Infringment Flashcards Preview

Law paper > Infringment > Flashcards

Flashcards in Infringment Deck (61)
Loading flashcards...
31

What section deals with Proceeds for infringement brought by exclusive licencees

S67

32

What rights does an exclusive license give you?

The exclusive right to carry out the invention
AND
The right to enforce the patent as if the proprietor

33

If the exclusive licensee of a patent enforces the patent against an infringer what are the effects

The proprietor of the patent is made a party to proceedings, however is not liable for costs unless he enters an appearance and takes part in proceedings

34

What is an exclusive licensee

given a licence to the exclusion of all others of "any right" not all rights - eg can be limited geographically eg scotland or only to the exclusive manufacture not sale etc.

35

What does section 68 deal with

Effect of non-registration of a license

36

What section deals with non registration of a license?

S68

37

How long do parties have to register a license?

The comptroller will only award costs or expenses in infringement proceedings brought about by an assignee or exclusive licensee
IF
The transaction, instrument or event is registered within six months
OR
IF not within six months as soon as practically possible

38

S69 deals with what

Infringement of rights conferred by publication of an application

39

What section deals with infringement of rights conferred by publication?

A published UK patent or PCT(GB) or EP(GB) shall have from the date of publication to grant the same rights as the granted patent
IF
The patent is granted and in force
AND
The infringing act infringes the published claims and the granted claims
AND
When considering damages for such an infringement the court or the comptroller shall consider whether or not it would have been reasonable to expect a from the application as published for a patent to grant. If not damages shall be reduced as he sees fit.

40

What section deals with a declaration of none infringment

S71

41

What does S71 deal with?

Declarations or Declarator of non-infringment

42

What conditions must be fulfilled for a declaration under S71

For a declaration of non infringement to be issued by a Court or the Comptroller
IF
The person must have already written to the proprietor of the patent requesting such a declaration
AND
the proprietor must have either refused or failed to acknowledge the request

43

What is the result of requesting a declaration of non-infringment?

The court or comptroller will provide an opinion on infringment. In doing so they will question the validity of the patent. If the patent is found to be invalid this will not result in revocation unless proceedings are brought under S72

44

What does S72 deal with

the power to revoke patents

45

What section deals with the general power to revok patents?

S72

46

Who can intervene under S72

any person including the proprietor of the patent

47

On what grounds can a patent be revoked under S72

PPEAS
The invention is not patentable
OR
The patent was granted to a person not entitled
OR
Lack of sufficiency
OR
added matter
OR
the protection of the patent was extended by an amendment that should not be allowed.

P atentability
P ostgrant amendment not allowable
E ntitlement
A dded mattert
S ufficiency

48

What are the limitations on revocation under S72(1)(b) entitlement?

The person making the intervention must have been found to be entitled to grant of the patent during S71 declaration of non-infringement or S37 post grant entitlement proceedings
AND
Proceedings must be brought before the second anniversary of the grant of the patent
UNLESS
the proprietor knew at the point of grant he was not entitled

49

when can't an application for revocation be refered to the court?

When an outstanding application under S27 is outstanding with the Comptroller
UNLESS
The proprietor agrees
OR
the comptroller certifies in writing that a court would be more suitable to properly determine the outcome of the proceeings

50

How many application for revocation can a person make?

only one unless given leave by the courts

51

What effect do revocation proceedings have on the right to challenge validity during infringement proceedings?

no effect. The proceedings can occur in paralell

52

What grounds can't be used as grounds for revocation?

Unity and clarity

53

What effect does revocation under S72 have and how does it different to S29 surrender?

Revocation is retroactive, so it is as if the patent never granted. Therefore, licencees may sue for any fees back or any previous damages awarded for infringment may have to be repaid.
Surrender of a patent under S29 is not retroactive thus no issue. This is also why an application under S29 is not likely to be granted during any proceedings that may call validity into question

54

What is section 73

The comptrollers power to revolk

55

What section deals with the comptroller's power to revolk

S73

56

On what grounds will the comptroller revolk a patent under S73

S73 exists to prevent double patenting.
Thus
If a patent is no longer novel by virtue of S2(3) noveltry destroying prior art the comptroller will revolk - but must inform the proprietor and give the opportunity to amend under S75 subject to S76
OR
If the validity of the patent is found lacking under S74A opinion of validity
OR
A patent with the same subject matter, same priority date and same appliant is granted by EP (after opposition period or oppositions finish)
IN ALL CASES
the proprietor has the opportunity to amend within S76 to make the patent valid/not double patented

57

What does S74 concern?

Proceedings during which validity may be put at issue

58

what section Proceedings during which validity may be put at issue

S74

59

What proceedings may allow the validity of a patent to be questioned?

DRATIC
S61 & S69 infringement proceedings of a patent or published application
OR
S70A Actionable threat
OR
S71 Declaration of none infringement
OR
S72 Revocation
OR
S58 disputed crown use
AND
NO OTHERS

DRATIC
D eclarations of validity and infringement
R evocation proceedings
A ctionable
T hreats proceedings
I nfringment proceedings of a patent or published ap
c rown use disputed

60

What section deals with burden of proof?

S100