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

How do revocation proceedings and infringements proceedings affect each other?

Answer 6

Revocation proceedings don’t affect the right to challenge validity during infringement proceedings - typically infringement and revocation proceedings run in parallel and validity can be challenged in both.

Question 7

Scenario:

Your application for revocation proceedings is rejected by the Comptroller.

Answer 7

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 8

If an application for revocation has already been made to the Comptroller, under what circumstances can you go to the court instead?

Answer 8

Only if:

• the proprietor agrees
• the Comptroller certifies that the court is preferable

Question 9

Scenario:

The applicant drops out after starting revocation proceedings

Answer 9

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

Question 10

Sceario:

A patent that was previously licenced is revoked

Answer 10

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 11

What power does the Comptroller have to revoke a patent if he deems it to lack novelty after grant?

Answer 11

If a s2(3) prior art document denies novelty after grant, the Comptroller can revoke the patent.

The proprietor can object and also amend if possible.

Question 12

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

Answer 12

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 13

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 13

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 14

In which proceedings can validity by put at issue?

Answer 14

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 15

When can estoppel against validity proceedings arise?

Answer 15

• 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 16

When might validity proceedings be stayed?

Answer 16

If there is a parallel opposition proceedings at the EPO can apply to stay proceedings - but not if opposition proceedings would take too long, as this would prevent quick access to legal resolution.

Question 17

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

Answer 17

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 18

Can opinions be requested on expired or surrendered patent?

Answer 18

Yes

Question 19

Are the courts or the Comptroller bound by an opinion?

Answer 19

Nope - opinions are completely non-binding.

Question 20

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

Answer 20

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

Question 21

What is the procedure for opinions?

Answer 21

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 22

Who can request a review of an opinion and when?

Answer 22

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 23

What are the grounds for requesting review of an opinion?

Answer 23

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 24

Can observations be filed on a review of an opinion?

Answer 24

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 25

Can patents be amended during validity proceedings?

Answer 25

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

Question 26

Can amendments under s75 be opposed?

Answer 26

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

Question 27

What is the effect of amendment under s75?

Answer 27

The amendment is retroactive to grant.