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LPC Law Notes Commercial and IP Notes

Rights Protecting Invention Notes

Updated Rights Protecting Invention Notes

Commercial and IP Notes

Commercial and IP

Approximately 100 pages

A collection of the best LPC Commercial and IP notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through twenty-nine LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor".

In short these are what we believe to be the strongest set of CLIP notes available in the UK this year. This collection of notes is fully updated fo...

The following is a more accessible plain text extract of the PDF sample above, taken from our Commercial and IP Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

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

  1. product P - the invention relates to a new product or an improvement to a product

  2. 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:

  1. novelty

  2. Inventive step

  3. Capable of industrial application

  4. 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

  1. identify what common/general knowledge that person would have @ priority date

  1. identify inventive concept of product or process

  2. What differences are there between this invention and the state of the art?

  3. 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...

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