Revocation, Validity and Non-Infringement

Question 1

What is the effect of successful revocation?

Answer 1

The patent will be treated as if it never existed (i.e. it is retroactive) - ex tunc

Question 2

Who can apply for revocation of a patent and on what grounds?

Answer 2

Any person (including the proprietor) can apply for revocation to the court or Comptroller, on the following grounds only:

• lack of patentability (s1-4A)
• lack of entitlement to grant of the patent (s37)
• an insufficiently enabling description (s14(3), 125A(4))
• added matter (s76(2)), and
• an amendment extending protection after grant (s76(3))

NB clarity (s14(5)) and non-unity (s26) are not grounds for revocation.

UK courts treat lack of support as a matter of sufficiency.

Question 3

Who can bring revocation proceedings for lack of entitlement and when?

Answer 3

• Must be made through s37 by a person with a proprietory interest
• Must be made up to two years from the date of grant, unless it can be shown that the current proprietor knew they were not entitled at grant

Question 4

Will a patent be revoked if it is found to be partially valid?

Answer 4

Revocation may be whole and unconditional, or where the patent is partially valid, revocation will occur unless suitable amendments are made to remove the invalid parts within a specified period.

Question 5

Scenario:

Need to amend a partially valid EP(GB) patent after revocation proceedings

Answer 5

Amendments to fix partially valid applications can be made via the EPO central limitation procedure of A105A EPC.

Question 6

Scenario:

Your application for revocation proceedings is rejected by the Comptroller.

Answer 6

If the Comptroller refuses an application for revocation, you cannot make repeat applications to the Comptroller except by leave of the court or by way of appeal, or in seperate proceedings (e.g. infringement proceedings).

Question 7

Scenario:

The applicant drops out after starting revocation proceedings

Answer 7

The Comptroller can continue revocation proceedings if it is considered to be in the public interest

Question 8

Sceario:

A patent that was previously licenced is revoked

Answer 8

Revocation is fully retroactive.

As a result, licensees can sue for a refund of the licence fees they have paid.

NB it also means a Comptroller is unlikely to accept a surrender under s29 (which isn’t retroactive) during revocation proceedings.

Question 9

Can the Comptroller revoke a patent as a consequence of an opinion under s74A?

Answer 9

Yes, if as a result of an opinion the Comptroller considers the patent to lack novelty or inventive step, he may revoke the patent after the period for requesting a review (s74B) or any subsequent appeal has occured.

Proprietor can object and amend if possible.

Question 10

Scenario:

An EP(GB) belonging to the same applicant and directed to the same subject matter as a GB is about to grant.

What if you want to keep the GB patent?

Answer 10

If an EP(GB) notice of grant is given, the corresponding GB patent will be revoked unless the proprietor can show them to have different claimed matter or amend one of the patents to achieve this.

Revocation will not occur until after the EP opposition period, or after opposition proceedings are finished (if an EP(GB) is revoked during opposition it is ab initio).

However, if an application to surrender a previously granted EP(GB) patent under s29(1) is made before the date of grant of the GB application under s25(1), then the Comptroller will not revoke the GB patent.

NB the Comptroller does not have the right to refuse grant of the GB, but it will be revoked after grant.

Question 11

In which proceedings can validity by put at issue?

Answer 11

Only:

• Infringement (as a defence) - s61/69
• Actionable Threat (used by an aggrieved party) - s70A
• Declaration of Non-Infringement - s71
  
  • Comptroller may consider validity, but cannot revoke - just reports to the person requesting declaration
• Revocation - s72
• (disputed Crown use - s58)

Question 12

When can estoppel against validity proceedings arise?

Answer 12

• Where the same party has unsuccessfully challenged validity before, either in whole or in considering certain issues.
• If an agreement not to challenge exists (other than a licence agreement) - but consider abuse of dominance.

Question 13

Who can request an opinion under s74A, and what can they ask about?

validity

Answer 13

Anyone can request an opinion on:

• whether a patent is novel/inventive (if clearly found to lack novelty/inventive step, the Comptroller can revoke)
• whether the patent provides a sufficiently enabling disclosure
• whether the patent adds matter
• whether a claim in a granted patent has been broadened
• whether a particular act is or would be an infringement
• whether an SPC certifice is valid

Question 14

Can opinions be requested on expired or surrendered patent?

Answer 14

Yes

Question 15

Are the courts or the Comptroller bound by an opinion?

under s74 (validity)

Answer 15

Nope - opinions are completely non-binding.

Question 16

Who can request a hearing and/or appeal an opinion?

validity

Answer 16

Only the person who requested the opinion is entitled to a hearing or an appeal.

Question 17

What is the procedure for opinions?

validity

Answer 17

1. Request FORM + FEE
2. Provide a statement outlining the question - include facts, names and addresses of any other person having an interest, and particulars of any proceedings in relation to the patent. Frivolous questions can be refused.
3. In addition to identified names, the patentee and any registered licensees are sent copies of the form and statement
4. Requests are noted in the register
5. Anyone may file TPOs within 4 weeks of advertisement in the register.
6. Copies of TPOs are sent to patentee and requester within the four weeks, and recipients can make relevant observations within a further 2 weeks
7. Patentee, requester and observers get a copy of the opinion.
8. 3 month window for a patentee (or licensee) to request a review of the opinion
9. In clear cut cases, if the patent lacks novelty/inventive step, the Comptroller will revoke.

Question 18

Who can request a review of an opinion and when?

validity

Answer 18

Patentees or exclusive licensees can request a review of an opinion within 3 months of issue of the opinion.

The review will not be allowed if other proceedings have decided the issue under review.

One can only appeal a review for those parts of an opinion not set aside by it.

Question 19

What are the grounds for requesting review of an opinion?

validity

Answer 19

Use PF2 and two copies of the grounds.

Valid grounds are:

• An opinion wrongly concludes that a patent is wholly or partially invalid, or
• An opinion concludes non-infringement based on its construction of the specification

Question 20

Can observations be filed on a review of an opinion?

validity

Answer 20

Yes - advertising and procedure is similar to s74A, but the relevant period for both observer and requester is the later of four weeks from advertisement of the review or two months from issue of opinion.

Question 21

Can patents be amended during validity proceedings?

Answer 21

Yes, use s75(1) - the court/Comptroller may permit amendment subject to s76, advertisement in the OJ and any changes in costs.

Question 22

Can amendments under s75 be opposed?

validity

Answer 22

Yes, any amendment during validity proceedings can by opposed and this is conveyed to the proprietor and Comptroller.

Question 23

What is the effect of amendment under s75?

validity

Answer 23

The amendment is retroactive to grant.