Flashcards in Infringment Deck (61)
What section deals with Proceeds for infringement brought by exclusive licencees
What rights does an exclusive license give you?
The exclusive right to carry out the invention
The right to enforce the patent as if the proprietor
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
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.
What does section 68 deal with
Effect of non-registration of a license
What section deals with non registration of a license?
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
The transaction, instrument or event is registered within six months
IF not within six months as soon as practically possible
S69 deals with what
Infringement of rights conferred by publication of an application
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
The patent is granted and in force
The infringing act infringes the published claims and the granted claims
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.
What section deals with a declaration of none infringment
What does S71 deal with?
Declarations or Declarator of non-infringment
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
The person must have already written to the proprietor of the patent requesting such a declaration
the proprietor must have either refused or failed to acknowledge the request
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
What does S72 deal with
the power to revoke patents
What section deals with the general power to revok patents?
Who can intervene under S72
any person including the proprietor of the patent
On what grounds can a patent be revoked under S72
The invention is not patentable
The patent was granted to a person not entitled
Lack of sufficiency
the protection of the patent was extended by an amendment that should not be allowed.
P ostgrant amendment not allowable
A dded mattert
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
Proceedings must be brought before the second anniversary of the grant of the patent
the proprietor knew at the point of grant he was not entitled
when can't an application for revocation be refered to the court?
When an outstanding application under S27 is outstanding with the Comptroller
The proprietor agrees
the comptroller certifies in writing that a court would be more suitable to properly determine the outcome of the proceeings
How many application for revocation can a person make?
only one unless given leave by the courts
What effect do revocation proceedings have on the right to challenge validity during infringement proceedings?
no effect. The proceedings can occur in paralell
What grounds can't be used as grounds for revocation?
Unity and clarity
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
What is section 73
The comptrollers power to revolk
What section deals with the comptroller's power to revolk
On what grounds will the comptroller revolk a patent under S73
S73 exists to prevent double patenting.
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
If the validity of the patent is found lacking under S74A opinion of validity
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
What does S74 concern?
Proceedings during which validity may be put at issue
what section Proceedings during which validity may be put at issue
What proceedings may allow the validity of a patent to be questioned?
S61 & S69 infringement proceedings of a patent or published application
S70A Actionable threat
S71 Declaration of none infringement
S58 disputed crown use
D eclarations of validity and infringement
R evocation proceedings
T hreats proceedings
I nfringment proceedings of a patent or published ap
c rown use disputed