lead claim at this stage.

- So set up watch on EP1 as noted earlier

More bad news

Consider filing an opposition within 9 months of the grant of EP1, citing the validity issues mentioned earlier – sufficiency is valid ground

Whenever an EP grants within the timeframe of a question, think about opposition. Again, it’s a matter of knowing when to stop – you could invoke a ‘squeeze’ argument here that if tin provides sufficiency for silicon/lead then silicon article may be obvious for tin/lead – but we are at least two levels of speculation in already, so probably time to stop. Expected opposition would be a bigger part of the answer, but if follow advice, then unlikely to be on the hook for EP1 infringement of lead anyway. Meanwhile the validity issues that would list as grounds are already covered.

If client in same field as target firm, also check they don’t infringe MP patents

Study Guide to the Patents Acts (2021 edition)

Action for client to mitigate possible consequence

Common sense plan to avoid it

243

Worked Example Post Mortem • Q7 was a fairly standard question; basic infringement law plus a couple of related curveballs – In particular, an emphasis on rights at publication, plus speculation on what MP may be able to assert in due course and what may be valid. Past and future events made organisation important.

– Hopefully gained some inkling about these issues when making notes at the start.

• I used a ‘standard’ infringement answer approach: – Establish facts; existing and possible future patent rights.

– Identify existing and possible future infringements.

– Determine validity of rights.

– Discuss consequences and give relevant (but fairly standard) advice.

• I tried to use all the information in the question, as follows: – “I’m currently discussing X. What could be relevant to X in the question?”.

– And occasionally: “I haven’t yet used Y. What issue would Y be relevant for?”.

– particularly if mopping up near the end of a section in the answer • I addressed the curveballs as they naturally arose: – E.g. whether s69 applied for infringement after publication, speculations on EP1, and second-tier issues such as exemptions, prior art and sufficiency, and business issues relating to the window-dressing of the question (e.g. when to launch product).

• Conversely, I avoided going down several rabbit holes: – E.g. FR lapse, Overseas situation, Opposition overkill.

• It should also be clear that there wasn’t much to say about the infringements themselves.

– I.e. Not much on sections 60(1), (2) or (3), beyond noting that sales are infringements, and non-commercial experimentation generally isn’t. Again, know when to stop.

• There were some easy marks I missed: – I didn’t explicitly state that EP1 is not enforceable until publication of mention of grant.

– I forgot a standard recital of remedies for MP if infringed (damages, delivery up, etc).

– I asked target firm to indemnify client (0 marks) but forgot their customers (1 mark).

– Since some prior art was mentioned, I could have suggested a prior art search, and could have filed an opposition if any relevant to lead turned up.

• There were also a few I would never have thought of: – File client’s invention, with narrow claims – I was thinking as an infringer, not an inventor.

– Consider filing third-party observations on EP1 – I skipped straight to ‘keep a low profile’.

• Looking at PEB’s comments and the marking scheme, I think I got 16 marks, ± 1.

– The average mark for this question in the exam was 9/25.

• I think it is fair to say that my answer is not especially brilliant or insightful, but what it does do is methodically address all the issues in a logical way, resulting in a safe pass almost as a by-product.

• This is the key to getting a good set of marks, and the ultimate lesson to take from this section of the book.

244

Part 3: Guidelines for Taking FD1

On the day

3.5 On the day This year, the FD1 exam will be online for the second time. For many people, FD1 is the first exam they’ve taken for years, and possibly the first online exam they have ever taken, and so the following are simply some reminders for coping with such an exam on the day.

3.5.1 Preparation At the risk of sounding patronising, here is a list of things to have available: • Stationery – 2 x note taking pens or preferably pencils (and an eraser), note paper, possibly a desk clock of some sort and maybe a short ruler. Keep it simple.

• Food & drink – the exam is usually from 10am to 2pm, so keeping blood sugar levels up is important.

• Medicines – some people suffer from profound exam nerves. Consider having or taking: – Paracetamol / Ibuprofen, e.g. for stomach / head ache (and possibly hand pain).

– Immodium if you think you may need it, for self-evident reasons.

– Any medication you are currently on – it’s easy to forget on exam day.

• Other – clothes in layers. You’ll be sitting still for four hours; dress for flexibility and comfort.

Remote / Online: Some preparatory steps for the remote exam include: • Using the trial exam provided by the PEB to check your IT arrangements work and to familiarise yourself with the online exam system; • Checking that your IT equipment and software meet the specification that the PEB has published in the Pre-Registration Information and the Essential Information for Candidates; • Checking the quality and reliability of your current internet connection, and considering a plan B such as knowing how to set your phone’s WiFi hotspot; – Checking / having batteries for keyboards / mice; – Ensuring printing works if you intend to print exam papers (recommended); – Practicing typing an exam answer (noting also that only one screen is allowed).

• Considering the merits of taking the exam at home vs. in your workplace: – Check if an appointed invigilator can be nominated in your office, which can make printing / uploading less stressful; they can also vouch for you in the event of (hopefully unlikely) serious IT problems.

– However, your firm may not permit the exam software to be installed on a machine, or cause issues with firewalls, etc. that need identifying and addressing, possibly whilst access to the office is still limited.

• If you cannot use a computer, contact PEB by the end of August for approval to submit a handwritten response (providing relevant medical evidence).

Study Guide to the Patents Acts (2021 edition)

245

On the day

3.5.21 In the exam Before the exam starts: • Ensure you have read the Essential Information for Candidates and other information published by the PEB. • Read the rubric and do what it says. It may sound obvious but it can prevent silly mistakes on the day.

– Read the Instructions to Candidates carefully. Refer to the previous instructions at the front of the 2020 paper during your preparations, but read them on the exam day too in case of changes.

During the exam: • Use the provided answer document, and do not modify the formatting (despite the large font and spacing) or the document name.

• Follow the instructions for uploading your Answer document carefully: – Last year, this involved converting the document to a .pdf before uploading the answer.

Consider using the trial exam to practice.

Time management: • The online exam is 4 hours 40, and assumes three screen breaks of five minutes each with 25 minutes available for printing and uploading.

• If your Answer document has not been uploaded by the Examination End Time, it will not be accepted and your examination will be void. Consider uploading your Answer document at the four-hour point (or at 4 hours 15 if you took the breaks), to ensure it successfully uploads in good time and to give space to resolve problems. Last year it was also possible to re-upload, so the remaining time can be used for final checks and edits to re-upload whilst knowing that in any event a response is correctly filed.

Time management – Part A: • As noted previously, Part ‘A’ questions normally focus on one key problem or situation (sometimes two). Typically two-thirds of the marks for a question will relate to analysing/ addressing this problem and the marks will often flow from each other. If you identify and address this central problem or situation then you have a good chance of achieving more than 50% of the marks for the question.

• The remaining marks (if any) tend to be more difficult to obtain. They are often related to disparate and/or comparatively obscure issues and you can spend disproportionate time identifying and answering them.

• In short, whilst it is of course recommended that you attempt to answer each question as fully as you can, be aware that there are diminishing returns on your time for each question and be prepared to move on to more fruitful questions if time is pressing. You can always come back to a question. You are better off answering 60% of each question than attempting to completely answer 60% of the questions.

246

Part 3: Guidelines for Taking FD1

On the day • Thus, for example, when you come to each Part A question, add around 2.2 times the marks available as minutes to the real current time and note it down (2.2 x 100 marks is 220 minutes, leaving 20 minutes reading time in the exam). Consider moving on when you reach that target time, particularly if you are not currently in the act of generating a mark.

• Likewise, don’t waste time reading the Part A questions in advance – they are mandatory and you’ll be attempting all of them anyway. However, do indulge in any preparatory ritual that helps you relax and feel more in control of the exam situation, such as clipping the various papers together, etc; this takes very little time in reality but can be very helpful to your frame of mind.

• If the exam starts at 10:00, you should probably be finishing Part A by around 11:50.

Time management – Part B: • Once you have finished Part A, if necessary give yourself up to 15-20 minutes of the float provided by this timing regime to evaluate which Part B questions to answer. Once you have committed yourself to a Part B answer recall it will be difficult to abandon it and still have time to do justice to two further Part B questions, so evaluate them carefully first. See section 3.2.2 above.

• Give yourself around 50 minutes for each Part B question. Consider resting for a couple of minutes between each one; after all, at this point you will have a good idea of how much time is available for the final question.

• Part B questions typically have around 3-5 main issues to address. However as we have seen these are not always wholly separable or of equal complexity, and so it is not advisable to impose a rigid time regime on each of them. Nonetheless it is obviously useful to check your progress regularly, and your question analysis / answer template can be a useful guide. Note that you will be doing quite a lot of analysis and preparation for these questions, and so may not start writing your answer proper until around 10-20 minutes into the allotted period, depending on the question. See sections 3.3.5 and 3.4 for an example of answer writing techniques that facilitate checking your progress.

• Note that some people prefer to begin with Part B on the basis that they feel fresher at the start of the exam. If this works for you, be mindful that subsequently running out of time in part A is likely to cost you more marks per minute than running out of time in part B, so be disciplined with how long you spend on the part B questions.

• If you have any time left at the end of the exam, go back to a question you feel was unfinished. If you revisit a question like this, don’t waste time reading through it to find where to edit – just type ‘Further points’ or similar, and add any new points at the end of the existing answer.

• To reiterate, finally ensure you have successfully uploaded your Answer document before the examination end time.

Study Guide to the Patents Acts (2021 edition)

247

On the day

3.5.31 Final thoughts Recall that the advice in this part of the book is generic, so do what feels right for you and please share any useful techniques or tips you may have with the discussion group on LinkedIn (search there for ‘FD1 / P2 Study Guide’). Finally, remember that if you’ve got into the profession and as far as taking the FD1 exam, then the odds are that you are capable of passing it!

Keep at it, and good luck.

248

Part 3: Guidelines for Taking FD1

Part 4 Tables

4.1 Common forms.............................. 250 4.2 Amendment and Correction.......... 251 4.3 PCT Timelines............................... 256 4.4 GB Timelines................................. 259 4.5 EP Timelines.................................. 263

Study Guide to the Patents Acts (2021 edition)

249

UK Forms

4.1 Common Forms Costs given relate to e-filing where appropriate.

PF 1 Application for grant of patent – see s14 – due with filing (s.15). Fee due by 12 months from priority or two months from filing. Fee is £60 if paid at filing or £75 with form AF1 if paid later.

PF 2

Initiate proceedings before comptroller – See R76 – e.g. infringement or revocation. £50.

PF 3

Late declaration of priority / late filing – see s5 for details & costs

PF 7

Statement of inventorship – see s7 – due 16 months from priority (s13) or on filing divisional or s8/37 app.

PF 9A Request for a Search – see s17 – due 12 months from priority or two months from filing. £150 for UK applications, plus £20 for each claim over 25.

PF 10

Request for substantive examination – see s18 – due six months from publication. £100, plus £10 for each page (of the description only) over 35.

PF 12

Payment of renewal fee – see s25 for details – note that anyone can pay a renewal fee.

PF 14

Request for reinstatement – see s20A – due to missed prosecution deadline. £150.

PF 16

Request for restoration – see s28 – due to late renewal payment. £135.

PF 17

Request an opinion – see s74A – fee £200.

PF 21

Register transactions/licences etc – see s32 – due within six months of transaction or ASAP. £50.

PF 49

Request a caveat – see s2 & s25 – fee £25.

PF 51

Register self as agent – see s32 – do as first act as new agent. Not needed to pay renewal fees, though.

PF 52

Request an extension under R108 – see s117B – due within two months of deadline. £135.

NP1

National Phase entry – see s89A – due at 31 months from priority for a PCT application. Fee of £30 due at 33 months, and £12 translation publication fee if needed.

250

Part 4: Tables

Amendment and Correction

4.2.1 Amendment and Correction of a Patent GB

EPC

Voluntary amendments

s27: Comptroller has discretion to allow amendment unless any proceedings are pending that may affect validity. Amendments are retroactive to the date of grant.

Third parties can oppose amendments.

A105A: Proprietor can request central revocation or limitation (by amendment), unless opposition proceedings are pending. The limitation is fully retroactive (ab initio).

Other amendments

s75: Comptroller or court has discretion to allow amendment during revocation or infringement proceedings. Again the amendments are retroactive to date of grant. Third parties can oppose.

R80: Amendment is possible during opposition proceedings, but only where occasioned by a ground of opposition (even if not raised by opponent).

Restrictions

s76: The scope of protection is not broadened, and there is no added matter.

A105B: The amendment narrows the claims, the resulting claims are clear, and there is no added matter.

Correction to specification

s80(3): An error in translation can be corrected after grant. However, where the correction results in a broader scope of protection, that broader scope is not retroactive and third party rights may exist.

A14(2): An error in translation can be corrected throughout proceedings at the EPO, including during opposition.

s117 and R105: Correction must be obvious and unambiguous. The correction can be advertised, and third parties can oppose within four weeks.

R139: Correction must be obvious and unambiguous.

s117: Corrections can be non-obvious, but must clearly identify what is being corrected.

The correction can be advertised, and third parties can oppose within four weeks.

R139: Corrections can be non-obvious.

Correction to a form or other document

Study Guide to the Patents Acts (2021 edition)

251

Amendment and Correction

4.2.2 Amendment and Correction of an Application GB Voluntary amendments

s19 and R31(3): Can amend as often as desired between issue of search report and 1st exam report.

R31(4): Can also amend once after first s18(3) examination report along with response (see below), or within two months of 18(4) report if the first exam report.

Other amendments

Can amend to comply with requirements of the act in response to deficiencies outlined in s18(3) report (but can keep amending if s18(3) report was issued prior to publication – R31(4)(b)(ii)).

R31(5): Further amendments possible at comptroller’s discretion.

Restriction: unsearched matter

Restriction: added matter

s76: amendment cannot extend beyond the specification as filed.

The specification as filed does not include the abstract.

The specification as filed does not include the priority document(s).

Correction to specification

s117 & R105: Correction must be obvious and unambiguous. The correction can be advertised, and third parties can oppose within four weeks.

Correction to a form

s117: Corrections can be non-obvious, but must clearly identify what is being corrected.

252

Part 3: Guidelines for Taking FD1

Amendment and Correction

EPC

PCT

R161(2): Can amend an EP(PCT) where the EPO was not the ISA/IPEA in response to a R161(2) communication.

R137(2): After receipt of the search report and before the examination report, can amend in addition to any amendments mandated by R161(1) or R70a.

A19 & R46: One amendment of claims only within two months of search report or within 16 months of priority. File at IB.

A123(1): The applicant is given at least one opportunity to make voluntarily amendments, including if necessary after a first examination report.

A34(2) and R66: Can amend claims, description and figures upon filing Ch II demand until IPER issued. File at IPEA. NB all PCT amendments are in effect voluntary since it is not a granting body.

The EPO can invite the applicant to file amendments to address deficiencies outlined in an Examination Report (A94(3)), and also in response to an extended European search report (R70a), and for an EP(PCT) regional phase entry where the EPO was ISA/IPEA, also under R161(1).

A34(2) and R66: Can amend claims, drawings and figures in response to Ch. II Written Opinion. File at IPEA.

R137(3): Further amendments are at the discretion of the Examining Division

A41(1): Can also amend upon entry into the national / regional phase.

R137(5): Cannot base amendment on unsearched subject matter (e.g. not searched due to non-unity).

A123(2): amendment cannot extend beyond the application as filed.

A34(2)(b): amendment cannot extend beyond the application as filed.

The application as filed does not include the abstract.

The application as filed does not include the priority document(s).

R139: Correction must be obvious and unambiguous.

R91: An obvious mistake may be corrected.

The correction is evaluated in light of the specification.

R139: Corrections can be non-obvious.

R91: An obvious mistake may be corrected.

The correction is evaluated in light of the relevant document(s).

Study Guide to the Patents Acts (2021 edition)

253

Amendment and Correction

4.2.3 Amendment and Correction of Common Information GB Priority claim

s117, R105: Can correct if erroneous, incomplete or inaccurate.

S5 & R6: Can add declaration within 16 months of earliest declared priority.

Inventor’s details

s117: Can request a correction of a name or address (use R49 to correct in the register).

Evidence may be required.

Applicant’s details

s117: Can request a correction of a name or address (use R49 to correct in the register).

Evidence may be required.

Applicant’s death / dissolution

s30: Successors in title must register upon distribution of the estate. Need copy of probate.

Representative

R101: Change using form PF51.

Address for service

Use R49 to correct in the register. Evidence may be required.

Assignments

s30(6): Submit in writing or using PF21. In theory can correct under R50, but in practice resubmission of new assignment more effective since a defect in an agreement has wider implications.

254

Part 3: Guidelines for Taking FD1

Amendment and Correction

EPC

PCT

R139: Corrections can be non-obvious.

R52(3): Can correct within 16 months of the earliest priority date claimed (either before or after correction) or four months from filing (whichever is later).

R26bis: Can correct within 16 months of the earliest priority date claimed (either before or after correction) or four months from filing (whichever is later).

R139: Corrections can be non-obvious.

A62 & R21: Corrected on request only with consent of any wrongly designated inventor (i.e. in event of replacement).

R92bis: Can be corrected by written request.

R139: Corrections can be non-obvious. Evidence may be required.

R92bis: Can be corrected by written request.

R142(1): Can request to interrupt proceedings.

Successors in title must inform EPO and proceedings can resume. Most deadlines are restarted. Have two months to request examination if necessary. Pay outstanding renewal fees on restart.

R92bis: Applicant can be changed by written request.

R152: File signed authorisation for either a specific application or in general.

R92bis: Can be changed by written request.

A133: Is that of the representative

R92bis: Can be changed by written request.

A72 & R22(3): In theory could correct under R139 but in practice submit a new assignment. Note that actions taken by new proprietor if not validly assigned may be void – R22(3).

R92bis: Submit new assignment or signed consent of assignor.

Study Guide to the Patents Acts (2021 edition)

255

PCT Timelines

4.3 PCT Application Timeline Date

Action

Extensions / Safeguards

0 months

National Filing.

0-12 months

Filing of the international application..

Send to rO or IB. If rO is not competent due to residency, nationality or language, then application is passed to IB. R2.4, R80.5: The priority year extends to the next open day.

R26bis.3: Can file up to 14 months after priority with rO’s permission if can prove lateness despite due care / unintentional (depending on rO). NB – This gets reassessed in national phase, and not all states will allow it; search WIPO for res_incomp for list

Within 1 month of filing

Pay at rO: International Filing Fee (IFF) (sent on to IB), Search fee (sent on to ISA), and Transmittal fee (kept by rO).

– New filing procedures automatically designate all states.

– ‘Designation fees’ built into IFF.

R16bis – if late pay within one month of invitation from rO to pay, + late fee of 50%.

(If late but paid before invite, then considered received within time limit 16bis.1(d)). If also miss month, but pay before declared withdrawn, then again considered received within extension period (a general approach – 16bis.1(e)). Can file missing pages/figs with rO up to 30 days late – but filing date changes so may lose priority.

File translation if not in an accepted language of ISA. 1-2 months

Receive notification from rO of the international filing date and the application number (if filing requirements complied with) – Receive notification from IB of copy – check all correct.

R26.2 – request extension to correct filing defects.

Within 16 months

File priority document (certified copy), receive confirmation of receipt from IB. International phase is calculated from priority date.

If priority is abandoned, the international phase is recalculated accordingly.

R17.1 – deemed received on last day of 16-month limit if received at IB before international publication. Can also file in national phase if mess up in PCT. NB. Have later of 16 months from earliest priority or four months from international filing to correct/add priority.

256

Part 3: Guidelines for Taking FD1

PCT Timelines

4.3 PCT Application Timeline (continued) Date

Action

Extensions / Safeguards From date of invite to pay fee: Up to 1 month for additional search fee, and one month for protest fee.

Within 16 months (or nine months if PCT direct filing)

Receive ISR with First Written Opinion, with invited time limit for amending claims (typically two months). If lack of unity found, invited to pay further search fees. Can do so optionally under protest (w/protest fee).

16-18 months

Evaluate ISR and either; withdraw (R90bis), amend claims (A19, to IB), or do nothing – later of two months from ISR or 16 months from priority.

18 months

Publication of international application, communication to designated offices. Last chance to withdraw without publication is 15 days earlier. Can request early publication.

21 months

Receive Written Opinion from IPEA, with invited time limit for amendments (typically two months).

Later of 22 months from priority or 3 months from transmittal of ISR written opinion

File Chapter II Demand with IPEA for IPER if wanted. Demand requires ‘electing states’ i.e. redesignation. Can amend claims, description and drawings with demand. Cannot add matter.

Signed by all applicants, common representative, or agent if has power of attorney from all applicants.

Late election of additional states (at IB) can be any time prior to issue of IPER for remaining states.

23 months

For demand: Pay preliminary examination fee and handling fee within a month of filing demand.

Plus, any additional examination fee and any protest fee.

R58bis – within one month of invitation

by IPEA to pay + with surcharge, for preliminary exam and handling fees.

R60 – have one month from invitation to correct defects in the demand.

Study Guide to the Patents Acts (2021 edition)

Can delay publication by withdrawing earliest priority application before preparations to publish are complete – but risks validity problems due to intervening publications.

Note that Luxemburg/Tanzania require a Ch. II demand by 19 months and have Ch I national phase entry deadlines of 20/21 months, but can be obtained more conventionally through regional applications (EPO / ARIPO).

257

PCT Timelines

4.3 PCT Application Timeline (continued) Date

Action

Extensions / Safeguards

21-23 months

Evaluate WO and either withdraw, amend if desired, or do nothing.

Typically have two (max three) months to respond R66.2(d). Can be extended on discretion R66.2(e). Again, any response received late but before Examiner takes the next step will be accepted.

28 months

Receive non-binding IPER(IPRP).

Decision to enter elected states.

30 months

International phase ends

If applicable, can withdraw earliest priority at any point and re-calculate date (R90bis.3). NB very risky in terms of prior art and intervening publication.

30 months

National phase begins in US, JP, CN, CA.

Late entry to national phase:

31 months

258

National phase begins in EP, GB – GB: @31 months File NP1, pay £30 national fee, and any translation + £12 if needed. @33 months, File search, exam requests and fees and PF7.

All the above extendable under R108(2) & (3) – s20A reinstatement preferable to R108(3) if miss R108(2) option.

EP: @31 months pay national fee and translation if needed (two months further processing and reestablishment possible via R49(6) PCT); pay designation fee, search and exam fees (two months further processing possible); pay third year renewal fee if needed; can pay up to 6m early at entry – R51(1) (plus six month grace if late, and re-establishment possible); once R161(1) or (2) communication is received, file response as appropriate.

US: Petition to revive, then file continuation.

EP: Further processing within two months of loss of rights.

US and EP: R49(6) PCT allows reinstatement of rights within earlier of two months of removal of cause of non compliance or 12 months of loss.

GB: R108(2) extension of two months.

CN: Up to two months delay to entry on payment of surcharge.

CA: Up to one year delay to entry on payment of surcharge; if international filing date was after 30/10/19, must also state failure was unintentional.

Part 4: Tables

GB Timelines

4.4.1 GB Application (No Priority): Timeline Deadline

Action

Extensions / Safeguards

0 months

File an application comprising a request, applicant ID and a description (s15(1)). Also file any referenced figures. Use PF1.

12 months

File claims and abstract if not done at filing (in practice there is a serious risk of adding matter).

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension.

12 months

File request for search (if not done at filing). Use PF9A or AF1 (or PF1 if requested when filing application). Pay search fee and any excess (>25) claim fees.

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension.

Pay application fee.

16 months

File declaration of inventorship using PF7.

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension.

~18 months

Publication at or soon after 18 months. Provisional protection begins (s69).

Can prevent publication by withdrawing application before preparations to publish have completed – see s16.

~24 months

File request for substantive examination six months after publication (if not done at filing).

Pay exam fee and any excess (>35) description page fees.

R108(2): two months extension as of right using PF52 & £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension.

2-4 years

Respond to examination report by dates set by Examiner.

s117B: Request a two-month extension to respond to report. s20A: Possible to reinstate if missed deadline unintended, but note that cannot reinstate if miss s117B extended deadline.

Study Guide to the Patents Acts (2021 edition)

259

GB Timelines

4.4.1 GB Application (No Priority): Timeline (continued) Deadline

Action

Extensions / Safeguards

Later of 4 ½ years or 12 months from first report under s18

Period for putting application in order for grant (not grant itself – grant can occur later if application is in order for grant by this time).

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension.

R30(4): If third-party observations are used within three months of this deadline, the applicant gets three months to respond.

260

Part 4: Tables

GB Timelines

4.4.2 GB Application (Claiming Priority): Timeline Deadline

Action

Extensions / Safeguards

0 months

File priority application.

12 months from priority

File an application comprising a request, applicant ID and a description or file a reference to an earlier relevant application (s15(1)).

Also file any referenced figures.

Use PF1.

s5(2B): Can file an application up to 14 months after priority with comptroller’s permission if can prove lateness unintentional. s15(5-7): two months from notification to add missing parts without changing filing date if they can be shown to be present in the priority application.

S120(2): The priority year extends to the next open day.

12 months from priority or two months from filing

File claims and abstract if not done at filing (in practice there is a serious risk of adding matter).

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension. Use PF14, and pay £150 (same applies in each case below).

12 months from priority or two months from filing

File request for search. Use PF9A or AF1 (or PF1 if requested when filing application). Pay search fee and any excess (>25) claim fees.

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended & miss R108(2) extension.

Pay application fee.

16 months

File declaration of inventorship using PF7 .

R108(2): two months extension as of right using PF52 & £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended & miss R108(2) extension.

16 months

Declare priority if not done at filing (cannot extend deadline) – but must declare at filing if using late filing under s5(2B).

File certified copy of priority application.

(Note s20A does not apply since only priority lost, not application).

For certified copy and file No.; R108(2): two months extension as of right using PF52 and £135, then R108(3).

Study Guide to the Patents Acts (2021 edition)

261

GB Timelines

4.4.2 GB Application (Claiming Priority): Timeline (continued) Deadline

Action

Extensions / Safeguards

~18 months

Publication at or soon after 18 months. Provisional protection begins (s69).

Can prevent publication by withdrawing application before preparations to publish have completed – see s16.

~24 months

File request for substantive examination six months after publication. Pay exam fee and any excess (<35) description page fees.

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended & miss R108(2) extension.

2-4 years

Respond to examination report by dates set by Examiner.

s117B: Request a two month extension to respond to report. s20A: Possible to reinstate if unintended, but note that cannot reinstate if miss s117B extended deadline.

4 ½ years or 12 months from first report under s18

Period for putting application in order for grant (not grant itself – grant can occur later if application is in order for grant by this time).

R108(2): two months extension as of right using PF52 and £135.

R108(3): discretionary extensions may be possible in certain circumstances. s20A: Possible to reinstate if unintended and miss R108(2) extension.

R30(4): If third-party observations are used within three months of this deadline, the applicant gets three months to respond.

262

Part 4: Tables

EP Timelines

4.5 EP Application Claiming Priority: Timeline Deadline

Action

Extensions / Safeguards

0 months

File priority application.

12 months from priority

A80, R40: File an application comprising a request, applicant ID and a description or file a reference to an earlier relevant application. Also file any referenced figures.

R56: two months from notification to add missing parts without changing filing date if they can be shown to be present in the priority application.

R134(1): The priority year extends to the next open day (of all the EPO filing offices).

R57, R58: If do not file claims or abstract at date of filing, then do so within two months of invitation by EPO. In practice there is a serious risk of adding matter with late claims.

Likewise must also file translation into official EPO language (EN, FR, DE) within two months of notice if necessary.

+1 month from filing

A78(2), R38: Pay filing fee and search fee within one month of filing the application, and any excess (>15) claim fees.

A78(2): If do not pay filing/search fees in time the application is withdrawn. A121: Use further processing within two months of notification of loss of rights. In this case the further processing fee is 50% of the missing fee(s).

R45: Can pay claims fee within 1 month of invite to do so, or excess claims lost.

12-16 months from priority

A88, R52: Declare priority on filing (or up to 16 months from earliest priority claim).

R52(3) The claim can be corrected at any time up to 16 months from the earliest priority.

A122: Re-establishment possible if deadline missed despite due care.

16 months from priority

A88, R53: Provide details of priority application (date, state of filing and file no.) and file a certified copy.

R59: If the details or certified copy are not provided in time, the EPO will request them within a specified period (usually two months).

A122: If this further deadline is missed, reestablishment may be possible.

~18 months from priority

A93(1): Publication of the specification, conferring rights under A67.

R67(2): Can prevent publication by withdrawing the application before technical preparations to publish are complete (five weeks before publication).

Study Guide to the Patents Acts (2021 edition)

263

EP Timelines

4.5 EP Application Claiming Priority: Timeline Deadline

Action

~18 months from priority

R68: Publication of the search report (usually with specification, but not always).

~24 months from priority

A94(1),R70(1): File request for examination and pay examination fee within six months of the publication of the search report.

The written request is pre-printed on the request for grant form. Anyone can pay the exam fee. If not paid in time the application is withdrawn.

A121: Use further processing within of notification of loss of rights. The further processing fee is 50% of the exam fee.

~24 months from priority

A79(2), R39(1): Pay unitary designation fee within six months of the publication of the search report.

If the unitary designation fee is not paid in time then the application is deemed withdrawn.

A121: Use further processing within two months of notification of loss of rights.

Here, the further processing fee is 50% of the missing designation fee.

36 months from filing

A86(1), R51: Pay renewal fees, starting with the third year, by the end of the calendar month containing the third anniversary.

R51(2): six-month grace period with 50% surcharge.

A122: If still fail to pay, use reestablishment if can show due care.

Grant

A97(1), R71: Pay grant and printing fees plus any outstanding claims fees within four months of notification of intent to grant, and pay any designation fees or renewal fees due if not yet paid.

If granted within six months of the search report, then the designation fee may not have been paid yet. If granted at around three years from filing, then a renewal fee may be due between notification and actual grant. See above for the relevant extensions.

A121: If miss the four-month deadline, use further processing within two months of notification of a loss of rights.

9 months from mention of grant in EPB

A99(1): (Someone else can) File an opposition to the granted patent and pay the fee.

No extension possible.

Some errors in a notice of opposition can be corrected – see R77(1),(2) for details.

264

Extensions / Safeguards

Part 4: Tables

Study Guide to the Patents Acts 13th Edition

STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

Doug Ealey 2021

0_Cover_Ealey_Spread.indd 1

13th Edition 28/06/2021 12:24:57