Zusammenfassung der Ressource
Patents [PA]
- (1) Monopoly right to
use and exploit
the invention for
industrial use
- Must be
either a
product or
process
- (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) 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) 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) 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) 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) 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