FD1 - Revocation and validity Flashcards
What is the effect of revocation?
Patent is removed in its entirety - deemed to have never existed (ex tunc/ab initio)
What are the grounds of revocation?
Lack of patentability
Lack of entitlement (must be brought within 2 years of grant, otherwise only by a person with a proprietary interest)
Insufficiency
Post-grant broadening
Added matter
Who can bring a revocation action?
Anyone (form and fee)
Can you make more than one application for revocation?
No, unless by leave of the court or by appeal
Can the comptroller revoke of their own motion?
Yes - where a prior art document denies novelty or where they issue an opinion that a patent is not novel or inventive after the period for requesting review has lapsed
When will a UK patent be revoked if an equivalent EP(GB) grants?
End of the opposition period (consider amending one or the other if you want to keep both)
When can validity be brought to issue?
Infringement proceedings (as a defence)
Actionable threat proceedings (usually by an aggrieved party if the threatener relies on their right to threaten based on a valid patent)
Declaration of non-infringement
Revocation actions for lack of entitlement
Crown use
When does estoppel occur?
When a party has previously challenged validity (wholly or otherwise)
When an agreement not to challenge exists
When does a stay of proceedings occur?
When there is a parallel EP opposition action
(although a significant argument against the stay is that the opposition process is longer and would prevent swift access to possible revocation in the UK)
Who can request a validity/infringement opinion from the comptroller?
Anyone (form and fee)
File a statement outlining the question on which the opinion is sought, include facts, names/addresses of persons having an interest in the question and the particulars of any relevant proceedings
Who receives notification of a request for an opinion from the comptroller?
Patentee and any registered licensees (and anyone named by the requestor and those with caveats)
What is the deadline to request review of an opinion?
Three months from issue - form and fee
What can an opinion be requested for?
Infringement
Novelty
Inventive step
Sufficiency
Added matter
Whether a claim has been broadened
Whether an SPC is invalid
Can opinions be requested on expired/surrendered patents?
Yes
Is the opinion of the comptroller binding?
No
