The Institute was founded in 1882 and was incorporated by Royal Charter in 1891. It represents virtually all the 1800 registered patent attorneys in the UK, whether they practise in industry or in private practice. Total membership is over 3,000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
The Patents Training Manual
The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys in the UK.
Ensuring that your trainee patent attorney receives the training that they need can be a valuable but time-consuming task. Base your training programme on the newly-updated CIPA Training Manual, and you have a structured framework of study already prepared.
2022 Edition
Features include: • Authoritative chapters written by fellow IP professionals based on their practice experience • Encouragement to the trainee to play an active role in the their learning and tie in their studies with practice in the workplace • A training log allowing the both the trainer and the trainee to chart and monitor progress in both study and work experience • Suggestions as to further study and links to examination syllabi • Real-life scenarios to challenge the trainee
The Patents Training Manual
Price: £75 I S B N 978-0-903932-72-1
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780903932721
Editors: Gwilym Roberts and Debbie Slater
2022 Edition
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All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any means, or stored in any retrieval system of any nature without prior written permission, except for permitted fair dealing under the Copyright, Designs and Patents Act 1988, or in accordance with the terms of a licence issued by the Copyright Licensing Agency in respect of photocopying and/or reprographic reproduction. Application for permission for other use of copyright material, including permission to reproduce extracts in other published works, shall be made to the Chartered Institute of Patent Attorneys. Full acknowledgement of author, publisher and source must be given. © 2022. This Manual is produced and published by the Chartered Institute of Patent Attorneys under licence from the individual authors as copyright owners each of whom has asserted his or her individual moral rights. First printed in 2008, reprinted with updates in 2010 and 2022 Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20 – 23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
ISBN 978-0-903932-72-1 Printed and bound by Hobbs the Printers Ltd – www.hobbs.uk.com Cover design by Jonathan Briggs Contact the editors at editor@cipa.org.uk
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The Patents Training Manual Contents
Introduction........................................................................................................................................v Guidance for trainers......................................................................................................................ix 1. History of patents and the patent profession...................................................................... 1 2. The role of the trainee............................................................................................................... 9 3. Business practice......................................................................................................................19 4. Legislative structure.................................................................................................................61 5. Sources of information............................................................................................................81 6. Patentability: general issues.................................................................................................99 7. Patentability: specific issues................................................................................................ 119 8. Other requirements for grant.............................................................................................. 145 9. Inventorship: ownership of inventions… ......................................................................... 163 10. Infringement and claim interpretation.............................................................................183 11. Structure of a patent application..................................................................................... 209 12. Drafting a patent application..............................................................................................217 13. Filing strategies: an introduction......................................................................................233 14. Filing strategies (UK)...........................................................................................................249 15. Filing strategies (EP).............................................................................................................271 16. Filing strategies (PCT)......................................................................................................... 291 17. Prosecution through to grant.............................................................................................321 18. Commercialisation of intellectual property................................................................... 347 19. Introduction to additional topics......................................................................................363 Index................................................................................................................................................. 371 Training log..................................................................................................................................... 377
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INTRODUCTION Purpose and structure of The Patents Training Manual By Debbie Slater (CPA, Prevayl Ltd) and Gwilym Roberts (CPA, EPA, Kilburn & Strode)
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his manual has been devised to act, primarily, as the focus for dialogue between the trainee patent attorney and those responsible for their training and development. It may, for example, form part of the organisation’s training plan for the employee. Whilst we hope that this manual be seen as a useful primer and source of information, trainees should ensure that they read and consult with other books and sources of information available. There are many excellent books on the market and some of these are referenced in this manual. It is hoped that, in providing an overview of the main areas of practice for patent attorneys, it approaches this in a practical and pragmatic way with a focus on the real world of the patent attorney profession. Although mention is made of relevant qualifying examinations of the Patent Examination Board and the European Qualifying Examination (EQE), this manual should not be used as the only source of information in preparation for sitting these papers. For more information about these examinations, please refer to https://www.cipa.org.uk/patent-examination-board and https://www.epo.org/learning/eqerespectively. The manual is split into a number of chapters, each one dealing with a different topic. The chapters do not necessarily have to be read in the order that they are presented but we would suggest that the first five chapters be read first.
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Each chapter outlines the material to be covered, the trainee’s learning plan including any pre-reading and the input required by the trainer, and the learning outcomes that are expected. There is also a link to the relevant examination papers and to the IPReg Competency Framework (see https://ipreg.org.uk/sites/ default/files/IPReg-Skill-Set-Table-Patent_FINAL1.pdf). Each author then explores the chapter topic. At the end of the chapter, review questions and scenarios (where appropriate) are given along with an indication of how the trainee can further extend their knowledge in this particular area. An additional feature is the training log, which has been included to allow you to chart your progress and provide suggestions as to further activities to extend your knowledge and experience. If appropriate to your place of work, this can be used to prompt further dialogue between the trainer and the trainee. Various Acts and Conventions are named according to personal taste in the different chapters, for example the UK Patents Act can be called by its bare name or be dated 1977 or 2004. To make things clear, we use the abbreviation ‘UKPA’ to indicate that we are referring to the most recent version. The EPC 1973/2000/ Revision Act is similarly abbreviated ‘EPC’ to refer to the latest version. Similarly, referencesto the PCT and the UK Patents Rules mean the latest version. IPO means the UK Intellectual Patent Office. There is a constant churn of change of laws and procedures and the Training Manual is as up to date as publication deadlines permit and takes into account
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changes known to be on the cards. The reader is advised to cross check against the latest versions of laws where appropriate.
The editors Gwilym Roberts (CPA, EPA) obtained a BA honours degree in Natural Sciences (Physics) from the University of Oxford in 1990. He qualified as a chartered patent attorney and European patent attorney in 1994. He is also a certified patent agent litigator. He is Chair of Kilburn & Strode, Honorary Secretary of CIPA and Visiting Professor at Queen Mary, University of London. His clients range from private individuals and start-ups to large overseas and multinational companies, and he regularly deals with most aspects of patent work in the physics, computing and communications fields including drafting and prosecuting patent applications before the European and UK patent offices, mounting and defending oppositions at the EPO, advising on infringement/ validity and preparing for and conducting litigation. Increasingly, his workload includes advising on and implementing worldwide patent filing strategies and Gwilym has a particular interest in the issues facing newly formed companies and the problems of capturing and exploiting IP, and budgeting for the related costs. Gwilym lectures regularly before a range of audiences in Europe, the US and Asia on aspects of patent law including the Queen Mary College, University of London Certificate and MSc courses. He sits on CIPA’s Patents Committee and and is a CIPA delegate to the Patent Practice Working Group which meets regularly with the IPO to discuss practice issues. He is also a member of the Patents Commission of the UNION of European Patent Practitioners and President of the British Group. His papers on topical issues have appeared in a number of journals including the CIPA Journal, Managing Intellectual Property, Intellectual Property Quarterly and the European Intellectual Property Review. He is editor of the previous edition of the the Patents Training Manual and his book A Practical Guide to Drafting Patents was first published by Sweet vi
& Maxwell and a new edition will be published by CIPA in 2022. Debbie Slater (CPA) began her career in the IP profession as a patent examiner at the EPO in 1983 after graduating with an honours degree in Physics from the University of Leeds. After a stint as IP manager for the engineering group Vickers in the late 1980s, she qualified as a patent attorney. As a patent attorney she has worked in private practice and in corporate environments. She is currently working in-house for a start-up company, Prevayl Ltd, based in Manchester. She has also spent time as an IP management consultant. She lived and worked in Australia between 2000 and 2012 and then again from 2017 to 2019. Debbie is Vice Chair of the CIPA Education Committee and is also closely involved in the development and delivery of the CIPA Introductory Patent Paralegal Course. She is currently working on developing the advanced course. She is a trained secondary school teacher having obtained a Graduate Diploma in Education and spent time teaching maths at a high school in Perth, Western Australia. She also holds a Diploma in Higher Education from the University of Bedfordshire.
The authors As well as the editors, other authors in this edition are: Martin Bell (CPA, EPA), Marks & Clerk Catherine Bonner (PhD, CPA, EPA), Murgitroyd Emily Dodgson (CPA, EPA), Abel + Imray Henry Edwards (barrister), 8 New Square Edmund Eustace (barrister), 8 New Square Jonathan Hewett (CPA, EPA), Venner Shipley LLP Ben Hoyle (CPA, EPA), Hoyle IP Services John Hull, Queen Mary, University of London and King’s College London Marco Morbidini (CPA, EPA), Kilburn & Strode Alexandra Orrin (CPA, EPA), Withers & Rogers Sue Ratcliffe (CPA, EPA), Synthomer James St Ville QC (barrister), 8 New Square Martin Shaw (MSci ), Murgitroyd Debra Smith (EPA, CPA), Mayfin IP Daniel Wolstenholme (EPA, CPA), Marks & Clerk
INTRODUCTION
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Authors from the first edition include: Andrea Brewster OBE (IP Inclusive) Alison Care (Haley Guiliano LLP) Tibor Gold MBE Richard Howson (Kilburn & Strode) William Jones (ip21) Alexander Korenberg (Kilburn & Strode) James Legg (Boult Wade Tennant) Heather McCann (EIP) Maria Nichol (Galapagos) Stella Wong (Hogan Lovells)
Disclaimer The contents of this training manual are for educational purposes only and do not constitute legal advice. If you need legal advice please contact the Chartered Institute of Patent Attorneys (CIPA) for a list of registered patent attorneys who provide services direct to the public; or see www.cipa.org.uk. The opinions expressed in the chapters of this training manual are those of the individual writers and do not necessarily reflect the views of CIPA or the organisations that the writers are employed by. CIPA does not guarantee the accuracy of the information included in this training manual and accepts no responsibility for any consequence of its use.
WWW.CIPA.ORG.UK
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GUIDANCE FOR TRAINERS By Debbie Slater (CPA, Prevayl Ltd) and Gwilym Roberts (CPA, EPA, Kilburn & Strode)
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his training manual is designed as a tool for trainees to guide and inform their training. As we mention in the introduction, the manual aims to be a focus for dialogue and discussion between trainees and those responsible for their training and development. It is not designed as an academic reference book, nor as something which – if the trainee learns everything in here – will mean that they will pass their exams. Rather, the aim is to identify topics, skills and knowledge that trainees should have exposure to, and develop experience in, during the early stages of their career. The idea is that the burden of the repetitive ‘rote learning’ aspect of training is shifted from you to the manual, freeing up your time, and allowing you to focus instead on the inevitable questions that will occur to the trainee as they go through a topic. We have presented the chapters in a logical order but your trainee does not need to run through them linearly – for example when a trainee is first exposed to a new aspect, they could read through the relevant chapter(s) first and then apply what they’ve learnt, with your help, to the task in hand. We hope that trainees will use this manual to help them assess the scope of their knowledge and practice and particularly to identify gaps in their learning. We encourage you to use this manual in the same way so that, in discussion with your trainees, you can provide them with a range of learning experiences that will help them develop in their practice.
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Each chapter has a section entitled ‘Guidance for trainer’. This sets out suggestions for ways in which you can provide additional support and information to trainees, in relation to the relevant chapter. This should be in addition to any further training that you give them, as well as courses that they attend, and private study that they undertake. The chapters are cross referenced to the IPReg Competency Framework which sets out the expectations from IPReg as to the skills and knowledge that trainees should develop during their trainee. The Framework can be accessed at https://ipreg.org.uk/sites/default/files/ IPReg-Skill-Set-Table-Patent_FINAL1.pdf. We encourage you to use this document, along with the examination syllabus for the PEB qualifying exams, to ensure that trainees can experience the range of skills that they need to qualify as a patent attorney. Each chapter also identifies legal texts and prerequisites for the chapter. Please make sure that these are available to your trainees. Finally, a training log is provided to accompany this manual. Trainees can use this to record their training. Going through this record with you, as their trainer, should enable you to monitor their progress, and for trainees to plan their future learning needs. Last, but not least, can we take this opportunity to thank you for the work that you do in supporting and developing the patent attorneys of the future.
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1
HISTORY OF PATENTS AND THE PATENT PROFESSION By Debbie Slater (CPA), Prevayl Ltd *
Outline This chapter deals with the history of patents and the profession associated with it, patent attorneys (or as they were first known patent agents). It is intended to help you to explain to clients the origins of the system of patents for invention and to help them to gain confidence in patent attorneys as their source of professional guidance, when seeking protection for their inventions. It will also help you to gain an insight into the basic tenets of patents and how the law developed.
Learning plan Prerequisites: There are no prerequisites for this chapter. Legal documents: Please look at the Acts that are mentioned in the text. Guidance for the trainer: If you are in private practice, discuss the company’s own history in relation to the development of the patent profession. If you are in industry, discuss how patents have featured in the history of your company. Syllabus link: None. IPReg Competency Framework link: None. Time allocated: Two or three hours.
Learning outcomes By the end of this chapter you will be able to outline the background of our profession; these skills will allow you to appreciate just what a great job it is.
WWW.CIPA.ORG.UK
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1.1 Historic origin of letters patent It is believed that a form of patent right was available in Ancient Greece, although evidence of this is limited. The first formal patent system was in Venice in the fifteenth century. As Venetians travelled and sought similar protection elsewhere, other countries began to establish their own patent systems. The term patent derives from the term Literae Patentes or ‘open letters’, Patents were originally grants by the monarch of rights and privileges to individuals, who had been selected by the monarch to perform certain tasks and duties. They are referred to as open letters because they were not sealed up with a wax seal, as a common letter would be. They have a seal (the Great Seal) attached to the document to confirm its authenticity as a grant of monopoly by the Crown. Thus, the document can be read without breaking the seal. Letters Patent are still used today, for example for the appointment of Royal Commissioners. There is little room for discussion in this book, but a brief look at how one of history’s great diarists found the system is considered to be worthwhile. Samuel Pepys’ Diary for 16601 is much concerned with this latter type of letters patent and the task of obtaining his patent to become ‘Clerk of the Acts’ to the Navy Board takes up much of his time and effort between 28 June and 13 July 1660. For example, on 29 June, Pepys writes: ‘So to my Lord to give him an account of what I had done. Then to Sir Geffery Palmer (Attorney General) to give them to him to have bills drawn upon them – who told me that my Lord must have some good Latinist to make the preamble to his patent, which must express his late service in the best terms that he can... Then to White Hall where I was told by Mr Huchison at the Admiralty that Mr Barlow my predecessor, Clerk of the Acts, is yet alive and coming up to town to look after his place… At night told my Lord thereof and he bade me get possession of my patent…’
Over the next several days, Pepys records going about
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obtaining a patent for Lord Mountagu, and getting his own patent. The diary also includes comments on the patents being obtained by all members of the Board then being formed. In practice, the Navy Board was established by order of the Privy Council on 4 July, the patents of the Treasurer (Carteret), Comptroller (Slingsby), Surveyor (Batten) and Commissioner (Pett) were issued on 4 July, that of Pepys on 13 July and the other two Commissioners (Berkeley and Penn) not until the 18 August. In practice, all of them were paid from 25 June. On 9 July, Pepys visited the Temple ‘to further my bills being done’ and the following day went to the Attorney General to collect the same and then arranged for it to be sent to the King for signature. The 11 July saw Pepys collect his signed bill and take it to the Privy Seal. On 12 July, Pepys writes that he went to the Privy Seal and got his bill perfected there, and at the Signet: and then on to the House of Lords, where he was directed to Mr Beale, the Deputy Commissioner of Patents, to get his patent engrossed in ‘Chancery-hand’ but could find no-one available to do it despite visiting all six ‘clerks’ offices’ in Chancery Lane. At 11 o’clock that evening he finally found a Mr Spong who agreed to write the patent out for him. After much argument, Mr Beale, who was angry that he had not been given the task of writing Pepys’ patent (despite not having been available to do so), eventually provided the required docket apparently in exchange for £2, and later returned to collect the patent document made ready for sealing. This occurred later the same day when Pepys accompanied Mr Beale to the Chancellor’s office where the Seal was attached, Pepys later collecting his letters patent from Mr Beale, handing over a further £9. Thus, obtaining his letters patent proved a complex process involving much chasing around after different people and a great deal of expense. In fact, on Sunday 15 July Pepys writes: ‘My patent hath cost me a great deal of money, about £40, which is the only thing which doth trouble me much.’
This was not Pepys’ final dealings with his patent
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because there was the matter of Mr Barlow’s patent to deal with, because despite the fact that Pepys patent revoked the life appointment of Thomas Barlow, it was necessary to come to an agreement with Barlow to avoid a long dispute. Thus, on 17 July, Pepys records: ‘There came to my house before I went out, Mr. Barlow, an old consumptive man and fair-conditioned – with whom I did discourse a great while; and after much talk, I did grant him what he asked – viz £50 per annum if my salary be not increased and £100 per annum in case it be to £350; at which he was very well pleased to be paid as I received my money, and not otherwise.’
In fact, the arrangement lasted until Barlow died in 1665 and since Pepys’ salary was almost immediately increased to £350 per annum, it could be assumed that Barlow received some £500 for not attempting to enforce his patent. Many of the elements of modern patent prosecutions are demonstrated by Pepys’ experience in 1660. Firstly, it can be a long, complex procedure which needs to be handled properly. Secondly, it can be expensive to obtain proper protection and even when you have your patent in your hand it may be subject to dispute and you may have to negotiate with a holder of a senior right.
1.2 Development of the modern patent system in the UK Patents are still a grant of monopoly by the state although, nowadays, in respect of inventions, this grant is handled by the patent offices of the various countries, or sometimes by supranational bodies, which may appear with different names and responsibilities. For example, in the UK, patents are examined and granted by the United Kingdom Intellectual Property Office (IPO), or by the European Patent Office (EPO). Patents for importation were granted to merchants who managed to locate new articles in overseas territories and presented them to the monarch, who would then grant the merchant a monopoly to encourage further importations. Soap, spices and such like often attracted a monopoly because the monarch liked the imported goods and the merchant would be unwilling to divulge his source. Such granted monopolies were often considered to be an abuse by the monarch and grants by Queen Elizabeth I and King James I were often made to favourites for known commodities. Such abuses by the Crown, and in particular the so-called ‘Book of Bounties’, a proclamation made in 1610, led to dissatisfaction with the system with such clamour that both houses of Parliament agreed a Bill which was passed as the Statute of Monopolies on 25 May 1623.2 This declared many of the previous letters patent void, caused the granting of patents for known commodities to be void ab initio but allowed future patents to confer exclusive rights to an inventor for a period of 14 years. There was provision for any patent to be tried at common law and, in practice, most of the patent litigation around this time was conducted before the Privy Council since all patents contained a provision to allow that body to revoke it. The Privy Council exercised this right until around 1753 from which time patent litigation was conducted in the Court of Chancery and before the Queen’s (King’s) Bench.3 One of the earliest invention patents believed to have
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THE ROLE OF THE TRAINEE By Debbie Slater (CPA), Prevayl Ltd *
Outline This chapter prepares the trainee in the basics of dealing with their new working environment. It outlines the roles of the trainee and trainer and some of the key considerations in making sure the trainee role is productive and fulfilling and of mutual benefit for both trainee and trainer.
Learning plan Prerequisites: Begin by consulting any office manual or induction training documentation your employer has given you and/or you discover is available generally. Then study the IPReg Rules of Professional Conduct and the Practice Development Guidance.1 If you work in private practice, make sure you know your firm’s standard terms of business and any HR policies. If you work in an industry environment, become familiar with your corporate structure, reporting lines and internal processes. Legal documents: There are no legal documents required to study this chapter. Guidance for the trainer: Enlist your trainee’s help whenever possible in dealing with clients, assisting you in meetings, sending reminder correspondence and so on in order to encourage them to quickly grasp the essential context within which we all work. For those of you working in industry, whilst there will not be a client in the traditional meaning, the term client should be construed to mean those with whom you work and to whom you provide services. Involve your trainee in drafting as wide a range of different documents, for different purposes and to different types of addressee as you can. Discuss why you handle clients and their files in the way you do. If feasible, encourage the trainee to spend time with all divisions of your organisation (especially accounts and formalities departments) to see the way your systems operate and how the various functions interact. Stress from the outset the need to produce, as soon as possible after induction, work which reflects a real contribution to your organisation and which is produced in a way that generates goodwill inside and outside the business. If you have local or regional groups of trainees such as the Informals or know of similar self-help units encourage your trainee to make contact with them.
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Syllabus link: This chapter is not directly linked with any of the qualifying exams but will have an immediate impact on your ability to do a good job in a real-life context. It introduces themes which are taken up and expanded in chapter 3, which you should read and regard as a natural follow-on to the points outlined here. IPReg Competency Framework link: General Legal (Skill Sets: Communications Skills; Client Relations; Management of Workload, Business Awareness; Working with Others). Time allocated: Two half-days.
Learning outcomes By the end of this chapter, you should be able to outline the relationships between a trainee and their trainer(s), colleagues, and clients whether in private practice or industry. You should be able to start identifying your training needs and to develop, with your trainer, a pathway to optimizing your role within your organisation from trainee to qualified patent attorney.
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CHAPTER 2: THE ROLE OF THE TRAINEE
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2.1 Your new environment Nowadays, there are many routes by which you might have arrived in your present role. You could be a graduate in their early twenties. Alternatively, you could have transferred from another department in the same company, or you could be a career changer with the right qualifications to start a new professional training path. Whatever your background, you face a broadly common training regime over the next four or five years.
2.2 At the beginning Starting a new career can be bewildering at the start. Full professional qualification is some years away, and everyone around you will already be using jargon with which you are not yet familiar. This can be daunting, and you may feel distinctively inadequate in the early weeks or even months. Do not be put off; we all felt that way at the start. You are a highly qualified, intelligent team member with a great deal to offer from the outset. You will have a relevant qualification to at least firstdegree level in the technology that your organisation handles. To get this far, you will have developed skills which, with further training, will enable you to operate around and, in many cases, beyond that technological specialty. You will be surprised at how quickly you can begin to do this. Whilst you may feel at times like a long-term apprentice, aim from the start to be given work which simultaneously develops these skills and, with proper supervision, enables you to become an effective and valued member of the team. Make sure that your employment contract sets out the expectations for your training period. Make sure key performance indicators are explained and set out. Agree a training plan at the outset and agree terms such as the qualification route and timings, who will pay for textbooks, examinations and courses, and how much study leave you will be allowed. Join the Institute of Professional Representatives before the European Patent Office (known as epi), CIPA and the Informals group for trainees and, if you can, get yourself a mentor: another trainee within your firm who is further along the qualification process. WWW.CIPA.ORG.UK
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2.3 The trainer-trainee relationship In the ‘old days’, trainees were referred to as Technical Assistants (TA in shorthand) and often as TA to a particular person. Training to be a patent attorney is still very much based on that apprenticeship model. You may be attending a university-based course for some of your training. Nevertheless, a lot of your learning will come through on-the-job training. The way in which your training is structured will depend upon your organisation, but you will, in all likelihood, be working closely with a trainer who will be responsible for directing your learning and with whom you will be working closely. In essence, the relationship between trainer and trainee is one of mutual benefit: the trainer provides training and support in return for assistance with their job and a fully-fledged qualified individual at the end. Trainees may leave the organisation at the end of training, but when this happens (as it often does), the trainer will still benefit by recruiting new employees trained elsewhere. As your knowledge and experience grows, your trainer will give you more and more responsibility and allow you to work more autonomously: you will be very much part of the team. It is important to remember that your trainer will probably have multiple responsibilities and may not even be doing much of what they qualified to do any more. Many will be running the personnel in a team and helping to run a commercial business. If you are struggling to get time with your trainer, talk this through with them if you can or discuss it with your human resources professional. A constructive and mutually beneficial relationship between trainee and trainer will benefit your training. If there are any issues which make this difficult, make sure you raise the matter through the usual HR processes.
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Work-based example (continued)
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ONE WAY
AN ALTERNATIVE
We refer now to your trade mark VERBOSITY and confirm that we have put in hand a search through such official records as are currently made available to the public at the Trade Marks Registry to ascertain whether or not this is available for use and/or registration within the UK. We cannot of course give any commitment as to the length of such searches nor as to their reliability and nor can we accept any express or implied guarantee of such. We shall report to you in this respect in due course and hopefully at an early date.
On the branding front, as agreed, Terry is searching to see whether your word VERBOSITY – or anything dangerously close to it in your field – is already registered or about to be registered as a UK trade mark. He tells me he expects to complete this no later than Friday of next week and he will write to you then. You already accept that no search can give you a cast-iron guarantee, but the databases we access have proved pretty reliable in the past and we are going ahead on that agreed assumption.
We cannot of course discount and must draw to your attention the very real possibility that further and even more damaging prior art might be revealed by international searches of wider scope and we accept no responsibility for your stated decision (which we record here specifically for this purpose) not to proceed in this context despite our strong advice that you should instruct us to do so.
An international search, of course, is a different matter. But you said you would tackle that as and when your business extends abroad. At the moment, and with that obvious risk, I think you can sensibly limit yourself to this UK-only clearance search from everything that I know of your business to date
Finally, with reference to British Patent No 1 234 567B of which you handed us a copy and in respect of which we have caused a search of the Register of Patents to be made to ascertain the status thereof, we write to inform you, firstly, that we have ascertained from said records that the renewal fee due in respect of the 12th year of the patent failed to be paid by the last due date – including any extension thereof – and, further, that it has come to our attention via a third party that the proprietor of the above-numbered patent is now deceased.
As far as the Jones’ ‘Autodidact’ UK patent is concerned, you can ignore it. It was not renewed; and he apparently died last week.
The writer will revert to these matters in due course and when full and final particulars are to hand. At that stage it is suggested that a further meeting between the writer and yourselves would be appropriate to discuss matters arising therefrom. To ensure attention any further communication must be addressed to this firm in writing and not to any named individual. Assuring you of our best attentions at all times.
Terry and I will write to you, as I said, by the end of next week. We shall then need to get together with you again and I shall contact you to arrange that appointment after you have had a chance to read the results of our work. In the meantime, ring or email Terry with any queries on all normal occasions but if he is not here, ask specifically for me. Both of us are fully briefed on this particular project which is certainly an interesting one. I am glad we have been able to advance it successfully for you so far.
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BUSINESS PRACTICE By Debbie Slater (CPA), Prevayl Ltd *
Outline This chapter puts the work of the patent attorney into its business context, discussing the obligations owed to clients and employers, and the business practices which help in fulfilling those obligations. It outlines the systems and procedures which patent attorneys use in their work, sets out ‘best practice’ standards for interactions with clients, and explores how quality of service can be monitored and assured. The following key concepts are introduced: • • • • • • • • • • •
patent attorneys’ responsibilities to their clients; the need to establish exactly who the ‘client’ is; the concept of conflict of interest; the importance of continuing professional development (CPD); what happens in the event of a mistake or complaint; confidentiality safeguards; proper charging procedures; file maintenance practices; techniques for dealing with deadlines and time pressures; effective client communications; and attributes of a high-quality service.
The chapter also provides guidelines for conducting client meetings explores business development.
Learning plan Prerequisites: Before reading this chapter, you should have studied the IPReg Rules of Conduct for patent and trade mark attorneys and IPReg’s Competency Framework (both to be found on IPReg’s website at www.ipreg.org.uk), the EPI Code of Professional Conduct (available at https://patentepi.org/en/the-institute/rules-and-regulations.html) and – if you work in private practice – your own firm’s business terms. Knowledge of the basics of the patent system is assumed, as is familiarity with common patent terminology. You should study chapter 2 of this manual, on the role of the trainee, before tackling the present chapter, as sections there are further explored in this chapter.
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Guidance for the trainer: Allow the trainee to ‘shadow’ your work as much as possible. In particular, let them listen in on phone conversations with clients and accompany you to client meetings. Discuss why you handle clients and their files in the way you do, drawing distinctions between different clients’ needs and expectations. Enlist the trainee’s help in tasks such as preparing cost estimates and invoices, writing file notes of meetings, and sending deadline reminders. Involve them in drafting a wide range of different documents, for different purposes and to different types of client. If feasible, encourage the trainee to spend time with colleagues in the records/formalities and accounts departments, to see the systems they operate and the way they interact with fee-earning staff. Syllabus link: This chapter is not directly linked to any of the qualifying exams but should impact on your ability to do a good job in a real-life context. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communications Skills; Client Relations; Management of Workload, Business Awareness; Professional Conduct; Working with Others). Time allocated: Five half-days.
Learning outcomes By the end of this chapter, you should be able to describe the relationships between patent attorneys and their clients and outline the day-to-day procedures and practices which help to optimise those relationships.
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3.1 General principles 3.1.1
Good business practice
Good business practice is based on one fundamental principle: that what we do, as patent attorneys, is worthless without its business context. We do not do our work for our own benefit, or to pass exams. We do it for the benefit of our clients or, if we are working in industry, for our employer. The need to do right by our clients determines the way we work, the way we conduct ourselves, and the way we interact with others. This chapter explains some of the more important aspects of good business practice, which you will need to be aware of from early on in your training and build on throughout your career.
3.1.2 Responsibilities to clients Patent attorneys’ key responsibilities to their clients are: • • • • • • • •
to do a competent job (fairly obvious, this one); to do it courteously and professionally; to do it promptly; to communicate clearly about it; to charge for it fairly; to respect the clients’ confidentiality; to keep the associated files in good order; and to be approachable and helpful.
These responsibilities are discussed in more detail in 3.3 to 3.8 and 3.10 below.
3.1.3 The IPReg Rules of Conduct The most important of the patent attorney’s responsibilities are enshrined in the Intellectual Property Regulation Board’s (IPReg’s) Rules of Conduct, which govern the work of all registered patent attorneys and their employees. These rules state that patent attorneys ‘shall at all times act with integrity putting their clients’ interests foremost’. WWW.CIPA.ORG.UK
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The guidance provided with the rules states that we should: a. practise competently, promptly, conscientiously, courteously, honestly and objectively… b. act so as to promote confidence in the intellectual property system and also, that we should not do anything that might compromise ‘the dignity and good standing of… the patent or trade mark professions’. Note, then, that this includes obligations not just to clients, but also to other patent attorneys and to the profession as a whole. Similar provisions exist in the EPI Code of Professional Conduct.
3.1.4 In-house and private practice attorneys Business practice issues are not quite the same for the in-house attorney as they are for those working in private practice. For the latter, there will typically be many different clients, often a different one for each task undertaken. Each will need to be dealt with in a slightly different manner. Systems and procedures are required to allow all these different relationships to function efficiently whilst ensuring a consistent standard of service. For the in-house attorney, in contrast, there is usually only one client: the employer. On the dayto-day level, this client might be represented by a range of different individuals, depending on the attorney’s role – scientists, for example, commercial people, managers or on occasions even the Board of Directors. In many respects these relationships are different to those between private practice patent attorneys and their clients: for example, issues to do with billing and complaint handling are likely to be far less, if at all, relevant to the in-house attorney. There are, however, many areas in common. The in-house attorney is still bound by IPReg’s Rules of Conduct. They still need to communicate effectively regarding the work done, and to be courteous and professional. Both types of attorney have obligations to their employers: to work efficiently and productively, to PATENTS TRAINING MANUAL: 2022
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Suggested chapter 3 answers and comments Most of the questions raised under ‘Test your Knowledge’ do not have definite answers. Indeed, the answers may well depend on who you work for and vary from client to client or even from task to task. The questions are intended for discussion with your trainer and with other colleagues, as a way of exploring further possibilities whilst reinforcing the key concepts that are likely to apply throughout the profession. That said, your answers to questions 2 to 4 should include at least the following key points. 2. The risk of conflict will depend primarily on which business areas you work in for A, for example which types of drug and how they are formulated. It will depend on whether A regards B as a competitor, or perhaps as a potential business partner or a candidate for acquisition, and whether the two companies have been involved in past disputes. A’s consent must be sought before accepting B as a client. B must also be told that A is an existing client. You should agree with both parties what is to happen should a conflict situation arise in the future. Take care, during such consultations, not to divulge to either party any confidential information about the other’s specific business interests. 3. Sections 62(3) and 63(2) of the UK Patents Act 1977 (UKPA) provide that the question of whether a patent specification was drafted ‘in good faith and with reasonable skill and knowledge’ can affect the financial compensation available to the patentee if their patent is amended either before or during infringement proceedings. See 3.3.5. 4. The distributor should not be sent a copy of the new application without the client’s consent, and the client should be advised about the pros and cons of doing so.
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4
LEGISLATIVE STRUCTURE By James St.Ville QC, Henry Edwards and Edmund Eustace, 8 New Square*
Outline This chapter is intended to be an introduction to the legislative structure in the UK and the European Union. It is a general guide and should not be relied upon as a substitute for specific legal advice. The chapter is divided into two parts: the first part is a general section on the institutions, legislation and different courts in the UK, the legal professions in the UK are also covered (4.1 to 4.3); the second part concerns the patent courts and the patent system in the UK and for European patents (4.4 onwards). In general, references to the UK include only England and Wales. For further sources of information, please refer to chapter 5.
Learning plan Prerequisites: None. Legal documents: Patents Act 1977 (as amended), European Patent Convention (1973 as amended), Patent Co-operation Treaty 1970, Community Patent Convention 1975, Regulations (EU) No. 1257/2012 and 1260/20122 implementing enhanced cooperation in the area of the creation of unitary patent protection and Unified Patent Court Agreement 2013. Trainer’s input: To provide a general background on the legislative structure in the UK and to provide information on the patent system in the UK. Syllabus link: UK Exams: FC2, FD1 EQEs: Paper D IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice); Technical (Skill Sets: Analysis and Advice; Infringement). Time allocated: Less than a day.
Learning outcomes By the end of this chapter, you will have knowledge of the legal system in the UK and the patent system in the UK and for European patents (UK).
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Suggested answers and comments for chapter 4 1. See 4.1.2 – UK legislation – Bills. 2. Solicitors and barristers – see 4.1.3 for further information. 3. County Court, High Court, Court of Appeal, The Supreme Court (formerly the House of Lords) – see 4.2.1 for further information. 4. See 4.2.2 and 4.4.2. 5. See 4.4.1 6. A patent owner has the exclusive right to exploit his invention for 20 years from the date of filing. He may take action for patent infringement against a person doing an infringing act – see 4.5.2 on infringement and the nature of an infringing act. 7. See 4.5.2 on patentability. 8. See 4.5.2 on exclusions to patentability. 9. Proceedings for invalidity of a patent are usually sought as a counterclaim by a person being sued for patent infringement. For the grounds of invalidity see 4.5.2 on validity. 10.A European patent is a bundle of national patents granted by the European Patent Office upon a single application. A Unitary patent, if its implementation is completed, will be a single unitary patent for 25 of the 28 EU states granted by the European Patent Office. 11.A European patent may be opposed for a period of nine months from the date of its grant. If the opposition is successful then the European patent will be revoked in all its designated countries across Europe. If the validity of a European patent is challenged nationally the decision will only have effect in the country in which the action is being taken.
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5
SOURCES OF INFORMATION By Debbie Slater (CPA), Prevayl Ltd *
Outline This chapter provides a guide to sources of information, including for legal research, for prior art identification, for patent status information, IP analytics and competitor information. Legislation is introduced as the primary source of legal information with case law and guidance from relevant patent offices filling in the gaps and providing interpretations. In this context, a brief review is given of the various forms of legislations and their creation, how the courts generate the case law and sources of information from patent offices, such as practice guides and official journals. Practical application of these concepts is demonstrated in the suggested chapter answers and comments at the end of this chapter.
Learning plan Prerequisites: None, but it will be helpful to understand basic concepts of the legislative structure in the UK, as explored in the previous chapter, and patentability criteria, which are discussed in chapters 6 and 7. Legal documents: UK Patents Act 1977 (UKPA), European Patent Convention (EPC), Patent Cooperation Treaty (PCT) to look through; EPO decisions G2/88, T1385/15, Adhesive Dry Mounting v Trapp (1310) 27 RPC 341 and Merrel Dow Pharmaceuticals v Norton [1996] 3 RPC 76 for the chapter questions. Trainer’s input: Provide legal research tasks to apply learned material. Syllabus link: The knowledge gained here will assist you throughout your UK and EQE examinations. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice;) and Technical (Skill Sets: Analysis and Advice) Time allocated: One to two days.
Learning outcomes By the end of this chapter, you will be able to identify sources of information available for research and use them to address legal questions. You will also be able to identify relevant prior art searching, IP analytics databases and legal status information as sources of information.
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PATENTABILITY: GENERAL ISSUES By Martin Bell (CPA, EPA), Marks & Clerk*
Outline This chapter provides an overview of three fundamental criteria that must be met for an invention to be patentable, namely that it is new, involves an inventive step, and is capable of industrial application. Particular emphasis is paid to the requirements of the UK Patents Act (UKPA) and the European Patent Convention (EPC), although a brief discussion of certain issues that are relevant in the US is also given. Another requirement, that the invention is not something that is specifically excluded or exempted from patentability, is discussed in detail in chapter 7, while other important considerations, such as sufficiency and clarity, are discussed in chapter 8, as well as chapter 17.
Learning plan Useful references for this chapter: • • • • •
Sections 1 to 4 UKPA and Articles 52-57 EPC. Sections 2 to 4 of the Manual of Patent Practice (MOPP). The Guidelines for Examination in the European Patent Office (EPO), Parts G, I, III to VII. Study guide to the Patents Act, Doug Ealey (CIPA). The C-Book – How to write a successful opposition and pass paper C of the European Qualifying Examination, Chandler/Meinders (CEIPI, Heymanns Intellectual Property)
Case law: • • • • • • • • •
Windsurfing International Inc v Tabur Marine (Great Britain) Limited [1985] R.P.C. 59 Pozzoli Spa v BDMO SA & Another [2007] EWCA Civ 588 Dr Reddy’s Laboratories (UK) Limited v Eli Lilly and Company Limited [2009] EWCA Civ 1362 Synthon v SmithKline Beecham [2005] UKHL 59 [2006] RPC 10 Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995) The General Tire & Rubber Co v The Firestone Tyre & Rubber Co & Ors [1970] RPC 457 Asahi’s Application [1991] RPC 485 (CA) Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA Civ 33 G1/92 (Availability to the public)
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Suggested chapter 6 answers and comments 1. In order for it to be novelty destroying, the written disclosure must be: i. published prior to the priority date; ii. disclose the invention, or a species falling within the scope of the invention; iii. be an enabling disclosure. 2. The application must have been either published prior to the priority or filing date (in which case it is normal prior art) and in which case the answer is the same as for (1); or (a) For a UK application filed prior to the priority or filing date but published later it is prior art under section 2(3). Under these circumstances ii) and iii) as described for question 1 above must still be fulfilled but the invention must have been disclosed and enabled in the application and in the application as published. (b) For a PCT application, the answer mirrors that for (a) above with the additional requirement that the application must have entered the UK national phase (via UK direct or EP(UK). (c) For a US application (assuming no related UK/EP counterparts), if it is unpublished at the priority/filing date it does not form part of the state of the art. 3. See section 6.3 above. 4. (a) 1 June 2007
(b) 1 June 2007
(c) 1 June 2008
5. See section 6.3 above.
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PATENTABILITY: SPECIFIC ISSUES By Ben Hoyle (EPA, CPA), Hoyle IP Services*
Outline Certain forms of invention are barred from patent protection. This chapter discusses exclusions to patentability, i.e. things that are not considered to be inventions, and exceptions to patentability, i.e. inventions that are not allowed patent protection. These exclusions and exceptions differ between jurisdictions. Companies often need to be advised on whether the exclusions and exceptions apply to their ideas. This chapter provides useful information for review of inventions in the fields of software, medicine, and biotechnology.
Learning plan It helps if the trainee has first read: Core areas of the law: • Sections 1, 4A and 76A and Schedule A2 of the UK Patents Act (UKPA) and the accompanying sections of the Manual of Patent Practice; • Articles 52 and 53 and Rules 26 to 29 of the European Patent Convention and the associated sections from the Guidelines for Examination in the EPO (Part B-VIII, 2; Part G-I and II, G-VII 5.4).1 Core legal cases: • UK: Aerotel Ltd v Telco Holdings Ltd (and others) [2006] EWCA Civ 1371,2 HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451,3 AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat)4 and Macrossan’s Application [2006] EWCA Civ 1371 • Europe: T 0208/84 (VICOM),5 T 641/00 (COMVIK), T 0315/03 (Oncomouse®), G 1/83 (which provides the basis for the ‘Swiss-type’ second medical use claims) and G 3/08 (programs for computers) • US: Alice Corp. v CLS Bank Int’l, 573 U.S. 208 (2014),6 Mayo Collaborative Services v Prometheus Laboratories, Inc., 566 U.S. 66 (2012)7 and the USPTO Guidelines on Subject Matter Eligibility.8
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2015 USPTO examples that related to dynamically relocating textual information within a window was said to be patent eligible: the claimed method is necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces.
In many cases, there is no ‘right’ answer as to whether a refusal or objection is to be expected. Trainees should adopt a risk perspective and be clear about likelihoods of the exclusions or exceptions applying based on cited case law examples.
* This chapter was first written in 2008 by Maria Nichol (Galapagos NV). It was revised and updated by Ben Hoyle (Hoyle IP Services) in 2021.
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OTHER REQUIREMENTS FOR GRANT By Alexandra Orrin (CPA, EPA), Withers & Rogers*
Outline This chapter introduces additional requirements that must be fulfilled in order to obtain a patent. In brief, these requirements can be summarised as follows: 1. Sufficiency: the invention must be sufficiently described to allow a person skilled in the art to reproduce the invention across the full scope of the claims. 2. Clarity, support and unity ‑ the claims must be: • clear and concise; • supported by the description; • relate to only one invention or to a group of inventions linked to form a single inventive concept. 3. Added matter: The application must not contain matter added after the filing date. Some of these requirements need to be considered at filing, others during the lifetime of the patent application.
Learning plan Key reading: • The European Patent Convention (EPC) Articles 82, 83, 84 and 123. • The UK Patents Act 1977 (‘UKPA’) section 14 (making of an application), and section 76 (added matter). Additional reading: • The EPO Guidelines for Examination, sections corresponding to Articles 82, 83, 84 and 123. • EPO decisions from the Enlarged Board of Appeal (‘G-decisions’) related to added subject matter, in particular G1/03 and G1/16 (disclaimers) and G1/93 (the ‘inescapable trap’). • The UK Manual of Patent Practice, passages corresponding to sections 14 and 76 of the UKPA. • Articles and EPO decisions on ‘plausibility’ as applied to sufficiency.
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Trainer’s input: It is useful for the trainee to have practical experience of situations where these issues might be raised. Suggestions for this are as follows: • Analysing clarity, unity and added matter objections in a UK or EP examination report or written opinion and summarising these in a short report. • Analysing an opposition file where sufficiency is raised; or discussing any interesting cases where sufficiency is determined from the EPO website or the UK courts. • Drafting a claim or claim set which is likely to avoid common clarity objections. • Preparing amended claims which have basis and are likely to avoid Art 123(2) issues; or assessing instructed amendments for basis and providing basis arguments for the instructed amendments. Syllabus link: U K Exams – at least FC1 (or foundation exemption university course); FD1; FD2; FD3. European Qualifying Examinations – at least Papers A, B and C IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice;) and Technical (Skill Sets: Analysis and Advice) Time allocated: One day.
Learning outcomes By the end of this chapter you should: • Be able to identify added matter, sufficiency, clarity and unity objections in an examination report or written opinion from the UKIPO or EPO, and summarise these objections and some options for addressing them in a short report (for example to a client); • When drafting a patent application, be able to review it and identify if you have included any common clarity objections; • Be able to explain to a client why an invention must be sufficiently disclosed in a draft patent application when it is filed; and • Be able to explain to a client added matter, the added matter ‘inescapable trap’ and how it can be avoided, and the additional hurdle for added matter in a divisional application.
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8.1 Introduction In previous chapters we have identified that the invention at hand is novel, inventive and susceptible of industrial application (chapter 6) and we have determined that it does not fall foul of any of the exclusions to patentability (chapter 7). The time has now come to draft the patent application. The actual structure and individual elements of the patent specification will be discussed in chapters 11 and 12, but the aim of this section is to identify the other requirements that you will need to keep in mind, both at filing and during prosecution in order to enable you to obtain a granted patent. Some of the additional requirements that a patent application needs to satisfy are covered by sections 14 and 76 of the UK Patents Act 1977 (UKPA) and the equivalent provision in the EPC, namely Articles 82, 83, 84 and 123. These requirements are as summarised above, and fall into the main headings: sufficiency, clarity, and added matter. While the UK’s Intellectual Property Office (IPO) and the European Patent Office (EPO) are not by any means identical in their approaches to assessing these criteria during examination, there are overlapping principles that underpin these criteria. These principles and how to approach them in practice are discussed in this chapter. While all of these requirements apply to patents irrespective of technology, some concerns are more significant in certain areas. So, two main examples are used here to illustrate the requirements, a mechanical invention and a pharmaceutical invention. For the mechanical invention, the main example considered is an egg timer having a spring-loaded cradle for an egg. The timer has a thermostat which triggers the timer when the water starts boiling and a spring release which pushes the egg above the water when the timer expires. In the pharmaceutical example we refer to an invention which relates to a number of compounds which can be generically described by the formula: WWW.CIPA.ORG.UK
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R1 = H, halogen, C1-C6 alkyl R2 = CH2, CO, SO2, NH R3 = H, halogen, C1-C6 alkyl In this hypothetical example, results have demonstrated that these compounds are cytotoxic (toxic to cells) and the inventor believes that they may be of use in cancer therapy.
8.2 Sufficiency UK: Section 14(3) UK Patents Act 1977 EP: Article 83 EPC
This requirement, stated very simply, is that the invention should be disclosed in sufficient detail to enable a person skilled in the art to work the invention as claimed, across the whole scope claimed. The sufficiency requirement stems from the exchange offered by the patent system – that in exchange for a monopoly of the 20-year patent term, society is provided with teaching of how the invention works, so that it can be worked by others when the patent expires or is no longer in force. A patent application and any subsequent granted patent that is insufficient, i.e. does not describe the invention in enough detail for it to be carried out by the skilled person, does not hold up the applicant’s or proprietor’s end of this bargain. The requirements of sufficiency are usually satisfied via a combination of the description in the main body of the application and optionally, the examples (for chemical cases) and figures for non-chemical cases. A patent which is not sufficiently disclosed may be refused during examination or revoked after grant; therefore, it is essential that the necessary details are included on filing. Failure to satisfy the sufficiency PATENTS TRAINING MANUAL: 2022
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Suggested chapter 8 answers and comments 1. No. Where a lack of clarity is apparent in a granted patent, this could be used to an opponent’s advantage to interpret the claims a specific way to form an added matter, novelty, inventive step or insufficiency argument. 2. They may not contain any added matter. 3. Lack of unity of invention a priori is where lack of unity is apparent from examination of the claims, before relevant prior art is considered. Lack of unity a posteriori is when lack of unity is found after relevant prior art is considered.
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9
I NVENTORSHIP: OWNERSHIP OF INVENTIONS, RIGHTS TO APPLY FOR A PATENT, DISPUTES ABOUT OWNERSHIP AND EMPLOYEE RIGHTS By Sue Ratcliffe (CPA, EPA), Synthomer*
Outline This chapter deals with a number of issues which ultimately affect the exploitation and ultimately the value of a patent. These issues include: 1. 2. 3. 4. 5. 6.
the concept of invention and inventor, the right to apply for a patent and the right to be mentioned as inventor; ownership and co-ownership of inventions and patents; the law and procedure of determining disputes about these matters; remedies; and the special position of employees’ rights.
Learning plan Prerequisites: For this chapter you will need to familiarise yourself with sections 7-13, 36-43, 72(1)(b), 82 and 125 of the Patents Act 1977 (UKPA) and Article 60 of the European Patent Convention. Special warning: Many of the original provisions of the 1977 Act relevant to this Chapter were amended by the Patents Act 2004 and the 1995 Rules replaced by the Patents Rules 2007 with various amendments of the Rules being ongoing. Rule numbers in this chapter refer to the 2007 Rules. Students must therefore make sure that they study fully updated versions of the Act and the Rules. Another useful resource is the Intellectual Property Office Manual of Patent Practice (MoPP) and in particular sections 7, 8, 9 and 10. Legal documents: • UK Patents Act 1977 (as amended) – (UKPA) • Patents Rules 2007; Patents (Fees) Rules 2007 • European Patent Convention, Arts. 60-61 • EPC Implementing Regulations, Rules14-15 & 19 -21
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Suggested chapter 9 answers and comments As most inventions are owned by an employer (often the client) try to take a holistic view of the situation as you will often need to consider matters from the perspective of both sides to reach a conclusion or even better a resolution. This is what the IPO or courts would do anyway. An employer often does not want to lose a good employee that is contributing ideas to the business so a degree of tact and diplomacy is needed to avoid an acrimonious situation occurring. In addition, inventors often have a lot of know-how that is valuable to a business and if they take their knowhow with them this could be advantageous to the client’s competitors. Proving what is confidential material and what is general know-how can be a complicated and time-consuming exercise and once information has left a business is it difficult to retrieve it.
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10
INFRINGEMENT AND CLAIM INTERPRETATION By James St.Ville QC, Henry Edwards and Edmund Eustace, 8 New Square*
Outline Whether a patent has been infringed involves two questions. The first is whether the object or process alleged to infringe is actually what is covered by the claim? The second is whether what is being done with it is an act that the law reserves to the patent holder? Answering the first question itself has two parts: (a) determining the true meaning of the words of the claims, which is often termed ‘interpreting’ or ‘construing’ a claim from the point of view of the ordinarily person skilled in the art and assessing whether the alleged infringement falls within that meaning and (b) considering whether the alleged infringement falls within the scope of protection provided by the patent as a matter of equivalence. Determining the meaning of a claim is a core skill of a patent attorney; while this obviously needs to be done if a client asks whether they infringe a patent, the question also (and more frequently) arises when considering issues of novelty and inventive step because those questions are answered using the same definition of the invention provided by the claims. The question of equivalence involves a new development in UK patent law arising from the decision of the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48. Answering part (b) of the first question requires a technical appreciation for the way in which the invention described in the patent functions. The effect of Actavis is that products or processes can infringe patents where they achieve substantially the same result in substantially the same way as the invention disclosed by the patent, even though they would not fall within a normal interpretation of the claims of the patent. Infringement by equivalence is itself assessed against three Actavis questions. The debate about how the issue of equivalence should be taken into account in addressing the question of a patent’s novelty or inventive step is beyond the scope of this chapter (i.e. whether there would be infringement where an infringing equivalent was made available to the public before the priority date of the patent). So the issue of equivalence is dealt with in the context of how it arises when giving opinions on the issue of infringement. The second question is often straightforward since patents regulate most kinds of activities such as making, disposing of or offering to dispose of, importing, using or keeping a product. However, there are exceptions for activities that are not really economic activities or are activities to be encouraged, or at least not discouraged by a patent, for economic or other policy reasons.
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Suggested chapter 10 answers and comments Please refer to the sections given below to check your answers: 1. 10.1.1 2. 10.1.5 3. 10.3.3 4. 10.3.3 5. 10.5.10 6. 10.4.7 7. 10.4.6 8. 10.5.5 9. 10.3.3 10. 10.6.4 and 10.6.5 11. 10.6.6
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STRUCTURE OF A PATENT APPLICATION By Emily Dodgson (CPA, EPA), Abel + Imray*
Outline This chapter examines the structure of a patent or patent application (drafting of patent applications is discussed in chapter 12). The contents of the main sections of a patent application are discussed along with strategies for reading patent or patent applications when considering a patent document (i) as a piece of prior art and (ii) for infringement.
Learning plan Prerequisites: The trainee must first have read: • Section 1, 2, 3, 14, 60, 61, 72, 125 UKPA • Articles 52, 54, 56, 83, 84, 85, 100, Protocol on the Interpretation of Article 69 EPC • Articles 5, 6, 33 PCT Guidance for the trainer: The trainer should provide examples of differently structured patent applications and discuss how they like to structure a patent application. The trainer should also discuss how they read a patent document (i) as a piece of prior art and (ii) when considering freedom-to-operate (infringement). Syllabus link: U K Exams: FD2 EQEs: Paper A IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills); Technical (Skill Sets: Analysis and Advice; Validity; Drafting; Prosecution). Time allocated: One half day.
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Suggested chapter 11 answers and comments 1. See 11.1 3. See 11.1 4. See 11.2.1 5. See 11.2.3
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DRAFTING A PATENT APPLICATION By Emily Dodgson (CPA, EPA), Abel + Imray*
Outline Drafting a patent application is one of the most difficult skills for a patent attorney to learn but one of the most important skills to possess. This chapter looks at the process of writing a patent application and discusses some different approaches for drafting independent claims as well as practical aspects such as dealing with the inventor. The chapter is divided into three main sections: getting the information from the inventor, drafting the application and getting the inventor to review it.
Learning plan Prerequisites: Chapters 6, 7, 8 and 11. Guidance for the trainer: The trainer should provide the trainee with plenty of drafting practice and feedback. The trainer should discuss how they go about preparing a patent specification, whether they have particular preferences regarding the structure of the application and any aspects of drafting specific to the technology field in which they work. Syllabus link: U K Exams: FD2 EQEs: Paper A IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Drafting; Validity; Prosecution) Time allocated: Two days.
Learning outcomes By the end of this chapter, you will be able to approach drafting a patent application in a structured manner and to make a first attempt at a complete draft including a set of claims. It is to be expected that a substantial amount of practice will be required before you are able to draft a complete specification in a competent manner.
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Suggested chapter 12 answers and comments 1. Since these lists should be relevant to you, there is no single answer. Take another look at the relevant sections and discuss with your trainer. 2. At least A should be discussed, including its drawbacks which are overcome by the invention. It may be useful to discuss C to show how others have failed to address the drawbacks. B should not be discussed, as it would risk giving a misleading picture of the invention which resides in applying steam cleaner technology to steam irons – discussing B risks making the inventive step look smaller. 3. Using the EPO’s definition of an independent claim, a single independent claim related to the ironing shoe of the iron (there is a substantial market for the shoes themselves) and a dependent claim to a steam iron reciting and including the shoe as claimed would be appropriate. An important question to consider would be whether the invention can be defined in relation to the shoe only or whether other features found in the remainder of the iron are needed (in which case the above approach may become difficult). 4. Now take a look at the Examiner’s comments. You should have found that there are three inventions: (1) a one one-way clutch to prevent starting a treadle machine in the wrong direction; (2) two one-way clutches to enable the machine to be powered by either treadle or an electric motor; and (3) the elongated extension shaft of Fig 5C (which can be used with two pulley prior art sewing machines). Invention (2) can be protected as a dependent claim, dependent on a claim for invention (1) and both are unified by the inventive concept of using a one-way clutch to drive a sewing machine. Invention (3) is a separate invention and would eventually have to be protected in a separate application. Since the client operates service centres for upgrading sewing machines, the Examiner’s comments state that a method claim directed to upgrading existing treadle machines should be included. Do you think this reasoning is complete? Can you think of more detailed reasons? Discuss with your trainer. Take a look at the Examiner’s preferred solution for an independent apparatus claim. How does yours compare? Discuss this with your trainer, if possible together with your other answers, in particular to question 1.
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FILING STRATEGIES: AN INTRODUCTION By Gwilym Roberts (CPA, EPA), Kilburn & Strode
Outline This chapter deals with systems for obtaining patent protection in multiple jurisdictions and looks at how to protect an invention to which improvements are being made during the patenting process. In particular, the chapter explores regional and international systems for keeping patenting options open for as long, and widely, as possible within budgeting constraints, how to identify countries for which patent protection is desired, how, broadly, to pursue protection in those countries, and use of the ‘priority’ system. The following key concepts are introduced: • The Paris Convention governing the priority system. • The Patent Cooperation Treaty (PCT) or International Patent Application System. • The European Patent (EP) and other regional patent grant systems.
Learning plan Prerequisites: The trainee should have read: • • • •
Sections 2, 3, 5, 6, 77-79, 89, 89A, 89B UKPA Articles 75, 87-89, 150 EPC Articles 3, 4, 8, 22, 39 PCT The Paris Convention.
Guidance for the trainer: Discuss with your trainee some examples of filing scenarios that you have encountered, and how you dealt with them. These should include filing strategies covering a large number of countries or covering a small well-defined set of countries and instances where the first filing has been made overseas and the reasoning behind it. Also discuss approaches adopted when an inventor or a team of inventors have continued to work on related inventions after a first patent filing such that further patent protection was required both within and subsequent to the priority year. Finally discuss cases where there are inventors from more than one country. Syllabus link: U K Exams: FC1, FC2, FC3, FD1, FD2 EQEs: Paper D
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Suggested chapter 13 answers and comments 1. See 13.5 2. See 13.6 3. See 13.6 4. See 13.5 5. See 13.5 6. See 13.5 7. See 13.6 8. See 13.5 9. See 13.5 10. See 13.5
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FILING STRATEGIES (UK) By Daniel Wolstenholme (EPA, CPA), Marks & Clerk*
Outline This chapter will deal with the life of a UK patent application from initial filing through to grant, in terms of the procedural steps involved and the timing of each of the main events. Substantive issues that you may encounter during this time are addressed in chapters 6 to 8 . Since a UK application may be filed for different reasons, the various issues to take into account for each scenario are also addressed, as well as the strategic rationale involved. The different types of UK application discussed in this chapter are: a direct UK application that will go through to grant, a UK application that claims priority from an earlier application, a UK application that is filed merely to obtain a priority date for subsequent foreign filings, a PCT application that enters the UK national phase, a divisional application, and an application converted from a European application. Although many issues relevant for each of these types of applications are the same, there are important differences between them that must be considered. The following key concepts are introduced: • Main events in the life of a patent application. • Timings of events and situations when these timings may change other pre-grant procedures.
Learning plan Prerequisites: Read sections 5, 13 to 21, 24, 74A, 74B, 89A, 117 and 125A of Patents Act 1977 (UKPA) and corresponding commentary in CIPA Guide to the Patents Act (9th Edition + 2nd cumulative supplement) and Patents Rules 2007. Legal documents: Patents forms. Guidance for the trainer: Ask your trainee to prepare a timeline setting out all of the stages and deadlines of a direct UK patent application. Discuss with your trainee how alternative routes to protection in the UK interact with the UK process.
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Suggested chapter 14 answers and comments 1. Indicate that a patent is sought, identify the applicant and give contact details, description of the invention. 2. Request for grant, a specification, an abstract, claims, and drawings 3. At the latest within six months of the date of publication of the search report, or within two years of the priority/filing date for a divisional application (or on filing if more than two years have passed). Use form 10 and pay fee. 4. Corrections are intended to rectify errors in the application, and are ex tunc i.e. having effect as if the corrected text was filed from the outset. Amendments are for making changes to the application, usually in response to examiner objections. Amendments are not retroactive. The criteria for corrections are stricter than for amendments. 5. The designation of inventor forms must be filed (form 7) – one for each inventor and one extra. This must be done within 16 months of the priority/filing date or within two months of filing a divisional, if 16 months has already passed. 6. Examination should have been requested two days ago. Since the deadline has been missed, it needs to be requested within two months, together with a request for an extension of time, made on form 52, and the payment of the extension fee and the examination fee. This must be done within eight months of the publication of the search report.
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FILING STRATEGIES (EP) By Jonathan Hewett (CPA, EPA), Venner Shipley LLP*
Outline This chapter sets out the formal acts required to be completed in order to obtain a European Patent (EP); the acts are presented in the chronological stages that an application passes through – filing, searching and publication, examination and grant. There are several types of EP applications: • direct-filed EP application, where the application originates as an EP application – it is either the first application filed in a particular family, or an application which claims priority from another family member; • regional phase EP application, where the application originates as an international (PCT) application; and • divisional EP application, where the application originates from a pending, and thus existing, EP application.
Learning plan Prerequisites: • an understanding of what constitutes and invention and a patent, and the purposes of having a patent; • an awareness of the existence of the European patent system, as a means of enabling the patent applicant by means of a single procedure to obtain a patent in some or all of its contracting states, and the existence of the international patent system. Legal documents: EPC2000, the Guidelines for Examination at the EPO, the Official Journal of the EPO, the Ancillary Regulations to the EPC, and the Case Law of the Boards of Appeal (ninth edition). Guidance for the trainer: Identification of cases that contain examples of the scenarios set out below. Syllabus link: U K Exams: FD1 EQEs: Papers C and D
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IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution) Time allocated: Reading of the material in this chapter should take around three to four hours; set aside two days including reviewing existing EP files and discussing with your trainer. However, an appreciation and full understanding of the material can be expected to be an ongoing process, which is best approached in conjunction with case work in office.
Learning outcomes By the end of this chapter you will have knowledge of the different routes that an applicant can take when seeking patent protection in Europe. In particular, you will develop an appreciation of the various stages and timescales associated therewith, which will allow you to advise your client as to the most appropriate route to take, based on an individual set of circumstances. In order to gain an understanding of the timescales you will need to review the legal provisions of the EPC2000 which that are listed adjacent to the commentary: this is encouraged as a means of familiarising yourself with this important legal text as early as possible.
15.1 Filing – generic issues The filing of an EP application refers to the process that results in an EP application being accorded a date of filing. For the EP application to be accorded a date of filing which matches the date on which you filed the specification, certain documents, fees and information have to accompany the specification, and of course these have to be filed at a certain place. The criteria specifying these requirements are typically referred to as ‘formal requirements’. The procedure for submitting these documents and information varies dependent on the type of EP application; however, the information that you need to gather and submit with the specification is very similar for all types of applications. This process is typically referred to as pre-filing preparation, and will involve you checking that you have the following details and documents: 1. Applicant details (name and address) 2. Inventor details (including how the rights pass to the applicant) 272
3. Priority details (where appropriate) and under certain circumstances a certified copy of priority document(s) 4. Extension states to be designated 5. Specification, including text, drawings, claims and abstract; you will need to check whether the drawings are in a form that will be accepted by the EPO and you will also need to ascertain whether any part of the specification needs to be translated. 6. Reference to an earlier filed application (instead of 5. above) 7. Details of how the fees are to be paid 8. Micro-organism sample (dependent on type of invention) 9. Sequence listing (dependent on type of invention) If your instructions do not include all of this information, you will need to contact the client and request the missing information as soon as possible; some of the information is not required in order for the application to be accorded a date of filing, as will be seen from the passages below, but it is good practice to have what you need in good time
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to meet the deadlines. We will now consider how this information is used, and when, for each type of application, starting with a direct-filed EP application.
filed; whilst in general, we have not set out the time limits in the commentary below, these can be found from inspection of the legal basis adjacent to the commentary.
15.2 Direct-filed EP application
Art.78(1), Art.80, R.40(2)&(3), Art.14(1)&(2) If the application documents submitted upon filing included a reference to an earlier application, and the earlier application is neither an EP application nor an international application filed with the EPO as receiving office, you need to supply a certified copy of the earlier filed application at the EPO. Additionally, if the earlier filed application is not in an official language of the EPO (English, French or German), a translation has to be filed into one of the official languages.
15.2.1 Requirements for date of filing Art. = Article of the EPC2000 R. – Implementing Regulations to the EPC2000 Art.75, R.35 The first thing to note is that direct-filed EP applications can be filed at any of the EPO filing offices – Munich, Berlin and The Hague – and at any competent national authority, which in practice is the patent office of the contacting state (e.g. the UKIPO). The documents making up the application can be filed directly, by post, fax, or electronically, or in fact via any permitted medium that means the application is filed ‘in writing’. In the majority of cases, applications are filed electronically via dedicated filing software, which ensures instant acknowledgement of receipt of the filing documents, and also entitles the applicant to certain fee discounts. Art.80, R.40, Art.14(1)&(2), R.6(1) For the application to be accorded a date of filing, the documents have to include an indication that a European patent is sought, applicant details (see 1 above), and an invention description or a reference to a previously filed application (see 6 above). The description can be filed in any language.
15.2.2 Requirements of EP application As described above, for the application to be accorded a date of filing, the requirements are a subset of the requirements for publication of the application. By this, we mean that the full set of information has to be filed with the EPO at some point prior to the publication of the application, to ensure that the application is not considered to be withdrawn or abandoned. There are time limits set in the EPC that govern when and how the information is to be WWW.CIPA.ORG.UK
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Ultimately, a description, one or more claims, the drawings referred to in the description, and an abstract, must be associated with the filed application, whether submitted with the original filing, or derived from an earlier-filed application. Art.78, R.41(1)&(2) As described above, for an application to be accorded a date of filing, the documents have to include an indication that a European patent is sought. EPO Form 1001 explicitly requests the grant of an EP patent, and should accompany the application documents; the form is available from the EPO website. Art.78(1), R.41(2), Art.133 The application has to include a title for the invention; the name, address and nationality of the applicant; and details of the applicant’s representative, if appointed. These can all be entered into relevant boxes included in form 1001 mentioned above. A representative does not need to be appointed in order for an application to be filed successfully, but if the applicant is neither a resident of nor has a place of business in an EPC contracting state, a representative must be appointed for actions to be performed after filing. Art.78(1), R.41(2), R.52(1)&(2) If the EP application is claiming priority from PATENTS TRAINING MANUAL: 2022
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Suggested chapter 15 answers and comments 1. The documents making up the application have to include an indication that a European patent is sought, applicant details, and a description or a reference to a previously-filed application. 2. A party who has neither residence nor principal place of business in a contracting state must be represented by a professional representative; the party must act through a professional representative in all proceedings, other than in filing the application. 3. The day prior to publication of the mention of grant of the parent application in the European Patent Bulletin. 4. Request re-establishment of rights in respect of the priority period and within two months of the expiry of the period, i.e. within two months from 12 months from the priority date. You will need to submit a written request for re-establishment, which needs to be accompanied by a statement of grounds setting out the facts you are relying on in support of your request. The request will need to be accompanied by the omitted act, which in this case is the filing of the EP application. 5. File the application in Spanish; you will have to file a translation into an official language of the EPO (English, French or German) within two months of the application filing date. 6. The date of publication of the search report. 7. Before the expiry of 31 months from the priority date of the international application: supply, where applicable a translation into an official language of the EPO; specify the documents on which the European grant procedure is to be based; pay the filing and designation fees; where applicable, pay the search, examination and third year renewal fees.
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FILING STRATEGIES (PCT)
y Dr Catherine Bonner (CPA, EPA) and Martin Shaw (MSci) Murgitroyd, B and Debra Smith (EPA, CPA) Mayfin*
Outline An introduction to the Patent Co-operation Treaty (PCT) system has been given in chapter 13. This chapter deals with details of the procedures and stages involved. This chapter covers the use of the international patent system in seeking protection for an invention across a large number of countries. The formal requirements for the applicant and the application are set out, along with details of the procedural timeline of events for the application. The chapter moves through each procedural stage in turn and includes details of options or routes that may be available at different stages in the life of the international patent application. Alongside the law, the practical considerations that may influence the particular route chosen by the applicant are discussed. Key concepts: • The PCT (International Patent Application system) – how and why it is used and by whom. • The offices and agencies involved in operating various stages of the application process and the procedural steps required at each stage.
Learning plan Prerequisites: The trainee should read: • Articles 3 to 30 (Chapter I) and 31 to 42 (Chapter II) of the PCT and Rules 3 to 78 of the Regulations under the PCT. • PCT Applicant’s guide (www.wipo.int/pct/guide/en) in particular the question-and-answer sections starting at Chapter 5 of Introduction to the International Phase and Chapter 2 of Introduction to the National Phase. • UK Patents Acts 1977 to 2004 (UKPA), and the sections applicable to international applications; PA 89 Effect of international application for patent. • PA 89A International and national phases of applications. • PA 89B Adaptation of provisions in relation to international application.
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• The Patents Rules 2007. • EPC – Article 153(1) and Article 153(2), Rules 159 to 163 EPC – Requirements for regional phase entry. • At least chapters 6, 13, 14 and 15 of this Manual. Legal documents: Official sources: The PCT website contains links to, and details of, the PCT and Regulations (https://www.wipo.int/pct/en/texts/index.html). The website also has links to the PCT applicant’s guide (as detailed above) for both the international phase and for the national phase and the annexes to the guide. Take care to use the most up-to-date version of the official material that is in force and current as at the current time of your study. It is common for the official wording of rules or law changes or new forms for filing to be made available before their commencement date. The ‘old’ versions should be used up to then. Forms, such as the filing Request form, are provided on the WIPO website – see https://www.wipo. int/pct/en/forms/index.html. Look through at least the Request – PCT/RO/101 and the Demand – PCT/IPEA/401. You may also find it helpful to look at samples of PCT communications such as the International Search Report (ISR) (Form PCT/ISA/210) and International Preliminary Examination Report (IPRP) (Form PCT/IB/373). Further explanation of these forms and communications will be given in the various sections of this chapter. It should be noted however, that most applications are now made electronically using online filing. Trainer’s input: Discuss with your trainee any general comments you have on the PCT system. Advise them of the standard procedures, practices or ways of working in your office that relate to PCT files and their case management, etc. Describe your usual practice when you look at, and work with, PCT files. Standard procedures may include, for example, filing the application online. Review some existing files together with your trainee to help your trainee to follow the progress of an application. It may be helpful for them to see files at different stages of the PCT procedure; you can point out various procedural steps and some of the forms and documents involved at each stage. You can show your trainee how the files are maintained, be they conventional paper files or electronic files. It would be helpful if you can provide a variety of different scenarios, for example, an individual inventor may proceed with their, perhaps single, PCT application or a large company having a portfolio of international applications. Syllabus link: U K Exams: FC1, FC3 and FD1 EQEs: Paper D Part I and II (Legal IPReg Competency Framework link: General/Legal (Skill Sets: Practical Application of the Law and Legal Practice; Communication Skills, Management of Workload; Business Awareness, Professional Conduct); Technical (Skill Sets: Analysis and Advice, Drafting, Validity) Time allocated: One to two days.
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Learning outcomes By the end of this chapter, you will be able to explain the PCT system and how it might be used by those seeking patent protection in a number of different countries. You should be able to describe how applicants can use an international (PCT) application to defer the cost of pursuing foreign patent protection. Your knowledge of the PCT system will become one of the skills which will allow you to advise your clients on their options for patent protection outside their own territory or country.
16.1 The PCT system – in brief The international patent application system is a useful, cost-effective way of reserving the applicant’s rights in an invention, whilst deferring both the significant costs associated with obtaining patent rights, and the decisions concerning the countries and regions in which to seek patent protection (153 states/countries are PCT contracting members as of July 2021). The PCT is a patent filing system administered by the World Intellectual Property Office (WIPO) and operating for applicants having residence in, or nationality of, a country (state) which is party to the Treaty (a ‘contracting state’). The PCT system provides applicants with a centralised procedure for filing an international application and obtaining an international search and written opinion on the patentability of the claimed invention. PCT procedure involves the publication of the application and, optionally, international preliminary examination of the application. The filing of an international application involves the preparation and filing of an application in compliance with a fairly rigid set of formalities. The application automatically designates protection in all contracting states. The filing date of that one, PCT, application is considered to be the international filing date and the filing date at each designated office. In addition, the advantage for an applicant is that the filing of a PCT application in one language, at one chosen office, is acknowledged in all PCT states as having the effect of a regular national filing. WWW.CIPA.ORG.UK
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The administrative burden of the system is handled and managed centrally by WIPO at the International Bureau (IB). The international filing and the subsequent centralized procedures are known as the International Phase. There follows a national or regional phase at a designated national or regional patent office of the applicant’s choosing. The final decision granting, or otherwise refusing, the application is the responsibility of those designated national/regional offices. The national phase can be deferred until 30 months from the priority date of the application for the majority of states – some choose to extend this to 31 months. In certain countries, however, the international preliminary examination stage of the application must be requested by 19 months from the priority date in order to extend the international phase until the end of the 30-month period. (More details of the national procedure follow in section 16.9.) The countries which require the request for examination at 19 months are few: only Luxembourg (LU) and the United Republic of Tanzania (TZ) at the time of writing. An international (PCT) application cannot become a single ‘International Patent’. Instead, after the international phase, there are the national or regional patent applications in the countries as selected by the applicant. Despite this, the ‘International Patent’ exists as a common myth among inventors and applicants, extending even to those applicants who would consider themselves familiar with patents and the various patent systems. Patent attorneys are likely to find themselves explaining the PCT system and the
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filed directly with the IB. (Preferably using ePCT). Publication will be around 24 September 2022, so it may be possible to file Article 19 amendments up until the first week in September 2022. 10. When you file a PCT application using ePCT, once the newly filed PCT application is visible to you in ePCT, then a best practice to be followed, is proofreading the preview of the PCT publication to ensure that all the details are correct. If there are any problems or things to fix, then right now is the right time to do a 92bis change to correct it. It is good practice to check one last time to see whether there are any problems with the priority claims or whether an intended priority claim has somehow been forgotten. Once you have fixed any mistakes, it may be a good idea to send the preview page to the client with an invitation for the client to check too. Perhaps somehow one of the inventor names got misspelled early in the process and no one noticed it until now. In any event this is your chance to get any of a wide range of problems fixed before the 18-month publication happens.
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PROSECUTION THROUGH TO GRANT y Gwilym Roberts (CPA, EPA) and Marco Morbidini (CPA, EPA) B at Kilburn & Strode*
Outline Once the patent application has been filed, in most jurisdictions (all those which carry out examination of patent applications) it is necessary to persuade the patent office that it meets certain criteria, including those of novelty and inventive step, such that a patent can be granted. Elsewhere in the training manual the legal and procedural requirements are looked at in detail. In this chapter, we review these requirements broadly and place them in the context of the practical task of dealing with and overcoming objections from the patent office. This is one of the key areas where advocacy skills – both written and oral – are required.
Learning plan Prerequisites: The main requirement here is to build up as much experience as possible of the dayto-day practice of dealing with examination reports. Legal documents: It is worth reviewing some IPO hearing decisions and EPO Technical Board of Appeal decisions to see how cases are argued and decided by the patent offices. The EPO Guidelines contain copious advice on what the EPO prefers to see; we advise referring to that when specific issues come up rather than trying to read the whole thing at once! Guidance for the trainer: At the outset it may be worth sitting down with your trainee and talking through how you like to structure your responses to examination reports, dealing with both UK and European instances. Syllabus link: U K Exams: FD3 EQEs: Paper B IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution)
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Time allocated: One to two days.
Learning outcomes By the end of this chapter you should be able to identify the different parts of an examination report, know what information you should provide about it to your client so as to obtain proper instructions and know the key components of a persuasive response. You will know the difference between IPO and EPO examination reports and be able to recite the main parts of a novelty and inventive step argument before each authority.
17.1 Legal background
17.1.2 Novelty
The legal requirements that the patent application must meet are discussed in detail in chapters 4, 6, 7 and 8, and, in particular, the issues of patentability, including novelty and inventive step and other requirements such as sufficiency, support, conciseness, clarity and unity are dealt with. However, it is useful to recap these and further discuss them, specifically, in the context of the objections that the patent attorney is likely to meet and have to overcome in the patent examination procedure.
In order to meet the novelty requirement, the claimed invention must have a distinguishing feature over the prior art; that is, over all public domain information available before the earliest date (filing or priority) of the claimed subject matter. Every claim must meet this requirement but as the dependent claims by definition include all the features of the independent claims, in practice, this means that it is usually only necessary to show patentability of the independent claims.
17.1.1 Patentable inventions As discussed in chapters 6 and 7, the question of whether claimed subject matter relates to a ‘patentable invention’ can be subdivided into two areas, whether it is ‘patentable’, that is, meets the requirements for novelty, inventive step and industrial applicability and whether it is an ‘invention’, that is ensuring that it does not relate solely to excluded matter such as business methods, mathematical methods, software and so forth. In the everyday practice of a patent attorney, the main issues to consider are those of novelty and inventive step and these are reviewed below in some detail.
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The prior art or state of the art includes all information placed into the public domain whether in writing, orally or by virtue of a sale or demonstration of the product and so forth. Typically, in the prosecution of a patent application the majority of the prior art encountered is in the form of published patent applications or patents (let’s call these ‘patent documents’). This is because published patent documents usually include a wealth of technical detail that is normally not included in other types of publications, such as text books or instruction manuals. Also, patent documents are very easily searchable by virtue of the international classification system and the patent offices have access to very good databases and expert examiners who also do the searching. As a result, there can be a tendency to start treating published patent documents as a special form of prior art but, with
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one exception, they are not. A patent application is a published written document just like any other and should have no more or less weight attached to it. It is slightly more confusing than other documents in that it includes a specific description (which is usually clearly written and comprehensible) and claims (which may not be to the layman). It is important to remember when assessing the extent of the teaching of the prior art this is done from the point of view of the ‘skilled person’ – i.e. an unimaginative but skilled technician or scientist (depending on the subject matter of the patents), but not a patent attorney. As a result the claims often add very little to the specific disclosure of the document as a whole because we are looking at the information content of the document, not the scope of the claims. Although the claims should be looked at, this should be from the perspective of a skilled person who will see them as rather vague and unhelpful statements with little specific information in them. The exception where patent documents do differ from other prior art is in the case of patent applications which were filed before but published after the priority date of the application in suit. Unlike any other type of publications these can be relevant for patentability – but novelty only – and only in common jurisdictions with the patent in suit. It is also worth noting that the extent to which these constitute prior art differs outside Europe. In assessing the prior art, the first point to check is whether the cited documents were in fact published before the priority date. It is always worth bearing in mind that the priority date of the claimed subject- matter may not be the earliest priority date of the patent application in suit as the subject matter may have been added later (that is, at the time of filing another application whose priority is claimed or at the time of filing the application in suit). It is unusual in prosecution to have to consider whether the publication date of the prior art needs to be substantiated; normally the cited prior art (for example, a patent document) is a clear-cut publication, rather than say, an allegation of an oral disclosure, as these are difficult to search and prove by the patent offices. It is also unusual to have to assess any enablement issues, that is, whether the prior art disclosure actually had enough detail in it enabling the skilled person to work out its content WWW.CIPA.ORG.UK
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rather than being, for example, a black box, because, again, non-enabling prior art documents do not tend to turn up in patent searches. As a result, the question of when the information was put into the public domain as against the priority date of the application in suit tends to be fairly clear cut. Once the relevant documents have been identified, then the novelty test is extremely methodical and also extremely simple, at least in principle. Novelty is assessed on a document by document (or more broadly prior art instance by prior art instance) basis and it is enough to show that the claimed subject matter is novel over each individual document (likewise, if a document describes different items, then novelty is generally addressed on an item by item basis). If some of those documents (or separate items within the same document) could be combined to give all of the features of the claimed subject matter, then the claim is still novel, but the issue of inventive step may need to be addressed. As a result, novelty objections can be addressed and overcome in the following repeatable manner: 1. Take the first prior art document relied on by the Patent Office. 2. Take the first independent claim of the patent application. 3. Go through every feature of the claim (including the introductory clause). Is there a feature in the prior art document which the claimed feature reads on to? 4. If this is the case for every feature in the claim, then the claim is not novel over that prior art document. If the claim has any features which are not found in that prior art document, then the claim is novel. 5. Repeat for each independent claim. 6. Repeat for each prior art instance. Where there are many prior art documents (and the same reasoning applies to when there are many described items within the same document), then it may be worth preparing a table correlating the claimed features to where they can be found in the prior art. This can be augmented by indicating where the feature is found in the prior art document by page and line number and, if the feature is not PATENTS TRAINING MANUAL: 2022
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Suggested chapter 17 answers and comments 1. See 17.1.2 2. See 17.1.2 3. See 17.1.2
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18
COMMERCIALISATION OF INTELLECTUAL PROPERTY By John Hull (Queen Mary, University of London and King’s College London)1
Outline This chapter outlines the basic principles in relation to the commercialisation of intellectual property. In particular, the chapter focusses on the legal instruments underpinning a commercialisation arrangement – assignments, licences, collaboration agreements, etc.
Learning plan Syllabus link: FC2 and FD1. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice). Time allocated: One or two days
Learning outcomes By the end of this chapter, you should be able to describe different approaches to the commercialisation of intellectual property. You will be able to outline key aspects of an IP licence agreement.
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18.1 Introduction There is no standard definition of ‘commercialisation’ of intellectual property (‘IP’ or ‘IPR’), but as the term suggests, it envisages the process of putting intellectual property to profitable commercial effect – in short, making money out of it. WIPO in its Guide to IP Commercialisation2 adopts the same basic theme: ‘Commercialization of IP is making money out of one’s ideas. As such, an idea has no value until one makes it into a tangible object and its utility has been proven such that others would pay to use, see, read, recognize or listen (to) that product. We define the commercialization of IP as a continuum of activities and actions that provide for the protection, management, evaluation, development and value-creation of ideas, inventions and innovations to implement them in practice. Prototypes and implemented processes lead to the development of products and services by entrepreneurs, startups, existing companies as well as governments resulting in economic and societal benefits.’
That IP has to be converted into an asset capable of earning money is in turn a reflection of three features of IP: • First, IPRs are negative rights – rights to stop rather than rights to do. The existence and ownership of an IPR is no guarantee that the owner will earn an income from it. A pharmaceutical company can use its patent to stop a competitor infringing the patent thus preserving its right to manufacture and sell the product covered by the patent. But that is an example of use of the IPR as a defensive mechanism – stopping an infringing act. • Second, IP is a property right and like other property rights, can be put to good effect as a means of generating an income. Section 30(1) of the Patents Act 1977 classifies a patent or a patent application as personal property which can be assigned or mortgaged – section 30(2). A patent or patent application is subject to the usual rules on the disposition of personal property – section
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30(3). What the latter means is, for example, that an individual who owns a patent and dies has their property subject to the same rules on disposition of property as other property in the deceased’s estate. And like other property, IP can be licensed to others to use in the same way as the owner of a house (in this case real property) can let the house to a tenant and derive an income from it. • Third, many innovations, however they are protected, need to be brought from a basic or raw state to one which allows the product or process concerned to be exploited commercially. This is often the case with innovations devised by universities and the commercialisation process3 envisages bringing bench science to an economically realisable state.
18.2 Sale of IP – assignment If commercialisation of IP is realising its value, then one of the easiest ways to do this is simply to sell it. A company might, for example, own a patent portfolio part of which is no longer relevant to the Company’s product range, so that portion can be sold. Another relatively common example is the sale of an insolvent company’s assets by an insolvency practitioner (a receiver or liquidator) for the benefit of its creditors. This part of this chapter will consider three different situations in which IP is sold as part of the commercialisation process.
18.2.1 Simple assignment of a patent or patent application This will cover the kind of examples given above. An assignment of a patent or patent application must be in writing and signed by or on behalf of the assignor – section 30 (6) Patents Act 1977. So, for a limited company assigning a patent or application, a duly authorised person must sign the relevant document. Section 33 of the Act requires the assignment to be registered to protect the interests of the assignee. If foreign patents or applications are included in the process, any local rules relating to the form of assignment or recording of an assignment must be complied with.
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A sale is effected by an assignment (see above) of the property rights in the patent or patent application in question. The assignment can be made by simple contract (most assignments will be made this way) or by deed. An assignment can be a simple document recording the following essential information: • The names of the assignor and assignee. • Identification of the patent or application concerned which will be the relevant application or registered number. If a sale of a patent includes any accompanying know-how this will need to be carefully and precisely identified (this issue is further considered below). • The consideration for the contract, which will usually be the purchase price. Wright Hassall v Horton4 suggests that no consideration is necessary to assign a patent, but the vast majority of assignments will show some consideration, even if that is only nominal consideration of one pound. • Any warranties agreed between the parties. A warranty is a contractual promise that a state of affairs exists or will exist at some future date. A standard warranty in a simple patent assignment will be that the assignor owns the patent or application (and any accompanying know-how), has paid any renewal fee and is not aware of any infringement of or challenge to the validity of the patent or opposition to the application. • The right to sue for any infringement of a granted patent prior to the assignment; • A governing law and forum provision to deal with any disputes arising from the assignment. It is common to see an assignment using the term ‘with full title guarantee’. This is a reference to terms implied on a transfer of property by the Law of Property (Miscellaneous Provisions) Act 1994. The implied terms are that the assignor has the right to assign; that it will do anything reasonably necessary to vest title in the assignee (i.e., an implied further assurance provision)5 and that the assigned patent or application is free of charges or third-party rights. Where the phrase ‘with limited title guarantee’ is used, this implies the first two of these terms. The third term is that the assignor has not encumbered the patent or application and is not aware that any third party has done so. WWW.CIPA.ORG.UK
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The benefit of using a deed to transfer the IP is that it avoids any issue over the adequacy of any consideration which can be an issue when some foreign rights are concerned. A sale by deed may also be required when certain organisations including charities (e.g. a university or research institute) sells its property. An assignee’s advisors need to be aware to carry out due diligence in these circumstances. Assigning know-how related to a patent is not so straightforward. There is no uniform definition of ‘know-how’ but the definition used in the EU Technology Transfer Block Exemption Regulation6 conveniently identifies its features: ‘know-how’ means a package of practical information, resulting from experience and testing, which is: i. secret, that is to say, not generally known or easily accessible, ii. substantial, that is to say, significant and useful for the production of the contract products, and iii. identified, that is to say, described in a sufficiently comprehensive manner so as to make it possible to verify that it fulfils the criteria of secrecy and substantiality;
The difficulty is that ‘know-how’, however valuable, is not a property right.7 The protection of know-how in the UK is determined on the basis of a relationship of confidence rather than on property rights. So, it is possible to assign know-how? There is no satisfactory answer to this, but an assignment of a patent (or application) ‘… and any associated know-how…’ would be unlikely to be found ineffective and is the kind of transaction practitioners engage in regularly without difficulty. The key point to note is that definition of the know-how in question is the most important part of getting the assignment right.
18.2.2 Sale as part of a wider corporate transaction (often referred to as an M & A deal)8 Many businesses are bought to obtain their intellectual property rights. The purchase can either be a purchase of the shares of the company owning the rights or of the assets themselves. PATENTS TRAINING MANUAL: 2022
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Notes and references 1
John Hull is a solicitor, a consultant to a firm of patent attorneys and a visiting lecturer at Queen Mary, University of London and also at King’s College London where he teaches a course on the Commercialisation of Intellectual Property.
2.
WIPO Guide on IP Commercialisation (2015) by G.N. Keller
3.
A useful summary is contained in J.P. McManus: From Creation to Commercialisation (Oak Tree Press 2012)
4.
[2015] EWHC 3716 (QB)
5.
The term ‘further assurance’ means the steps a contracting party is obliged to take to complete a transaction to make it fully effective. These steps may include, for example, providing assistance to register the appropriate documents with a registry.
6.
The Technology Transfer Block Exemption (Commission Regulation 316/2014 on the application of Article 101(3) of the Treaty to categories of technology transfer agreement.
7.
Neither the EU Trade Secrets Directive (EU 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) nor the UK implementing regulations – The Trade Secret (Enforcement, etc) Regulations 2018 SI 2018/597 defines a trade secret or know how to be a property right.
8.
9.
See: C. Demetriades Intellectual Property Issues in Commercial Transactions (Sweet & Maxwell 2008) at Ch 3; N. Coulson (Ed) IP Issues in Corporate Transactions (Globe Law and Business 2015) Section 39 Patents Act 1977
20. Unfair Contract Terms Act 1977 21. For guidance on the meaning and drafting of boilerplate clauses see: M.Anderson and V.Warner Drafting and Negotiating Commercial Contracts (Bloomsbury 2016) Ch 8 22. Or Scots law and the Scottish courts, Scotland having a different legal system 23. The term ‘Toll Manufacturing’ is a US term. Reference is made to toll manufacturing agreements in: Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch); Rotam Agrochemical Co v GAT Microencapsulation GMBH [2018] EWHC 2765 (Comm) and Turbo K Ltd v Turbo K International [2020] EWHC 2078 (Ch). 24. UK Research and Innovation is the umbrella organization which brings together the activities of seven separate research councils covering the range of scientific, medical, social science and artsbased research. See: www.ukri.org 25. EU grant monies have been a major source of research funding for UK universities in a series of ‘Framework Programmes’, the latest one of which is FP 9. Generally see: https://ec.europa.eu/info/ research-and-innovation_en 26. Generally see: www.gov.uk/government/ organisations/innovate-uk 27. For details see: https://catapult.org.uk 28. The R & D Block Exemption (Commission Regulation 1217/2010 on the application of Article 101(3) of the Treaty to certain categories of research and development agreements) 29. www.gov.uk/guidance/university-and-businesscollaboration-agreements-lambert-toolkit 30. www.ncub.co.uk/reports/lambert-review.html 31. Section 30(1) Patents Act 1977 32. Section 33(3) Patents Act 1977
10. Section 30 Patents Act 1977
33. Sections 30(7) and 37, Patents Act 1977
11. For an example which examines equitable ownership (in relation to copyright) see: Griggs v Evans [2003] EWHC 2914 (Ch)
34. Section 67(3) Patents Act 1977
12. See for example: Robin Ray v Classic FM [1998] FSR 622 13. See: www.gov.uk/guidance/licensingintellectual-property where a skeleton licence can be found
35. Section 67(3) Patents Act 1977. 36. M. Anderson: Technology Transfer (4th Ed Bloomsbury Professional 2020) Part C 37. Notice on agreements of minor importance which do not appreciably restrict competition under Article 101(1) of the Treat on the Functioning of the EU (De Minimis Notice) 2014/c 291/01
14. Allen & Hanbury v Generics [1986] RPC 203 HL 15. Contrast trade marks where a trade mark licence must be in writing: Section 28(2) Trade Marks Act 1994 16. Section 30(7) Patents Act 1977 17. Section 32(2) Patents Act 1977 18. Section 36 (3) Patents Act 1977 19. Under section 67 Patents Act 1977 – see above
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19
INTRODUCTION TO ADDITIONAL TOPICS By Gwilym Roberts (CPA, EPA, Kilburn & Strode)
Outline Throughout the training manual we have aimed to provide as much detail as we can about the key areas the trainee needs experience of in the early stages of their career. The world of patents is a complex one, however, and there are many other topics that we could go into. Rather that overloading the manual with everything that one could ever know, in this chapter we provide a very brief overview of some of the other topics that we have identified that are useful to know about but perhaps aren’t essential parts of early training. Here we look at topics such as oppositions at the EPO (a huge topic in itself), appeal procedures at the EPO, reinstatement of cases, third-party observations, post-grant amendment opportunities, patent office opinions and renewal/annuity fees, and the key points the trainees need to understand about each of these.
Learning plan Prerequisites: Useful references for this chapter: • Oppositions (EPO): Article 99-105 EPC, Rule 75-99 EPC • Appeals (EPO): Article 106-112a EPC, Rule 97-110 EPC • Third Party Observations: EPO Article 115, Rule 114, UKPA section 21, Rule 33 • Post Grant Amendments: EPO Article 105a-c EPC, Rule 90-96 EPC, UKPA sections 27, 75, 76, Rule 35 • Patent Office Opinions (UK): section 74A, B, Rules 92-100 • Renewals: Article 63 EPC, Article 86, Rule 51, UKPA section 25, Rules 36-41A Guidance for the trainer: One or more of these topics will probably come up at some point during training – when they do come up, please ask the trainee to read through the relevant legal provisions and the commentary there and apply them to the situation in hand. Necessarily, the training manual cannot carry all information about all areas and so there will be room for augmentation of the basic information provided here on a case-to-case basis! Syllabus link: UK exams: FC1, FC3, FD1; EQEs: Papers A, C and D. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice); and Technical (Skill Sets: Analysis and Advice, Prosecution). Time allocated: One and a half days.
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Learning outcomes By the end of this chapter, you should be able to explain the basics of each of the topics covered, and understand where the key legal requirements can be found.
19.1 Oppositions
grounds and any evidence required such as prior art demonstrating lack of patentability.
Articles 99 and 100 EPC are a good starting point for understanding the basics of opposition procedure. An opposition at the European Patent Office (EPO) provides an opportunity for third parties to obtain central revocation of a patent at the EPO. The alternative would be to seek revocation in national courts on a country-by-country basis. These two routes can be sought in parallel, and different jurisdictions have different approaches as to whether they will stay national revocation proceedings if there is an opposition in place. The key points of an opposition are:
19.1.2 Opposition procedure
• Any opposition must be filed within nine months of the date of grant of the European Patent. The relevant formalities must be completed by this date and there are no extensions. • The opposition must be based on the admissible grounds which include patentability, sufficiency and added matter. • Typically, oppositions follow a written procedure culminating in a hearing. Oppositions are always appealable to the EPO Boards of Appeal. • The outcome of the opposition can be that the patent is maintained unamended, or in an amended form. Alternatively, the patent may be revoked and this will be binding for all states.
19.1.1 Contents of the oppositions The opposition must contain a detailed explanation of the grounds of opposition (as set out in Article 100 EPC), the argumentation supporting those
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Once the opponent has filed the notice of opposition, the patentee may file a counterstatement. After that the EPO directs whether further written communications are required. In almost all cases, eventually the EPO Opposition division will issue a summons to a hearing (oral proceedings). This hearing may be in person or, more commonly at the time of writing, by video conference. Hearings typically last for a day also and at the end of the it the EPO will issue an oral decision. The decision is appealable to the EPO Boards of Appeal by any party adversely affected. For example, if the patent is maintained in amended form, both parties may appeal as this is a compromise from both perspectives. The appeal procedure is dealt with separately below, but roughly speaking follows a similar form and process to the opposition procedure and the final decision is binding without further appeal within the EPO in the vast majority of cases. It is not appealable to national courts.
19.1.3 Strategic considerations The opposition procedure is a very powerful and cost-effective way of knocking out a European Patent. It only relates to validity and not infringement, and unlike UK court proceedings, does not include cross examination or witnesses in the vast majority of cases. As a result, the costs tend to be lower; the hearings are also shorter which can also bring the costs down. As a result, an opposition is a very powerful way of proceeding although if reliance is
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made on subtleties of witness declarations it is not the most powerful forum. As mentioned above, an opposition can be mounted as part of a broader litigation strategy in view of its interrelation with national proceedings, but the potential power of a pan-European revocation is a strong bargaining counter.
19.2 Appeals We focus here on appeals at the EPO. The EPO can issue decisions are various points in the life of a patent application or patent. The decision might be that the application fails on formal grounds or it might be a decision that following examination and possibly a hearing, the patent cannot be granted. Post-grant, a decision may be issued for example by an Opposition Division that the patent is to be revoked. Any decision by the EPO can be appealed and the basic form is set out in Rule 99 EPC. At the end of the appeal procedure a decision will be issued which is not, usually, appealable further. In some instances it can be taken to the Enlarged Board but this is exceptional and will normally involve a very significant point of law; it should be assumed that the appeal decision should be the final decision in any case.
19.2.1 Form of appeal Similarly to the opposition, the appeal should set out the decision to be overturned and the facts, evidence and argument that support overturning it.
19.2.2 Appeal process Again, similarly to oppositions, typically the party will submit the full case at the outset. If the appeal is part of contentious proceedings (i.e., an opposition) the other side will be asked to file a counter statement; the EPO will then direct any further communications and, typically, call the party or parties to a hearing. The hearings typically take up to a day and an oral decision will be issued at the end of the hearing followed up by a written decision which, as indicated above, is typically the final decision of the EPO in the matter. WWW.CIPA.ORG.UK
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19.2.3 Strategic considerations In ex-parte proceedings, particularly examination proceedings, the appeal route is always available if it is not possible to get the Examining Division to agree to a preferred form of a claim. The Appeal Board is independent of and different from the Examining Division as a result of which you will have a fresh set of eyes to look at the case. However, the Appeal Boards are governed by the Rules of Procedure of the Boards of Appeal and an important aspect of those is that it is very difficult to augment your case and very difficult indeed to file any further amendments so that you do need to ensure that your best case and requests are introduced during first instance (i.e., before the Examining Division). Appeals can take quite a long time but they have suspensive effect so that if you have an adverse decision, this delay at least means that your case is potentially still alive a bit longer. In inter-partes proceedings (i.e., oppositions), the appeal is a fairly inevitable step in the process as one side will always be unhappy with the outcome of the first instance hearing; it should be factored into the cost and time estimates therefore for any opposition, and the amount of time it can take, and the suspension of the decision during the appeal proceedings, should be factored in. The final outcome of an appeal can happen rapidly at a hearing and it is always useful to think about the next steps – for example if you client should be issuing any press releases or communications to the trade depending on the outcome.
19.3 Reinstatement and further processing In some instances, if there is an error which gives rise to an application being deemed abandoned/ withdrawn or otherwise dying, there are provisions at both the UK IPO and the EPO for reviving it. Both have reinstatement provisions although the application of those differs rather, the EPO being stricter. However, the EPO has an additional route known as ‘Further Processing’ which can be obtained as of right for a more limited range of omitted acts. Many of the acts in relation to which further processing can be invoked are discussed in chapter 15.
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