#8602 - Rights Protecting Invention

Rights protecting invention - Patents

What?	Patent = inventor making bargain w/state making public disc in return for patent for a limited period of max of 20 yrs subject to renewal Monopoly right to use and exploit an invention which can be used industrially initial period of 4 yrd then renewable w/fee Generally 2 x types product P - the invention relates to a new product or an improvement to a product Process P - the invention relates to a new process of new way of carrying out a process
Sources	Patents Act 1977 (‘PA’) Body = IPO

What?

Patent = inventor making bargain w/state making public disc in return for patent for a limited period of max of 20 yrs subject to renewal
Monopoly right to use and exploit an invention which can be used industrially
initial period of 4 yrd then renewable w/fee
Generally 2 x types

product P - the invention relates to a new product or an improvement to a product
Process P - the invention relates to a new process of new way of carrying out a process

Sources

Patents Act 1977 (‘PA’)
Body = IPO

Stage 1 - Registrability

Criteria s.1(1)	S.1(1) lays out 4 x criteria: novelty Inventive step Capable of industrial application Not excluded by PA
(1) Novelty s.2	really looking @ whether client’s invention is already out there Invention must be totally ‘new’ ie. Product or process must not already form part of state of the art known to public @ priory date of patent Priory date = generally date of filing of app s.5 State of art: s.2(2) = ‘all matter (whether product, process of info re either or anything else) which has, @ any time before the priority date of that invention, been made available to public (whether in UK or elsewhere) by written or oral description, by use or in any other way.’ Eg. Publication of any kind, prior apps for Ps, use of invention in public
Windsurfing International	12 yr old boy built a homemade surfboard and used it in public for a few wknds P granted for a similar surfboard many yrs later [unrelated parties] Later P declared invalid because it was not ‘novel’ because boy had sailed his similar surfboard in public and therefore it formed part of the ‘state of the art’ before the P’s priority date
Anticipation (aka enabling disc)	Disc destroys novelty if amounts to enabling disc = enough for someone skilled in the arts to be able to work out invention. Hypothetical test. Nb. Confidential discs don’t destroy novelty
Self-disc	invention will be disc’ed and form part of state even if the inventor himself has made prior disc. Advise client to keep all deets of invention totally secret (apart from disc to P agen and solicitor) If disc to some extent is necessary to get investment, always make sure all parties sign confidentiality ag
Disc made unlawfully or in breach of conf s.2(4)	S.2(4) provides some exceptions to strict rule on self-disc. Any disc will be disregarded if: the disc of the info has been made as a consequence of a breach of conf, or was obtain unlawfully; and The inventor applies for a P w/in 6 months of breach of disc by party in breach
Grace period s.2(4)(b)	Inventor has grace period of 6 months from disc to file his P application after public disc has prima facie destroyed novelty
(2) Inventive step s.3	Look @ similar technology and ask if obvious to person skilled in the art Person skilled in art = the ‘experience but unimaginative technician’, they are a legal fiction Windsurfing/Pozzoli test: (1) (a) identify notional ‘person skilled in art’; and identify what common/general knowledge that person would have @ priority date identify inventive concept of product or process What differences are there between this invention and the state of the art? Do these differences amount to steps that would have been obvious to person skilled in the art if they had no knowledge of invention in q? If so, there is no inventive step - the invention can be v simple and still qualify as an ‘inventive step’
(3) Industrial application s.4	Invention is capable of industrial application if it can be ‘made or used in any kind of industry, including agriculture’ Construed widely by court Extremely rare for this step not to be satisfied
(4) Not excluded by PA ss.1(1)(d) and ss.1(2) and (3)	Final requirement is that invention mustn’t be excluded by s.1(1)(d) S.1(2) provides a non-exhaustive list of what is not an invention for P purposes so check out in statute: A discovery, scientific theory or mathematical method Literary, dramatic, musical or artistic work (cf C) Scheme, rule or method for performing a mental act, playing a game or doing business Notably computer programmes, you can’t get Ps for those but you can get Cs S.1(3) excludes certain inventions from patentability on certain public policy grounds
Application for P	Ss.14-21 - typical app takes 2 - 3 yrs Costs in the region of 2,000
Duration s.25	Take effect from date of grant Last for a maximum of 20 yrs from date of filing Initial grant = 4 yrs after which annual fees must be paid w/in 3 months of each anniversary of date of grant
Ownership and licensing ss.7, 30, 39, 40	First owner = usually inventor or joint inventor unless contractual agreements in place s.7 If in course of e’ent, belongs to e’ee s.39. Although if out of course of ord business may belong to e’ee or if provision in e’ent contract ss.39(2) and 42(2) Particularly valuable inventions may grant compensation rights for their e’ee inventors s.40 P = personal property s.30(1) and rights in it can be licensed, mortgaged or assigned s.30(2)

For infringement q’s, check:

has P come into existence? S.25(1) P takes effect on date grant of P is published
Has P expired? Check renewal fees have been paid if outside 4 yr initial period
Who owns P? Ie who is named on register?

Stage 2

Infringing act	direct Indirect
(a) direct s.60(1)	Product: making of, disposing of, offering to dispose of, using, keeping or importing the product s.60(1)(a) Process: using the process or offering it for use ... When the infringer knows or it is obvious to a r’able person ... That its use ... Would be infringement s.60(1)(b) Disposing of, offering to dipose of, using or importing any product obtained directly by means of the process or keeping any such product whether for disposal or otherwise s.60(1)(c)
(b) indirect s.60(2)	Also an inf to do supply the means by which another person could put the invention into effect, when the supplier knows, or it obvious to a r’able man in these circs, that this is a suitable means of putting the invention into effect in the UK

(a) direct s.60(1)

Product: making of, disposing of, offering to dispose of, using, keeping or importing the product s.60(1)(a)

Process:

using the process or offering it for use ... When the infringer knows or it is obvious to a r’able person ... That its use ... Would be infringement s.60(1)(b)
Disposing of, offering to dipose of, using or importing any product obtained directly by means of the process or keeping any such product whether for disposal or otherwise s.60(1)(c)

(b) indirect s.60(2)

Also an inf to do supply the means by which another person could put the invention into effect, when the supplier knows, or it obvious to a r’able man in these circs, that this is a suitable means of putting the invention into effect in the UK

Stage 3 - Comparison and construing the P claims

P claim construction	what person skilled in arts understands terms to mean Use description and drawing in P claims Purposive approach - the midway point Not strict literal meaning Not a guideline S.125 PA and Art 69 European Patent Convention and Protocol Art 69 = scope of P protection for an invention should be determined by P claims, as interpreted by the description and any drawings

Stages 4 and 5

Stage 4 - Defences	P is invalid (due to its revocation under s.72) but not w/in claim D’s actions are outsie the scope of P (ie. Not inf’ing) Act done privately for non-commercial purposes or for experimental purposes do not inf s.60(5) Use began before priority date s.64
Stage 5 - Remedies	S.61 injunction Order to deliver up/destroy Damages or account of profits s.61(2) see also s.62 Declaration that the P is valid and has been inf’ed
Innocent inf’er s.62	P owner will not be able to claim damages or an account of profits (but may still an inj) if D can prove that, @ time of inf, he was not aware of P and has no r’able grounds for supposing that it existed Clients may wish to give 3rd parties notice of their rights by marking product to that. Under s.62(1) simply marking product as ‘patented’ is not sufficient to give notice, the actual patent number must be shown
Revocation s.72	4 x grounds: P isn’t patentable because doesn’t satisfy requirements of novelty, inventive step, capable of industrial application or falls w/in an excluded category P is insufficient because the specification doesn’t disclose the invention clearly enough for a person skilled in the arts to reproduce it P has been granted to wrong owner, this is termed ‘non...

Stage 4 - Defences

P is invalid (due to its revocation under s.72) but not w/in claim
D’s actions are outsie the scope of P (ie. Not inf’ing)
Act done privately for non-commercial purposes or for experimental purposes do not inf s.60(5)
Use began before priority date s.64

Stage 5 - Remedies

S.61

injunction
Order to deliver up/destroy
Damages or account of profits s.61(2) see also s.62
Declaration that the P is valid and has been inf’ed

Innocent inf’er s.62

P owner will not be able to claim damages or an account of profits (but may still an inj) if D can prove that, @ time of inf, he was not aware of P and has no r’able grounds for supposing that it existed
Clients may wish to give 3rd parties notice of their rights by marking product to that. Under s.62(1) simply marking product as ‘patented’ is not sufficient to give notice, the actual patent number must be shown

Revocation s.72

4 x grounds:

P isn’t patentable because doesn’t satisfy requirements of novelty, inventive step, capable of industrial application or falls w/in an excluded category
P is insufficient because the specification doesn’t disclose the invention clearly enough for a person skilled in the arts to reproduce it
P has been granted to wrong owner, this is termed ‘non...

#8602 - Rights Protecting Invention - Commercial and IP

What?

Sources

Criteria s.1(1)

(1) Novelty s.2

Windsurfing International

Anticipation (aka enabling disc)

Self-disc

Disc made unlawfully or in breach of conf s.2(4)

Grace period s.2(4)(b)

(2) Inventive step s.3

(3) Industrial application s.4

(4) Not excluded by PA ss.1(1)(d) and ss.1(2) and (3)

Application for P

Duration s.25

Ownership and licensing ss.7, 30, 39, 40

Infringing act

(a) direct s.60(1)

(b) indirect s.60(2)

P claim construction

Stage 4 - Defences

Stage 5 - Remedies

Innocent inf’er s.62

Revocation s.72

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