11) Challenging Patents and Revocation Flashcards
Section 21
Observations by Third Parties
(1) After publication but before grant, any person may make reasoned observations in writing to the Comptroller regarding the patentability of the invention.
(2) A person does not become party to any proceedings solely because he makes such an observation.
Rule 33 - s21
Observations by Third Parties
The Comptroller must send a copy of any observation he receives to the applicant, so long as it is not disparaging or expected to encourage immoral behaviour. He must also send the Examiner a copy, unless the Examiner has already issued a notification of intention to grant under s18(4).
Section 26
Patent not to be Impugned for Lack of Unity
No person may in any proceeding object to a patent or to an proposed amendment of a patent on the grounds of lack of unity.
Section 72
Power to Revoke Patents on Application
(1) The court or Comptroller may revoke a patent upon application by any person (including the proprietor), on the following grounds only:
(a) [patentability] the invention is not patentable;
(b) [entitlement] the patent was granted to someone who was not entitled;
(c) [sufficiency] the specification does not disclose the invention clearly enough and completely enough for a skilled person to work the invention;
(d) [added matter] the matter disclosed in the specification extends beyond the application as filed or the parent application as filed (for new applications following disputes);
(e) the patent has been amended after grant to extend the scope of protection.
(2) An application for revocation on grounds of lack of entitlement
(a) may only be made by a person either declared by the court to be an entitled person or found to be an entitled person by the court or Comptroller under s37; and
(b) may not be made if the action for a declaration/reference under s37 was made after the second anniversary of the grant date, unless it is shown that any person registered as a proprietor knew at the time of grant or assignment that he was not entitled.
(4) An order under this section may be for the unconditional revocation of the patent or, where the patent is partially valid, an order that the patent should be revoked unless, within a specified time, the specification is amended to the satisfaction of the court or Comptroller.
(4A) Amendment can be under s75 or by EPO central limitation for EP(GB) patents.
(5) A decision of the Comptroller under this section does not affect the right to also challenge validity during any infringement proceedings.
(6) If the Comptroller refuses someone’s application for revocation, that person cannot then make another application for revocation (for the same patent) to the court without the court’s permission (appeals or challenging validity during infringement proceedings do not count).
(7) One cannot go to the court instead if the Comptroller has yet to make a decision, unless
(a) the proprietor agrees; or
(b) the Comptroller certifies in writing that the question of revocation would be more properly determined by the court.
Section 73
Comptroller’s Power to Revoke Patents on his own Initiative
(1) The Comptroller can revoke a granted patent if he considers its invention to lack novelty under s2(3), but he must give the proprietor an opportunity to make observations or amendments.
(1A, 1B, 1C) Where the Comptroller issues an opinion under s74A that an invention is not novel or inventive , he may revoke the patent, but only after the period in which the proprietor can request a review of the opinion under s74B or after the review or any subsequent appeal is complete, and not without giving the proprietor an opportunity to make observations or amendments.
(2) Where a UK patent and a corresponding EP(GB) patent are both granted, the UK patent will be revoked unless the proprietor can show them to have different claimed matter or amends one of them to achieve this.
(3) The Comptroller shall not take action under subsection (2) until the end of the EPO opposition period or, if later, the date on which any EP opposition proceedings are finished, and he shall not then take action if the EP patent is revoked in opposition or if it is amended such that it is distinguished from the GB counterpart.
(4) The Comptroller shall also not take action under subsection (2) if the EP(GB) is surrendered before the date of the grant of the GB; or, if the proceedings to surrender the EP have begun before the GB grant date, he shall wait until those proceedings are concluded and shall not take any action if the surrender is accepted.
Section 74
Proceedings in which Validity of Patent may be put in Issue
(1) The validity of a patent may be put at issue
(a) by way of defence in proceedings for infringement (s61/s69);
(b) in proceedings in respect of an actionable threat (s70A);
(c) in proceedings in which a declaration of non-infringement is sought (s71);
(d) in revocation proceedings before the court or Comptroller (s72);
(e) in proceedings under s58.
(2) Validity cannot be contested in any other proceedings, and no proceedings can be brought seeking only a declaration of invalidity.
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Section 74A
Opinions on Matters Prescribed in the Rules
(1) Anyone may request [form and fee] that the Comptroller issue an opinion, with respect to a granted patent, on:
(a) whether a particular act would be an infringement;
(b) whether, or to what extent, the invention is not patentable;
(c) sufficiency;
(d) added matter;
(e) whether a claim has been broadened via amendment;
(f) whether a (medicine) supplementary protection certificate is valid;
(g) whether a (plant) supplementary protection certificate is valid.
(2) The above is allowed even for expired or surrendered patents.
(3) An opinion won’t be given
(a) in circumstances prescribed by the rules: if the Comptroller (i) considers the request to be frivolous or vexatious, (b) considers the issue in question to have been sufficiently considered in other proceedings, or (c) receives notice in writing from the requestor that the request is withdrawn;
(b) if the Comptroller for any reason considers it to be inappropriate in the circumstances.
(4) Opinions under this section are not binding.
(5) An Examiner shall prepare an opinion under this section.
(6) The requester of an opinion has the right to be heard before the request is refused by the comptroller. No other person has the right to be heard on the question whether the request should be granted. Similarly, no person other than the requester has the right to appeal to the courts against that decision.
Rules 92-97 - s74A
Procedure for Opinions
The Comptroller has to send a copy of the request to the patent holder, any registered licensees, any other interested party identified as part of the request, and any people who appear likely to him to have an interest in the opinion. The Comptroller must also advertise the request.
However, if the request is withdrawn before the various parties are notified, then only the patent holder is notified.
Within four weeks of the request being advertised, anyone can file observations. Copies of these must be sent to the patent holder and requested (where applicable) within the four weeks. During a further period of two weeks after the four weeks, those who have received observations may make further observations confined strictly to matters in reply.
Once all this is done, the Examiner prepares the opinion. Once this is done, the Comptroller sends the opinion to all the interested parties.
Section 74B
Reviews of Opinions Under s74A
(1) The proprietor or an exclusive licensee may apply for an opinion to be reviewed.
Rules 98-100 - s74B
Procedure for Reviews of Opinions
The patent holder may, before the end of three months beginning immediately after the date the opinion was issued, apply [on the form] for a review of the opinion. However, such proceedings may not be brought if the issue in question has already been decided in other relevant proceedings.
The application may be made on the following grounds only:
(a) that the opinion wrongly concluded that the patent was invalid or partially invalid; or
(b) that, due to its interpretation of the patent, the opinion wrongly concluded that a particular act did not/would not infringe.
The Comptroller must advertise the application and send copies of it to the original requestor (if they’re different to the party applying for the review) and anyone who previously filed observations.
Within the later of four weeks of being advertised or two months of the opinion being issued, anyone can file a statement in support of the application or a counter-statement contesting it, and on doing so becomes a party to the proceedings for the review. The Comptroller sends all the observations to all of the parties.
The Comptroller shall then set aside the opinion whole or in part, or uphold the opinion. A new opinion is not issued.
Section 71
Declaration of Non-Infringement
(1) Such a declaration can be made by the court or Comptroller with respect to an act or proposed act, so long as
(a) the person seeking the declaration has already written to the proprietor requesting such a declaration and providing full particulars of the act in question; and
(b) the proprietor has refused or failed to give any acknowledgement.
(2) A declaration made by the Comptroller shall have the same effect as a declaration made by the court, subject to s72(5) [i.e., if the Comptroller finds the patent to be invalid, this does not affect anyone’s right to argue for validity/invalidity in infringement proceedings].
Section 110
Unauthorised Claim of Patent Rights
(1) A person falsely represents that a product he sells is patented is liable for a fine.
(2) Anyone who sells a product having the word “patent” or “patented” or similar applied to it shall be taken to represent that the product is patented.
(3) Subsection (1) does not apply during a period after the patent has expired or been revoked which is reasonably sufficient for the person to stop making the representation.
(4) It is a defence for the person to prove that he used due diligence to prevent any false representation.
[Similar provisions for pending applications is provided in s111.]
