The following fees must be paid in connection with the filing of a PCT application:

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1 PAPER: FD1 MARK AWARDED: 70 Question 1 The following fees must be paid in connection with the filing of a PCT application: - Transmittal fee - Application fee - Search fee These fees do not need to be paid on filing, but can instead be paid validly up to 1 month from filing, i.e. by 13 November However, the fees are deemed paid in time if they are received before a letter is issued by WIPO notifying the applicant that the fees have not been paid. This effectively gives the client another few days in which to pay. If this deadline is missed, there is a further month (i.e. until 13 December 2015) in which the fees can be validly paid with a surcharge (of 50%). Again, the fees are deemed paid on time if they are received before a notification from WIPO is issued stating that the deadline is missed. Recommend paying by 13 November 2015 or shortly after to avoid the large surcharge. No other fees are due on the PCT application in the next 6 months, so the client won t have to pay any further fees between now and hi being sure about whether he will have the money to continue. Question 2 1 MARKS AWARDED: 3/5 A design must relate to the whole or a part of a product. The design patent applications corresponding to more than one product will therefore need to be filed as separate applications, so there will be 5 applications. As the client wants registered protection in Europe, a Community Registered design would be more appropriate than a UK registered design, as it gives a whole unitary right that covers the whole EU. A significant discount is available when filing multiple applications at OHIM if each design is in the same Locarno class. The torches, lanterns and floodlights are similar types of products and so are likely to be in the same class, but check. If they are, we should file a multiple application. The application splits out into separate registrations after registration. In order to retain the filing dates of the original US applications, we must claim priority. There is a 6 month priority period for registered designs, so the relevant deadlines are: Torches 12 October 2015 (i.e. Today)

2 Lanterns / floodlights 13 October 2015 (i.e. Tomorrow) Therefore, file priority claiming applications ASAP. In order to validly claim priority, the second applications must have the same applicant, or their successor in title. Lighting US have obtained an assignment from inventors, so the applications should be filed in their name as successor-in-title. Priority can be claimed up to 1 month after filing i.e. by 12/13 November 2015 but double check ASAP. File copy and assignment at OHIM. Even if no priority claim were possible, there is a 12 month grace period for inventor-derived disclosures, so the US applications are not prior art for the CRD applications. However, any intervening disclosures or applications that are independently-derived would be prior art. UK unregistered design right (UKUDR) is only available to qualifying persons, which does not include US individuals (i.e. The inventors) or US companies (i.e. Lighting US if the inventors are their employees). Therefore, unlikely that UKUDR exists. Community Unregistered Designs (CUD) do not have the same qualification criteria, and so would be available to the US company. CUD lasts 3 years from public disclosure (probably publication of US design patents), in contrast to 25 years, renewable in 5 year chunks for CRD. Furthermore, one must prove that the design has been copied for a CUD, whereas a CRD offers a monopoly right. Question 3 MARKS AWARDED: 8/10 New client, so register self as agent / address for service for both applications using form. How to amend applications: Parent (GBI) has received notification of grant under S18(4), but grant has not been published yet in UKIPO journal (S25). There is no possibility of amending the application in this period of administrative limbo. Instead, must wait until official grant (ie 4 November 2015) before then amending. Apply to UKIPO, stating reasons for amendment and providing basis (basis in claim 2 here if we are simply inserting claim 2 into claim 1). Divisional application (GB2) has not yet been granted. Voluntary amendments may be made between issuance of the search report and the issuance of the first examination report under S18(3), and also in response to the first examination report under S18(3) whilst also addressing the issues raised. We have already replied to at least one S18(3) report, so voluntary amendments can no longer be made as-of-right. Instead, they require the discretion of the examiner. Other reasons for amending (to avoid a piece of relevant prior art that has come to applicant s attention) are reasonable, and the amendment narrows the scope of the claim, so it seems very likely that such an amendment would be allowed. 2

3 Whether to amend If client takes action and patent found to be only partially valid in view of this document, damages for infringement are calculated based on whether the patent was framed in good faith. Therefore, not amending to take into account this document could result in a reduction in damages awarded. However, piece of prior art is very obscure, so very unlikely a third party would become aware of it, and retaining broader claim scope gives a broader scope to take action / act as a deterrent. If it really is very unlikely to be f, recommend not amending. Sitting on amendment may reduce damages awarded taken into account by court / comptroller. Amending also may have effect on damages awarded, taken into account by court / comptroller. Sitting on amendment may reduce damages awarded. File divisionals from GB2 to claim 2 of each of GB1 and GB2 then we have two valid patents (once granted). MARKS AWARDED: 5/9 Question 4 New client, so register as agent + AFS using form. Claims, abstract, application fee, search request (PF9n) and search request all due 12 months from filing, i.e. 1 August 2015, which has passed. Extendible by 2 months as-of right (ie until 1 October 2015), but request must be filed before extended deadline (i.e. by 1 October 2015), so extended deadline has also passed. Discretionary extensions beyond this are available, but are conditional on hearing requested the as-of-right extension first. Therefore, no further extensions are available. Instead, must request reinstatement. Apply on form and pay fee, include evidence (e.g. witness statement). For request to be allowed, Comptroller must be satisfied that the applicant missed deadline unintentionally. Appear to have a good case, because Mrs Coral intended to keep application in force, but Mr Silver s inaction prevented it. Deadline is earlier of 2 months from removal of cause of non-compliance or 1 year from missed deadline (1 August 2016). Mrs Coral found out yesterday, so deadline is 2 months from then, i.e. 11 December File ASAP. No third party rights will accrue as application not yet published. If request allowed, file claims, abstract, search request and pay search + application fees. 3

4 Note deadline for statement of inventership (PF7) is 1 December Protection in US: 12 month deadline for filing priority claiming applications is 1 August 2015, which has been missed. Possible to get 2 month extension in US with good reasons, i.e. to 1 October 2015, but this has also been missed. Therefore, too late to file US application claiming priority. However, US has a 12 month grace period for inventor-derived disclosures, meaning an application could be filed any time before March 2016 and the launch event would not act as prior art. However, any independently-derived disclosures in the intervening period would count as prior art, so apply in US ASAP to minimise risk. Question 5 MARKS AWARDED: 8/8 New client, so register as agent / AFS using form. Exam fee / PF10 alread filed as we have had search / exam report. Rule III is intended to cover failure in postal service i.e. items going missing in the mail. In this case, Mr Barrow did successfully receive his mail from the UKIPO, but then passed to Mr Wright. Therefore, no error in the postal service as the post was successfully received at the recorded address for service (Mr Barrow) and so we cannot rely on Rule III. If application is still within R30 compliance period, failure to respond to an examination report renders the application dormant, and it is not actually refused until the end of the compliance period. The R30 deadline is the later of: - 1 year from first examination report, i.e. 7 September years 6 months from filing date (no priority claimed), i.e. January Deadline therefore in January 2016, find out filing date ASAP to calculate precisely. As R30 period not yet expired, contact examiner ASAP, explain circumstances and request discretionary extension for filing response to CSE report. Likely to be allowed as we have good reasons former agent witholding information from applicant. Not long to get application in order (- 3 months), so consider requesting extension to R30 period 2 months extension available as of right pay fee, use form. Do it close to expiry of R30 if it becomes necessary. MARKS AWARDED: 5/9 4

5 Question 6 New client, so register as agent and address for service for GB1 and GB2 GB1 Predates article and marketing disclosure, so novel and inventive over all disclosures we know about. GB2 Formalities due 12 months from GB1 filing date, i.e. by 25 October 2015: o claims (already filed) o abstract o application fee o search request (PF9A) + fee ensure all are paid to keep application pending. 12 month deadline for priority-claiming applications is also 25 October Client wants worldwide protection, so recommend filing PCT application by 25 October Note that Taiwan is not in the PCT and client has competitor there, so also file priority claiming application directly in TW (note not in Paris Convention but have reciprocity arrangement with UK). Currently does not claim priority from GB1. Has matter in common with GB1, so that matter will take date of filing of GB2 (23 January 2015) unless priority claim is added. If priority claim not added, article disclosing GB1 on 1 November 2014 will be citable against matter relating to GB1 in GB2, for novelty and inventive step. GB2 filed less than 12 months from GB1. Therefore, priority claim can be added late, up until 16 months from GB1 (i.e. by 25 February 2016). Apply on form, paying fee. No reasons needed. Marketing material disclosure post-dates GB2, therefore not relevant prior art. GB2 may lack inventive step over article - are improvements inventive? Need to check. If not, priority claim essential. Instead of adding priority claim into GB2, may be more cost effective to simply file PCT / TW applications to subject-matter of GB2, claiming priority to both GB1 and GB2. File by 25 October MARKS AWARDED: 7/9 5

6 Question 8 Infringement EP-A is granted, and therefore Allium can use it as the basis of an infringement action in both FR and UK. The fact that an opposition has been filed may mean the patents (EP/FR) / EP(GB)) are subsequently revoked, by can serve as a basis for immediate action. May be able to slay infringement proceedings if brought until outcome of opposition, but depends on circumstances. Check renewals have been paid and patents are in force in UK/FR. If not paid, may accrue third party rights as have been making preparations which appear serious and effective. Client is launching a garlic press with a coil spring. Claim 1 specifies a spring mechanism, but does not specify a particular spring. Therefore any spring mechanism would infringe, and therefore the client s potential product falls within the scope of claim 1. Claim 2 specifies a coil spring, which is what the client uses and therefore also covers client s product. Claims 3 and 4 specify different types of springs, neither of which are used by the client. Therefore, client s proposed product does not infringe these claims. Check for other related family applications that may be in force in UK or FR. Client will be direct infringer as manufacturing (making), offering, disposing of and keeping new product. Validity EP-A claims priority from US-A3. Check it does not claim priority from any of the other applications. Assuming not for purposes of question. US-A3 can validly serve as a basis for priority in respect of the subject matter first disclosed in that application. It cannot serve as the basis for priority for subject-matter previously disclosed in USA1 or USA2. USA3 first discloses the elastomeric material, and therefore claim 4 has a valid claim to priority in respect of this material, and so has the effective date of USA3 April However, the product does not infring this claim. Claims 2 relates to subject-matter first introduced in US-A1, and therefore is only entitled to the filing date of EP-A, because USA3 was not the first filing of this subject-matter. Therefore claim 2 has the effective date of July Claims 1 and 3 relate to subject-matter first introduced in US-A2, and are not entitled to priority from US-A3. Consequently, they too have the effective date of July

7 None of the US applications can be part of the state of the art pursuant to Article 54(3) because they are not European applications. Neither can they be S2(3) art for the resulting EP(GB), as they are not GB or EP(GB) applications. Claim 4 has effective date of April 10, and therefore predates publication of USA1 and USA2. Consequently, these publications are not part of the state of the art for claim 4, and claim 4 is therefore novel over all the art we know of (including PA-1). Probably inventive over PA-1 as PA-1 relates to electrician s wire matters (different technical field) and uses coil spring. Publication of USA1 is in June 2010 before effective date of claims 1-3. Therefore prior art for novelty and inventive step against all 3 claims. - Claim 1 is not novel, because US-A1 discloses a specific spring mechanism (coil spring) and claim 1 claims a generic spring mechanism, and specific anticipates generic. - Claim 2 is not novel, because US-A1 discloses a garlic press with a coil spring. - Claim 3 is novel because USA1 does not disclose a leaf spring. However, probably it lacks inventive step because it would obvions for skilled man to replace coil spring with leaf spring. In summary: Claims 1 and 2 infringed but not novel Claim 3 not infringed and lacks inventive step Claim 4 valid but not infringed Actions: Do prior art search, see if we can find further relevant prior art. Too late to file our own opposition deadline 9 months from grant, i.e. June However, could bring priority / validity issues to attention of launch. Whilst opposition period has expired, they can still raise new evidence that is prima facie material to patentability. Lack of novelty / inventive step is a ground of revocation for EP(GB), so could start revocation proceeding. Check corresponding FR provisions. However, given launch are presumably intending to launch something similar, better strategy is to approach Allium and ask for a very favourable licence / an in not to take action against us. This would allow us to make / offer / dispose of / keep the invention but not launch. If this fails, then approach launch as above, and if opposition fails start revocation proceedings MARKS AWARDED: 20/25 7

8 Question 9 PCT application is not a granted right, and therefore GSA cannot take action against ILC immediately with this right. - check for any other applications / patents in name of GSA - Do prior art search, see if we can call into question validity of PCT application If granted in UK eventually, GSA would be entitled to damages / final injunction / declaration patent valid + infringed / order for delivery up. Doesn t matter that ILC haven t made money if they have cause damage to GSA by infringing. Damages for GSA only available from publication, so any acts before 17 September 2015 will not result in damages being awarded. Furthermore, client was not aware of application, and arguable it would not have been reasonable for him to know considering the application covers machine / process and he is buying coffee so no damages as innocent infringer i.e. until letter from GSA. Note must infringe claims as granted and as published. Letter merely enclosed application, so no threat. Unclear as yet where PCT will enter regional / national phase. Set up caveat to watch for GB national phase entry. No FR national phase of PCT, so GSA must file PCT(EP) to protect FR. Watch EPO register. Assuming published at 18 months, EP/GB regional / national phase entry is due at 31 months, i.e. by 17 October As PCT published in French, no provisional protection in UK from publication unless they have filed translation into English at UKIPO, or supplied ILC with translation. They merely sent FR application untranslated, so no provisional protection in UK. Check UKIPO register for translation. Provisional protection in France as PCT published in France. Infringement PCT abstract mentions machine and process. Obtain translation ASAP to see claims. Assuming claims to machine and process. Not manufacturing, offering, disposing of, keeping, using or importing any machines only buying coffee. Therefore, not direct infringers of any machine claim. Not supplying any element of a machine, so not indirect infringer of machine claim. 8

9 Not using or offering any process of grinding coffee, so not infringing in this regard. May well be dealing with direct product of patented process - offering, disposing, keeping and importing coffee. Is coffee a direct product? Seems likely as grinding process imparts characteristic flavour, so changes of product. No evidence of any further process occurring to the coffee, so is likely a direct product. Is coffee extract a direct product? - materially changed by liquidising, and characteristic flavour is said to result from size of grounds, which are no longer distinguishable. Therefore not a direct product. Ice cream further alters coffee, so even less likely to be a direct product. Big question mark over whether we in any case are not an unauthorised party. We are buying from GAP a subsidiary of GSA, so we probably have an implicit licence from them to distribute. However, need to investigate GAP / GSA relationship and discuss. Is there anything patentable in our process of creating coffee extract / ice cream? Recommend filing application, even if it looks invalid it could be a useful bargaining chip. In Summary: GSA have no granted rights yet, and so cannot take action yet. If they do, ILC s actions before publication do not result in damages but the ones afterwards may do. Importing, selling and keeping the coffee are infringing acts as coffee is direct product of process. Making coffee extract and making ice-cream and subsequently keeping / selling is not because they are not direct products of the process. Suggest obtaining licence from ILC for getting coffee for ice-cream purposes. Could cross-licence for ice-cream coffee process if we file application. Importing into FR and keeping likely to be infringement. Hold off signing lease, at least until we know where PCT is activated. Could establish base for making ice-cream somewhere not protected and then import ice-cream would not infringe. MARKS AWARDED: 14/25 9