Part

from Study Guide to the Patents Acts (2021)

Japan

– 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.

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.

• 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) the 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) The 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) The 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)).

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;

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

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.

• 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,

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

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).

• 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.

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

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.

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.

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).

• 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) Where 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.

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).

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.

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).

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

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.

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.

• 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).

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

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...

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.

– 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.

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.

• 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.

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.

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) The 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:

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.

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.

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.

• 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

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

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) This 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,

3) using PF14… : 5) … with evidence (i.e. that failure was unintentional). 6) If no evidence accompanies the request, the Comptroller will specify a period to provide it. 7) If reinstatement is refused, the applicant is notified… 8) … and they then have one month to request a hearing 9) … 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…

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).

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,

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.

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…

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.

• 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).

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 If 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

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.

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.

• 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.

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,

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).

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.

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.

• 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.

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

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.

• 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

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.

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.

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.

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

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.

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 9thEd. § 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.

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

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. :

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.

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.

• 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),

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.

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.

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:

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.

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

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)...

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.

• 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?

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.

– 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

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

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.

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),

– 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.

• 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

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

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.

• 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:

(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.

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.

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.

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.

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;

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.

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.

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:

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.

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) Where 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).

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.

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. :

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.

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.

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.

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

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.

• 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.

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.

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. the 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) By 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.

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

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.

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.

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).

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.

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

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.

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.

R108 Extension of time limits 1) The 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).

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

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

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).

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 9thEd §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

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.

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.

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).

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:

R73 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.

R74 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.

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:

R75 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)).

R76 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:

R114 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.

R115 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.

R77 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.

R78 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…

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.

R79 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:

R80 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:

R81 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.

R81A 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.

R82 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.

R83 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.

R84 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).

R85 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).

R86 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.

R87 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:

R89 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.

R90 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)).

R91 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.

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 – Applications, references and requests:

s8(1) – Entitlement Proceedings s10 – Dispute between joint applicants s11(5) – Entitlement to a licence after transfer of application s12(1) – Entitlement proceedings for a foreign or convention patent s13(3) – Remove a person mentioned as inventor R10(2) – Add a person to be mentioned as inventor s37(1) – Determination of right to patent after grant s38(5) – Entitlement to a licence after transfer of patent s40 – Employee compensation s46(3) – Negotiate terms of licence available as of right s47(3) – Cancel licence available as of right s48(1) – Compulsory licence s52(2)(a) – Cancel compulsory licence s61(3) – Infringement proceedings s71 – Declaration of non-infringement s72 – Revocation proceedings

Part 2 – Oppositions that start proceedings

s27(5) – Opposing amendment after grant s29(2) – Opposing surrender of patent s47(6) – Opposing cancellation of licence of right, by proprietor s75(2) – Opposing amendment during infringement or revocation proceedings s117(2) – Opposing correction of error in patents and applications.

Part 3 – Oppositions in response to proceedings

s47(6) – Opposing cancellation of licence of right, by third party s52(1) – Opposing application for compulsory license s52(2)(b) – Opposing application to cancel compulsory license

Next Article

Japan

By Surgery

By Therapy

Diagnosis

or

or if claiming priority then the later of 12 months from priority or two months from

then

then

:

Part 1 – Applications, references and requests:

Part 2 – Oppositions that start proceedings

Part 3 – Oppositions in response to proceedings

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This article is from:

Study Guide to the Patents Acts (2021)