Worked Example

3.4 Worked Example

Worked example using method 4:

• As noted previously, Method 4 is a rather grandiose term for applying the reading comprehension techniques of methods 1 and 2 and the legal template analysis/answer structuring of method 3. To illustrate this, I sat Question 7 of the 2015 paper blind, as reproduced below. Hence the following is a reproduction of Question 7 interleaved with what I actually noted down as I went, in cursive script. My thoughts at the time (in italics) and any additional commentary are provided on the right. • As with the previous worked example in section 3.3.5, consider attempting FD1 2015 Q7 yourself before reading this section. If necessary, attempt it open-book and without time constraints.

FD1 2015 – Question 7

1- During due diligence on behalf of a UK client for the potential purchase of another UK business, you identify a third-party patent family which may be of significance. 1. Infringe? re 3rd party

2- The business which is under consideration designs and manufactures highly customised large industrial microwave ovens for ceramics factories in the UK and elsewhere in Europe. 2. Parties – client?, target business

MWaves for ceramics in UK and EP

3- Technically, the ovens have remained largely unchanged for a number of years, but in the middle of last year the business discovered a new coating for the inner surfaces. Due to an error the usual coating had become contaminated with small amounts of tin, and it was observed that the efficiency of the oven had been increased due to improved internal reflection of the microwaves. 3. Accident > tin coat > obviousness? No?

4- Further investigation identified that lead could also be used to achieve a similar effect. Since lead is much cheaper than tin, the business is planning to exclusively use lead containing coatings from the end of the year. From January 2016 lead coatings will be used in all ovens which are sold. Due diligence ≈ infringement checks. So – will need to look for rights available, parties, possible infringements, remedies

Don’t be put off by the exam’s window dressing – it’s going to have to relate to the law you know. In this case it’s going to basically mean ‘infringement’ but where the patentee may not know about it (yet).

Current product largely unchanged – good!

Accident with tin coating – any impact on obviousness of 3rd party patent? ‘Error’ more likely a pointer to being unexpected

Possible infringements or alternatives? What about before Jan 16?

4. Investigate > lead too, cheaper Plans to use lead ‘exclusively’ from Jan 2016. Not clear if sold any using tin. Investigations prob exempt

5- The third party patent family is in the name of

Microplus s.a. (MP) a French manufacturer of domestic microwave ovens. The patent family has two active cases, UK patent GB1 and European patent application EP1 which were filed in October 2013, claiming priority from an identical earlier

French application FR1 which was filed in October 2012 but has now lapsed. GB1 and EP1 published in

April last year, and while GB1 is in English, EP1 is in

French. 5. 3rd party patentee ‘MP’, make FR domestic mwaves

Publication is before target firm’s discovery (from timeline)

Note EP1 pub in French

6- GB1 and EP1 describe and claim microwave ovens with internal coatings containing silicon, tin or lead.

Silicon and tin containing coatings are said to be preferred since lead is less desirable in domestic ovens where food may be cooked. The only example demonstrates an improvement in oven efficiency for tin only. 6. silicon, tin and lead in spec Licence lead?

Support for Si / Pb?

7- A literature article cited against GB1 showed that silicon containing coatings may be poor reflectors of microwaves, MP then limited the claims to microwave ovens using tin containing coatings and the application then proceeded to grant. 7. Granted GB - only claims tin

8- The European search report did not identify the literature article and the written opinion of the

EPO was entirely positive. Nevertheless, when requesting examination MP has limited the claims and description to microwave ovens using silicon or tin containing coatings. It appears that a notification of intention to grant can be expected at any time. (Numbering paragraphs can make referencing them in your notes easier).

Did a small timeline here (see section 3.2.10 above for separate discussion of these). FR1 is just there as means to create GB and EP sister patents. Don’t worry about trying to revive a lapsed French national patent, since don’t know how. They bother to mention & juxtapose the publication languages – make a note, it’s probably important

Coatings of silicon, tin and lead MP unlikely to use lead for domestic mwaves = hint to licence since not direct competition? Tin only – Support issues for Silicon and Lead?

Does this affect EP too?

Need to worry about EP for lead?

EP limited to silicon and tin at the mo. Expected to grant at any time – should replace GB & so expand coverage from just tin. Grant without lead ? Good. NB can still add lead! Opposition re silicon literature or Support issues?

8. Will add silicon to GB rights

Can still add lead pre grant – NB launch timing

Oppo re Si lit or support

9- Write notes for a meeting with your client, considering what issues arise and what options are available?

9. Brain Dump – past / future, diff metals, investigations, French pub, amendments, launch timing, licences, opposition So – I’m primed to think about existing and potential infringements, the affected parties, and what MP could do to make things worse, and what we could do to avoid / mitigate that.

Jotted down the most obvious likely issues as a more compact aide memoir. Didn’t worry about a particular order.

• The result is a sheet of basic notes summarising facts/issues in each paragraph, and an appreciation that the question is basically an infringement/validity question with a few likely curveballs relating to publication languages and opposition grounds. • The window dressing aspect of the question is that it is effectively split into what tin/lead activities might have already infringed, and what tin/lead activities might infringe in the near future. There are some obvious validity issues to discuss, and probably some commonsense discussions about timing your launch or licencing if necessary. • We can now decide on a basic answer structure based on an infringement and validity template. • The big picture is that it is an infringement and validity case, and there are several ways to slice the structure up: GB/EP (poor, since overlap); tin/lead (better, but can foresee complications with timing and missing out any discussion of silicon, esp. re opposition) and past/future (helps with identifying actual vs potential infringements, and note that the types of infringements appear different in past vs future). So let’s choose past vs future, and then GB and EP for each. • So we can anticipate a structure as follows: 1. Establish facts of situation (in particular, rights) 2. Infringement, past and future, for those rights 3. Validity of those rights 4. Common sense advice based on the above

• The following is then a reproduction of my answer to the question, again with additional commentary provided on the right.

Establish facts – MP’s rights:

MP have granted GB patent covering tin. Check if renewal fees paid / patent is still in force. - If so then note MP can enforce this patent immediately.

MP have EP application covering tin and silicon. Can still be amended to cover lead at this stage. But unlikely unless MP are given reason to do so, since bad for domestic MWaves and MP expect imminent grant as-is

Note EP(GB) will replace current GB at grant; effectively broadens scope of GB to tin and Si (current GB cannot be amended to broaden claims after grant).

EP grant imminent – can expect before or shortly after target firm’s product launch – so monitor EP1 to check for grant. - If infringe, monitor where in Europe it is validated re overseas sales.

Infringement - Any existing liabilities for target company?

Check if MP’s claims limited exclusively to domestic MWaves in some way. - Assume not. Tell the Examiner what you are doing. The first step should always be to clearly figure out and state the current situation.

So first establish MPs GB rights & low hanging fruit re consequences.

Speculate on MPs future EP rights that will become relevant soon. Note the additional discussion of MP’s motives is reasonable, but there were no marks for this comment.

Make some sensible points about what might grant where and impact on MPs rights

Provide sensible suggestion to monitor EP1 grant & validation. Could leave to end but would probably forget.

Seems to conclude basic ‘current’ situation. It’s a bit different to normal because there are current and future rights involved, but clearly all within timeframe of question.

Move on to next part of answer, relating to past & present infringement. Tell Examiner.

Again, establishing facts relating specifically to infringement. Where clear answers are not available to sensible questions, make assumptions that progress the answer.

For GB1, possible existing infringements would have to relate to tin. Tin discovery in ‘middle of last year’, so after April publication of GB1 - So no prior use defence.

Not clear if target firm sold tin MWaves before end of year. - Ask for clarification. - If sold, then could be liable for s60(1) infringements in UK back to date of publication – published claims had reasonable expectation of granting, and infringing portion (tin) same at publication and grant. - If not sold then no infringement for sale etc

Note any ‘investigations’ likely be exempt under s60(5) as experimental regarding any actions for tin (or lead).

For EP1, note that French publication only.

Therefore, target firm not liable for any potentially infringing actions before grant in UK under EP1(GB), once it replaces GB1.

But clearly relevant in France, where sales of tin (or SI) would infringe back to publication. - Check if target firm sell elsewhere and discuss other validated states with o’seas associates as necessary. Starting with GB1: Relate infringements to claim scope (what). In this case, also relate infringements to timing (when). Consequences (note prior use must occur before priority date, not publication – poorly worded on my part).

Now look at firm’s activities and make sensible conclusions based on law. Questions are often deliberately ambiguous – consider both outcomes. Invoking s.69 here. Probably should have listed the s60(1) infringements or used ‘Moduik’ shorthand. No harm stating the obvious sometimes.

Looking at what else target firm did in the question, by way of mopping-up this section, and commenting appropriately.

Move on to EP case in second branch of infringement part of question. Again s69 is relevant; I should have added ‘because rights only available from publication if in English’ – hence I only gave implicit reasoning, having already discussed publication in some detail for the GB case. The potential cost of implicit reasoning has been noted previously in this book. It’s easy to do, so be vigilant.

Note European impact but don’t get tied up in whether it’s going to be a problem in Monaco or some such. Know when to stop.

Future Liabilities:

Vary depending on whether MP amend EP1 to cover lead

- Note EP1 description has been amended to remove reference to lead. If deleted without prejudice, could be reinstated before grant - If lead claimed, may not incur damages since publication if not reasonable to expect grant. - Previous investigations for lead likely s60(5) exempt as experiments in any case - But would seriously impact target firms plans for future. - MP could also file a divisional to lead before grant

If lead claimed & granted, could seek a licence: - MP may be amenable since would not be direct competitor (can’t use lead in own products).

Validity of GB1 Move on to future infringements. Again, inform the Examiner.

Classic set of what-can-thepatentee-do-and-what-effectswould-this-have list.

Again s69 possibly relevant

Some actions possibly exempt …because firm would infringe lead under s60(1) for sales after grant. Implicit reasoning again.

Consider outcome so can talk about dealing with it sensibly. This bit of advice flows naturally from the discussion, but try to corral advice in final section. Make notes as you go.

Question whether sufficiency for Si since only worked example is for tin; however claims only directed to tin so assume likely valid. However, note GB1 will be replaced if EP1 grants as expected.

Validity of EP Similar issue re sufficiency for Si claim since only worked example is for tin. Similar issue for lead if claimed. Problem for Si underlined by literature article not cited against EP case. Possible that only tin claim is valid, but depends on the precise facts. - Therefore, possible would not infringe any enforceable claim for EP1: - Tin published in French, may have not used / ceased use before grant, - Lead possibly not valid at grant. Move on to next part of question – Validity

Looks like GB1 is probably valid, so client might be liable under GB1 if sold tin lining MWaves

EP1 tin is probably valid. Silicon and lead may have sufficiency problems. Case against silicon probably stronger. Case against lead may depend on whether content of EP1 clearly points to food preparation, for example. Summarise, but cannot call the result for certain.

Actions and Advice

Target firm might infringe GB1 if sold tin lined MWaves after GB1 published. Note GB1 will be replaced by EP1(GB) ‘soon’, which tin MWaves would not have infringed (since pub in French). - Get target firm to indemnify client against damage/costs for any possible infringements

EP1 could be amended to include lead, or a lead divisional could be filed, before grant. - Therefore, advise waiting until EP1 grants before launching / publicising lead lined

MWaves – MP can’t add lead or file div after grant – can continue with current

‘unchanged’ product in meantime. MP then has not motive to add lead claim at this stage. - So set up watch on EP1 as noted earlier

Consider filing an opposition within 9 months of the grant of EP1, citing the validity issues mentioned earlier – sufficiency is valid ground

If client in same field as target firm, also check they don’t infringe MP patents Move on to last part of answer and tell Examiner

Clearly inform of any bad news. Probably should have spelled out possible consequences here.

Action for client to mitigate possible consequence

More bad news

Common sense plan to avoid it

Whenever an EP grants within the timeframe of a question, think about opposition. Again, it’s a matter of knowing when to stop – you could invoke a ‘squeeze’ argument here that if tin provides sufficiency for silicon/lead then silicon article may be obvious for tin/lead – but we are at least two levels of speculation in already, so probably time to stop. Expected opposition would be a bigger part of the answer, but if follow advice, then unlikely to be on the hook for EP1 infringement of lead anyway. Meanwhile the validity issues that would list as grounds are already covered.

Post Mortem

• Q7 was a fairly standard question; basic infringement law plus a couple of related curveballs – In particular, an emphasis on rights at publication, plus speculation on what MP may be able to assert in due course and what may be valid. Past and future events made organisation important. – Hopefully gained some inkling about these issues when making notes at the start. • I used a ‘standard’ infringement answer approach: – Establish facts; existing and possible future patent rights. – Identify existing and possible future infringements. – Determine validity of rights. – Discuss consequences and give relevant (but fairly standard) advice. • I tried to use all the information in the question, as follows: – “I’m currently discussing X. What could be relevant to X in the question?”. – And occasionally: “I haven’t yet used Y. What issue would Y be relevant for?”. – particularly if mopping up near the end of a section in the answer • I addressed the curveballs as they naturally arose: – E.g. whether s69 applied for infringement after publication, speculations on EP1, and second-tier issues such as exemptions, prior art and sufficiency, and business issues relating to the window-dressing of the question (e.g. when to launch product). • Conversely, I avoided going down several rabbit holes: – E.g. FR lapse, Overseas situation, Opposition overkill. • It should also be clear that there wasn’t much to say about the infringements themselves. – I.e. Not much on sections 60(1), (2) or (3), beyond noting that sales are infringements, and non-commercial experimentation generally isn’t. Again, know when to stop. • There were some easy marks I missed: – I didn’t explicitly state that EP1 is not enforceable until publication of mention of grant. – I forgot a standard recital of remedies for MP if infringed (damages, delivery up, etc). – I asked target firm to indemnify client (0 marks) but forgot their customers (1 mark). – Since some prior art was mentioned, I could have suggested a prior art search, and could have filed an opposition if any relevant to lead turned up. • There were also a few I would never have thought of: – File client’s invention, with narrow claims – I was thinking as an infringer, not an inventor. – Consider filing third-party observations on EP1 – I skipped straight to ‘keep a low profile’. • Looking at PEB’s comments and the marking scheme, I think I got 16 marks, ± 1. – The average mark for this question in the exam was 9/25. • I think it is fair to say that my answer is not especially brilliant or insightful, but what it does do is methodically address all the issues in a logical way, resulting in a safe pass almost as a by-product. • This is the key to getting a good set of marks, and the ultimate lesson to take from this section of the book.