Patents 101 Part 2 The Law
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The document outlines the sources and structure of patent law in the UK, primarily focusing on the Patents Act 1977, the European Patent Convention (EPC), and the Patent Cooperation Treaty (PCT). It discusses key provisions related to patentability, applications, and the roles of various legal bodies in patent law enforcement. Additionally, it highlights the importance of international treaties such as TRIPS and the procedural frameworks governing patent litigation.
Patents 101 Part 2 The Law
- 1. 1 25 April 2020 Jane Lambert i 1. Sources of Law Like other areas of law, patent law is to be found in enactments and case law. 2. Enactments (1) The principal statute is the Patents Act 1977. This was passed to enable the UK to implement the European Patent Convention (“EPC”) and the Patent Cooperation Treaty (“PCT”). However, it also contains provisions that were to be found in the Patents Act 1949 and earlier legislation. Practitioners occasionally have to refer to the Patent Law Amendment Act 1852 which established the Patent Office (now known as the Intellectual Property Office (“IPO”) and even the Statue of Monopolies 1623 which preserved patents for inventions as an exception to a comprehensive abolition of monopolies. (2) The EPC established the European Patent Office (“EPO”) which grants patents known as “European patents” on behalf of the governments of the contracting parties. The EPC is not an EU treaty and the EPO is not an EU institution although all EU member states are party to the EPC. The UK remains a contracting party notwithstanding Brexit. European patents are granted for groups of contracting parties designated by patent owners. A European patent designating the UK is known as a “European patent (UK)”. European patents (UK) are treated for all practical purposes as though they were UK patents granted by the IPO. However, the procedure by which applications for European patents are examined is set out in the EPC. Patent attorneys seeking European patents on behalf of their clients have to be as familiar with the EPC as they are with their national statutes. Other IP practitioners have to be familiar with parts of the Convention. For instance, the EPC’s provisions on the interpretation of patent claims are incorporated by reference into English law by s.125 Patents 101 Part 2: The Law PP
- 2. 2 (3) of the Patents Act 1977. Similarly, disputes between EPO officials and applicants or patentees are referred to tribunals within the EPO known as “Boards of Appeal”. Barristers specializing in IP law are sometimes instructed to appear before the Boards of Appeal by English and other patent attorneys. (3) The PCT makes it cheaper and easier to apply for patents for groups of countries. Under the Paris Convention 1 an applicant for a patent in one contracting party has up to 12 months to apply for a patent in all the other contracting countries. This could be an expensive and time consuming exercise which resulted unnecessary duplication of effort since all patent offices needed to be satisfied of the inventions novelty, inventiveness and utility. The PCT enables an application to be made to the patent offices of all the countries in which the applicant seeks protection with a single filing. The application is lodged first with the applicant’s home patent office. A specialist UN agency known as the World Intellectual Property Organization (“the WIPO”) 2 arranges for basic searches and examinations to be carried out known as “the international phase”. If nothing is discovered during the international phase to indicate that the invention cannot be patented under any country’s law the application is passed to the individual patent offices to decide whether the invention merits a patent under their national laws. That second phase is called “the national phase”. Only patent attorneys who apply for patents through the PCT need to be familiar with its details but all IP practitioners need to be aware of the treaty (4) All IP practitioners need to be aware of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) 3 which was mentioned in Part 1. TRIPs is Annex 1C to the Marrakesh Agreement Establishing the World Trade Organization. It sets out minimum standards of protection for investment in intellectual assets (that is to say branding, design, technology and creativity). (5) Unlike other areas of intellectual property law there is very little EU law. There is no EU patent though there have been several attempts to agree one. There has been no wholesale attempt to approximate EU member states’ patent laws though there has been some harmonization with supplementary protection certificates (“SPC”) and the enforcement of IP rights, 3. Case Law Patent cases are allocated to two specialist courts within the Chancery Division known respectively as “the Patents Court” and the “Intellectual Property Enterprise Court” (“IPEC”). Appeal from those Courts lies to the Court of Appeal and the Supreme Court. Decisions of officials within the Intellectual Property Office (“IPO”) known as “hearing officers” are also reported. Although not binding on English courts, decisions of the EPO’s Boards of Appeal are sometimes referred to. Decisions of the Court of Justice of the European Union with regard to SPC, enforcement and a few other areas are also important. Decisions of all those courts and tribunals are reported in the Reports of Patent Cases (“RPC”) and the Fleet Street Reports (“FSR”). Decisions of the Court of 1 Paris Convention for the Protection of Industrial Property of 20 March, 1883, https://wipolex.wipo.int/en/text/288514 2 www.wipo.int 3 https://www.wto.org/english/docs_e/legal_e/27-trips_01_e.htm
- 3. 3 Justice, Supreme Court, Court of Appeal, the Patents Court and IPEC appear on BAILII (British and Irish Legal Information Institute) 4 . Hearing officers’ decisions appear on the IPO’s pages on the Government website. 5 4. A Closer Look at the Patents Act 1977 (1) This Act came into force on 1 June 1978. It has been amended substantially by the Copyright Designs and Patents Act 1988, the Patents Act 2004 and the Intellectual Property Act 2014 and to a lesser extent by various statutory instruments. An unofficial consolidation 6 can be downloaded from the IPO’s pages on the Government website. (2) The Act consists of 132 sections divided into 3 Parts and .there are 9 Schedules. (3) Part I which runs from s.1 to s.76A covers the new domestic law. Part II (s.77 to s.95) international conventions and Part III (s.96 to s.132) miscellaneous and general provisions. (4) The most frequently referred to provisions of Part I are: (a) Patentability (s.1 to s.6) (b) Entitlement (ss.7, 8, 9, 12 and 13) (c) Applications, particularly s.14 which is referred to in Part 1 (d) Examination and search (ss.17, 18 and 20) (e) Provisions after grant, particularly s.24 on publication and certificate of grant, s.25 on the term and s.27 on amendment after grant (f) S.37 on the determination of entitlement to a patent after grant (g) Employees’ inventions (s.39 to s.43) (h) Licences of right and compulsory licences (s.46 to s.54) (i) Infringement particularly s.60 and s.61 (j) Threats (s.70 to s.70F) (k) Declarations of non-infringement (s.71) (l) Revocation s.72 (m) Examiners’ opinions (s.74A and s.74B) (n) Amendment (s.75) (4) S.77 to s.83 are about European patents and European patent applications. Ss.89 and 89A and 89B concern PCT applications. The provisions for a Community patent have been repealed and the recently inserted 4 https://www.bailii.org/ 5 https://www.ipo.gov.uk/p-challenge-decision-results.htm 6 https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/647792/Consolidated_Patent s_Act_1977_-_1_October_2017.pdf
- 4. 4 s.88A and s.88B to give effect to the Unified Patent Court Agreement are probably redundant in view of the government’s indication that it intends to withdraw from that agreement. 7 (5) S.123 enables the Secretary of State to make rules for the regulation of the IPO, processing of patent applications and other matters. The Patents Rules 2007 8 have been made under these provisions. (6) S.125 contains important provisions on the construction of claims. 5. A Closer Look at the EPC (1) The EPC consists of 178 articles divided into 12 Parts. (2) Art 1 establishes a system of law, common to the Contracting States for the grant of patents for invention. (3) Art 2 (1) provides that patents granted under the convention shall be called “European patents.” Art 2 (2) adds: “The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.” Art 3 further provides: “The grant of a European patent may be requested for one or more of the Contracting States.” (4) Art 4 (1) establishes the European Patent Organization with two organs one of which is the EPO. The task of the Organization is to grant European patents which is to be carried out by the EPO. 9 Chapter IIII of Part I (arts 10 to 25) is concerned with the structure and management of the EPO. (5) Part II of the EPC is concerned with substantive patent law: (a) Chapter I (arts 52 to 57) with patentability (b) Chapter II (arts 58 to 62) with entitlement and inventorship (c) Art 63 (1) provides that the term of a European patent shall be 20 years from the date of filing of the application (d) Art 64 (1) provides that European patent shall confer on its proprietor in each country in respect of which it is granted, the same rights as would be conferred by a national patent granted. (e) Art 66 adds: “A European patent application which has been accorded a date of filing shall, in the designated Contracting States, be equivalent to a regular national filing, where appropriate with the priority claimed for the European patent application.” (f) Art 69 (1) contains one of the most important provisions of the EPC: 7 See Jane Lambert Volte-Face on the Unified Patent Court Agreement 29 Feb 2020 NIPC News https://nipcnews.blogspot.com/2020/02/volte-face-on-unified-patent-court.html 8 https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/694249/Patents-Rules- 2007-06042018.pdf 9 Art 4 (3)
- 5. 5 “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.” It is to be interpreted in accordance with the Protocol on Interpretation of art 69 which will be considered in detail in Part 5 of this course. (g) Chapter IV (arts 71 to 74) is concerned with licensing and assignments (6) Part III (arts 75 to 105C) is concerned with applications for European patents. Art 99 provides for a procedure known as “opposition” in which a European patent can be challenged in the EPO within 9 months of grant. (7) Part 6 (arts 106 to 112a) establishes an appeal process to independent boards of appeal. IP Litigation IP litigation is governed by CPR Part 63 10 , the Part 63 Practice Direction 11 , the Patents Court Guide 12 and the Intellectual Property Enterprise Court Guide. 13 i Jane Lambert 4-5 Gray’s Inn Square London WC1R 3AH [email protected] www.nipclaw.com +44 (0)20 7404 5252 10 https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part63 11 https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part63/pd_part63 12 https://www.judiciary.uk/wp-content/uploads/2019/04/Patents-Court-Guide-April-2019.pdf 13 https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/823201/intellectual- property-enterprise-guide.pdf