THE JOINT EXAMINATION BOARD
PAPER P1
BASIC UNITED KINGDOM PATENT LAW AND PROCEDURE
10 November 2003
10.-1.
Plea read the following instructions carefully. Time allowed THREE HOURS
1.You should attempt FOUR questions from Part A and THREE questions from
Part B. There are 9 questions altogether, 5 in Part A and 4 in Part B.
2.Each question in Part A carries 10 marks and each question in Part B carries 20
marks.
3.Where a question permits, reasons should be given for the conclusions reached.
4.Plea note the following:
•Start each question (but not necessarily each part of a question) on a fresh sheet of paper;
•Enter the Paper number, the Question number and your Examination number in the appropriate boxes at the top of each sheet of paper;
•Write on one side of the paper only, within the printed margins, using a BLACK pen;
•DO NOT u coloured pens or highlighters within the answers, they will not photocopy;
•DO NOT staple or join pages together in any way;
•DO NOT state your name anywhere in the answers.
5.Unless specifically requested, answers are NOT required in letter form.
6.NO printed matter or other written material may be taken into the examination
room.
ALL mobile phones and electronic aids must be switched off and stored away. 7.Answers MUST be legible. If the examiners cannot read a candidate’s answer no marks will be awarded.
8.NO WRITING OF ANY KIND WILL BE PERMITTED AFTER THE TIME LIMIT ALLOTTED TO THIS PAPER HAS EXPIRED. At the end of the examination asmble you answer sheets in QUESTION NUMBER ORDER and place in the WHITE envelope provided.
This paper consists of four pages including this page.
Part A – Answer Four Questions from this Part
1a)What is a priority date and why is it so important?
b)Under what circumstances can a national United Kingdom patent
application, filed at the UK patent office, validly claim a priority date of
more than one year prior to the UK filing date?
穿王消炎胶囊的功效
c)Explain the circumstances under which a claim can have more than one
priority date.
d)For a UK patent application, what documents must be filed, and by when, to
support a priority claim from a foreign patent application.
(10 Marks)
2.a)How do you determine if there is unity of invention with two independent
apparatus claims?
b)If there is not unity of invention, and only the first invention is arched by
独乐寺简介the Patent Office, under what circumstances will the Patent Office arch
the further invention?
c)If a divisional application is filed for an invention, what conditions must be
met for the Search fee to be refundable?
(10 marks)
3.For a UK patent application which does not claim priority from an earlier filed UK
or foreign patent application, what formal requirements, including time limits,
must have been met before the Patent Office will issue:
a) a arch report;
b) a combined arch and examination report;
纳米是什么材料c) a certificate of grant.
(10 marks)
4.Outline the provisions relating to endorsing a patent Licences of Right under the
Patents Act 1977 (S. 46, S. 47).
What disadvantages might result from endorsing a UK patent Licences of Right and can the endorment be cancelled.
(10 marks)
5. A United Kingdom patent application was filed with no priority claim. The arch
report on the UK application cites a European patent application having a filing
date earlier than the filing date of the UK application but a publication date later
than the filing date of the UK application.
(i)What is the prior art effect of the European patent application? Explain.
(ii)What difference would it make, if any, if the European patent application
were published before the filing date of the UK application?
(iii)What is the prior art effect of a PCT application filed in the English
一锅法language and designating the UK as a national designation (ignore the possibility of an EP designation in the PCT application)?
女人学会爱自己
(10 marks)
Part B – Answer Three Questions from this Part
6. A new client, a very small lighting installation and design company, writes:
“Our main competitor last week started lling a lighting control system which,
judging by their advertising, ems to be almost exactly the same as our patented
system. Due to its complexity, they must have been developing the lighting control system for months. We telephoned the patent office to check on our patent and they told us that the renewal fee due earlier this year has not been paid. We are
surprid becau we u a renewal rvice to nd us reminders and pay renewal
fees on our lighting control system patent GB2202020. We are worried that our
patent has lapd and we would like to get it back and stop our competitor lling
their system. Is this possible?”
Make notes for a meeting with the client, detailing the questions you would ask and the conquenc
es of the answers. Detail also any investigations you would make
prior to the meeting.
(20 marks)
7.In relation to UK patent law and procedure, draft a letter to a UK client explaining
the meaning of the following terms:
a)third party obrvations;
(3 marks)
b)divisional application (do not discuss time limits or formal requirements);
(4 marks)
c)compulsory licence;
(5 marks)
d)sufficiency of disclosure;
(4 marks)
e)contributory infringement.
(4 marks) 8.Discuss two of the following cas:
a.‘Catnic’ or ‘Improver’, either one - at your choice (claim construction)
b.‘United Wire v. Screen Repair Services’ (repair of patented product)
c.‘Du Pont’s (Witsiepe’s) application’ (anticipation – lection)
d.‘Lux Traffic v. Pike Controls’ (novelty – prior u)
(20 marks)
9.Explain the provisions of the Patents Act 1977 relating to amendment of
applications and patents, and tho relating to making a correction. Highlight the
differences between amendment and correction.
Indicate the procedure that would be followed at the Patent Office (not the Courts)
when eking to make an amendment or to correct an error in a patent application
and in a patent, indicating any relevant time constraints.
(20 marks)
THE JOINT EXAMINATION BOARD
PAPER P1 - 2003
EXAMINERS COMMENTS
General
Candidates are expected to have knowledge of and understand the basic provisions of the Patents Act 1977. The syllabus lays out what Sections are most important for this paper. Candidates are not expected to have a detailed knowledge, not are they expected to discuss issues of copyright, de
sign right, or other intellectual property, nor discuss aspects of foreign law, including European and PCT law. Accordingly, marks are awardable only for making points relevant to UK patent law.
Some questions expect just a discussion of the relevant provisions of the Patents Act, although in some questions there will also be marks available for stating what practical considerations you would also take into account. For example, to restore a lapd patent, it is necessary to provide evidence showing that reasonable care was taken to ensure that the renewal fee was paid on time. The facts of the question might even allow it to be stated what evidence might be provided, e.g. a copy of the instructing letter to the person responsible for paying the fee, or an affidavit sworn by the person who relied on an error in a document indicating that the fee had been paid (the are not necessarily related to any question in the 2003 paper, but are stated as examples). This kind of information is much more important, in real life as well as in answering this paper, than details of the exact time limit for filing a respon to an opposition to an application to correct an application, and details of the form that needs to be ud, for example.
It is critical to know the relevant legislation, and candidates who can paraphra the relevant law at appropriate points typically score fairly well. However, it is more important to have an understanding of what the law means, since otherwi it is easy to answer questions wrongly. One example where
this was particularly prominent is in question 1(c) of the 2003 paper. Almost all of the candidates knew that a claim could have more than one priority date, presumably becau this is written in statute. However, few candidates em to have thought about how this might occur, and many guesd (wrongly) in what circumstances this might happen. Only tho candidates that had taken the time to think about and understand the statutory provision could correctly state that a claim including alternatives, with the alternatives having different dates, could have more than one priority date.
Q1
a)Most answers failed to say what a priority date was. The phra from Section
5(2)(a) “supported by matter disclod in the earlier application” was
expected. This issue is particularly important becau the state of art
determined with respect to priority date.
b)Many candidates mistakenly discusd divisional and replacement
applications, but the are afforded the filing date of the application from
which they are derived, so are not relevant to this question. The answer
快递哪家便宜又好concerns occasions when the 12 month anniversary falls on a day when the
Patent Office is clod. Wrongly, some thought that the late filed drawings
provisions of Rule 2.3 could allow you to circumvent the provisions of
Section 5(2).
c)Many candidates failed to explain the circumstances, which is what the
question asked for, although most were aware (by S.125(2)) that a claim could have 2 dates. Many incorrectly discusd a claim having feature combinations not found in a priority application. See also the general comments above. d)This required a discussion of when certified copies and any verified
translations needed to be filed. Marks were awarded for mention of possible
extensions of time.
Q2The Examiners were disappointed at the extent of candidates’ ignorance of the law surrounding unity of invention. Section 17(6) and (7) and Rule 32 are clear as to the requirements for there being unity, and for a further arch to
be carried out. Rule 102 deals with refunds of arch fees paid in connection
with divisional applications.
It is important to be able to determine whether or not two claims are not
linked to form a single inventive concept, especially considering the
conquences with regard to the costs of additional arches and divisional分数的产生
applications.
郑伊月
Q3.Some candidates were confud as to whether formal drawings (if needed) and an abstract were required before a arch report could be issued. The
request referred to formal requirements, so novelty and inventive step did not need discussing. A nu
mber of candidates thought that a grant fee was payable before grant. Mention of the statement of inventorship was expected if the
applicant(s) were not the inventors. Many candidates overlooked the
requirements for a filing date, which would need to be met before an
application could be arched.
Q4This was a straightforward question that allowed candidates to write all their relevant knowledge surrounding a particular topic, in this ca licens of
right. Marks were awardable for discussing the basic provisions, and also for
mention of what is opposable and on what grounds, and what is published in the journal. Marks were not awarded for detailing the exact opposition
procedure, since the Examiners do not consider this to be so relevant as other issues which could be discusd. The question required a discussion of what
disadvantages there might be, which gave candidates an opportunity to show
that they understood what the effects of the provisions are.
