PA 72 – Power to revoke patents on application

Question 1

What does S72 concern

Answer 1

application for revocation

Question 2

What are the grounds for revocation

Answer 2

S72(1)
the court or Comptroller may revoke a patent upon application by ANY person, on the following grounds ONLY
a) lack of patentability (S1-4A)
b) lack of entitlement to grant of the patent (S37)
c) a insufficiently enabling description (S14(3), 125A(4),
d) added matter (S76(2))
e) an amendment extending protection after granter (S76(3)

Question 3

when will revocation on the ground of a lack of entitlement be allowed

Answer 3

S72(2)
a) ONLY by reference through s37 (by a person with PROPRIETARY interest), OR by a declaration to be the entitled party referred by the courts
b) the reference under S37 or the declaration must be made BY THE SECOND ANNIVERSARY of the date of grant, UNLESS it can be shown that the current proprietor KNEW they were not entitled to grant

Question 4

How much of a patent will be revoked if an application for revocation is successful

Answer 4

S72(4)
Revocation may be whole or unconditional, or where the patent is partially valid, revocation will occur unless suitable amendments are provided under S75 within the specified period

Question 5

How can a proprietor limit their partially valid patent in revocation proceedings

Answer 5

S72(4A)
under S75 or for EP(GB) patents, can also use central limitation at the EPO under Art 105A EPC

Question 6

Do revocation proceedings affect the right to challenge validity during parallel infringement proceedings

Answer 6

S72(5)
no, proceedings under S72 do not affect this right

Question 7

Can a person make a repeat application for revocation

Answer 7

S72(6)
If the Comptroller refuses an application for revocation, one cannot make repeat applications to the Comptroller except by leave of the court or by way of an appeal, or in a separate proceedings per (5) (i.e. parallel with infringement proceedings)

Question 8

When can you go to the court instead of the Comptroller on application for revocation

Answer 8

R72(7)
One cannot go to court instead if the Comptroller has yet to make a decision, unless
a) the proprietor agrees
b) the Comptroller certifies that the court is preferable

Question 9

Who can apply for revocation

Answer 9

Anyone, except on the ground on lack of entitlement, which can only be brought by a potentially entitled party

Question 10

When is revocation effective from

Answer 10

Revocation is retrospective to the date of grant (ab initio / ex tunc)

Question 11

What may a licensee do if a patent is revoked

Answer 11

sue for a refund of licence fee

Question 12

What is the big difference between EPO opposition grounds, and grounds for revocation

Answer 12

entitlement is not a ground for opposition at the EPO. EPO grounds (Art100) are
Novelty/inventive step
sufficiency
added matter

Question 13

Why should you amend a patent under s27 rather than as a consequence of a revocation action

Answer 13

partial validity can affect damages, so if you think a claim might be partially invalid limiting early may be advantageous (especially as if you don’t this could be considered as bad faith)