Patents [PA]

Patents [PA]

(1) Monopoly right to use and exploit the invention for industrial use
1. Must be either a product or process
(2) Criteria for registration [s. 1]
1. (i) Novelty - New product/process not already state of the art known to the public at the date of application [s. 2(1)]
  1. State of the art: already available to the public [s. 2(2)]
    1. Use in public defeats novelty as state of the art [Windsurfing v Tabur]
    2. 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.)
      1. 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
2. (ii) Inventive step - Must involve a step not obvious to a person skilled in the art [s. 3]
  1. Otherwise not patentable and can be revoked [s. 72(1)(a)]
  2. Pozzoli test:
    1. Identify person skilled in the art
    2. Identify the inventive concept
    3. Identify differences between state of art and inventive step
    4. Identify whether the differences are something someone skilled in state of the art would know
3. (iii) Industrial application [s. 4]
4. (iv) Not excluded [s. 1(1)(d)] [s. 1(2)] [s. 1(3)]
(3) Application & Duration
1. (i) Sufficiency (requirements for sufficient application) [s. 14(5)] [s. 14(3)] [s. 72(1)(c)]
  1. Must contain a description, giving details of prior art
  2. Must contain enabling specification (and possibly a drawing), teaching user how to put invention into practice
  3. Must provide claims defining scope of the right
2. (ii) Duration
  1. Maximum of 20 years from date of application
  2. Must be renewed after 4 years [s. 25(1)]
  3. Annual fees are payable after 4 years 3 months after each anniversary of the date of grant
(4) Ownership & Licensing
1. (i) First owner is usually inventor [s. 7]
2. (ii) If developed in normal course of employee's duties, owner is employer [s. 39] - exceptions [s. 39(2)] [s. 42(2)]
  1. But employed inventors of valuable works of outstanding benefit have right to compensation [s. 40]
3. (iii) Patents are personal property so can be licensed/assigned/mortgaged [s. 30(1)] [s. 30(2)]
  1. Assignment/mortgage must be in writing signed by both parties and registered at IPO [s. 30(6)]
  2. 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
1. (i) Validity/Ownership
  1. Has patent come into existence (check date of patent/expiry, renewal fees paid and name on register) [s. 25]
2. (ii) Infringing act
  1. Direct infringement [s. 60(1)]
    1. Making, disposing, importing, keeping product [s. 60(1)(a)]
    2. Using process, where infringer knows or reasonably should know that this is an infringement [s. 60(1)(b)]
    3. Disposing, using or importing the product obtained by using the process [s. 60(1)(c)]
  2. Indirect infringement [s. 60(2)]
    1. 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
3. (iii) Comparison
  1. Check infringing act comes within scope of patent
  2. Patent is construed as what a person skilled in the art would understand the patent to mean
    1. Wording should be wide enough to capture variants but not so wide that it can be challenged for novelty
  3. 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)]
    1. Interpretation aims to provide fair protection for patentee and reasonable degree of certainty for third parties [Protocol for Interpretation of A69]
(6) Defences
1. Outside scope of patent
2. Done for non-commercial purposes [s. 60(5)]
3. Use began before priority date [s. 64]
4. Patent is invalid (revocation) [s. 72/74] - revoked if
  1. Doesn't satisfy grounds (inventive step, novelty, etc.)
  2. Was granted to wrong owner
  3. Specification is insufficiently clear
  4. Was amended without permission
(7) Remedies
1. Injunction, delivery up, declaration of validity of patent
2. Damages and account of profits [s. 61(2)]
  1. If infringed innocently (not reasonably aware patent existed) damages not available [s. 62(1)]
3. Post-expiry injunction [Dyson v Hoover]
  1. 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

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