Patents [PA]

Patents [PA]

1. (1) Monopoly right to use and exploit the invention for industrial use

   • Must be either a product or process

2. (2) Criteria for registration [s. 1]

   • (i) Novelty - New product/process not already state of the art known to the public at the date of application [s. 2(1)]
     • State of the art: already available to the public [s. 2(2)]
       • Use in public defeats novelty as state of the art [Windsurfing v Tabur]
       • If anticipated in the state of the art, i.e. disclosed to someone sufficiently skilled, this is an enabling disclosure - which defeats novelty (use, sale, exhibition, etc.)
         • Disclosure is disregarded if the details were obtained unlawfully (e.g. breach of confidentiality) and if the inventor applies for a patent within 6 months [s. 2(4)]
           • If no patent application is made in this time, novelty is defeated
   • (ii) Inventive step - Must involve a step not obvious to a person skilled in the art [s. 3]
     • Otherwise not patentable and can be revoked [s. 72(1)(a)]
     • Pozzoli test:
       • Identify person skilled in the art
       • Identify the inventive concept
       • Identify differences between state of art and inventive step
       • Identify whether the differences are something someone skilled in state of the art would know
   • (iii) Industrial application [s. 4]
   • (iv) Not excluded [s. 1(1)(d)] [s. 1(2)] [s. 1(3)]

3. (3) Application & Duration

   • (i) Sufficiency (requirements for sufficient application) [s. 14(5)] [s. 14(3)] [s. 72(1)(c)]
     • Must contain a description, giving details of prior art
     • Must contain enabling specification (and possibly a drawing), teaching user how to put invention into practice
     • Must provide claims defining scope of the right
   • (ii) Duration
     • Maximum of 20 years from date of application
     • Must be renewed after 4 years [s. 25(1)]
     • Annual fees are payable after 4 years 3 months after each anniversary of the date of grant

4. (4) Ownership & Licensing

   • (i) First owner is usually inventor [s. 7]
   • (ii) If developed in normal course of employee's duties, owner is employer [s. 39] - exceptions [s. 39(2)] [s. 42(2)]
     • But employed inventors of valuable works of outstanding benefit have right to compensation [s. 40]
   • (iii) Patents are personal property so can be licensed/assigned/mortgaged [s. 30(1)] [s. 30(2)]
     • Assignment/mortgage must be in writing signed by both parties and registered at IPO [s. 30(6)]
     • Court may grant compulsory license to prevent owner letting invention going to waste by not using it - can only be applied for 3 years after grant of patent [s. 48]

5. (5) Infringement

   • (i) Validity/Ownership
     • Has patent come into existence (check date of patent/expiry, renewal fees paid and name on register) [s. 25]
   • (ii) Infringing act
     • Direct infringement [s. 60(1)]
       • Making, disposing, importing, keeping product [s. 60(1)(a)]
       • Using process, where infringer knows or reasonably should know that this is an infringement [s. 60(1)(b)]
       • Disposing, using or importing the product obtained by using the process [s. 60(1)(c)]
     • Indirect infringement [s. 60(2)]
       • Supplying the means by which another can infringe, where the supplier knows or reasonably should have known the means were sufficient for putting the invention into effect in UK
   • (iii) Comparison
     • Check infringing act comes within scope of patent
     • Patent is construed as what a person skilled in the art would understand the patent to mean
       • Wording should be wide enough to capture variants but not so wide that it can be challenged for novelty
     • Scope determined by drawings and description, but take a purposive approach - combine literal meaning with essence of invention [A69 European Patent Convention] [s. 125(1)]
       • Interpretation aims to provide fair protection for patentee and reasonable degree of certainty for third parties [Protocol for Interpretation of A69]

6. (6) Defences

   • Outside scope of patent
   • Done for non-commercial purposes [s. 60(5)]
   • Use began before priority date [s. 64]
   • Patent is invalid (revocation) [s. 72/74] - revoked if
     • Doesn't satisfy grounds (inventive step, novelty, etc.)
     • Was granted to wrong owner
     • Specification is insufficiently clear
     • Was amended without permission

7. (7) Remedies

   • Injunction, delivery up, declaration of validity of patent
   • Damages and account of profits [s. 61(2)]
     • If infringed innocently (not reasonably aware patent existed) damages not available [s. 62(1)]
   • Post-expiry injunction [Dyson v Hoover]
     • D gained commercial advantage by infringing patent (by developing product) whilst in effect, so should not be able to benefit from marketing product immediately on expiry of patent - therefore post-expiry injunction granted