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CS Professional · Intellectual Property Rights - Law and Practice · Patent Documentation, Examination and Infringement

Dhanush Chemicals holds a patent whose specification was amended by way of disclaimer after publication. It sues Eshan Ltd for use of the invention made before the date of the decision allowing the amendment. Eshan Ltd claims no damages are payable. Which statement is correct?

Under section 111(3), no damages or account of profits are granted for use before the decision allowing the amendment, unless the court is satisfied that the original specification was framed in good faith with reasonable skill and knowledge.

  1. ADamages are barred in every case because the amendment was by disclaimer
  2. BDamages are barred unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledgeCorrect
  3. CDamages are allowed in every case, since an amendment relates back to the grant date
  4. DDamages are barred only for use made after the amendment

Explanation

Section 111(3) bars damages or account of profits for use before the decision allowing a post-publication amendment by disclaimer, correction or explanation, unless the court is satisfied the original specification was framed in good faith and with reasonable skill and knowledge. Option A omits that exception, and option D reverses the time period.

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