The Government has proposed an Intellectual Property (IP) Bill to “enable businesses to further protect their intellectual property”. The IP Bill is currently before the House of Lords and it is expected to enter into force some time in 2014 or 2015.
In this first of three Bulletins, we consider the key proposals of the IP Bill in relation to UK patent law.
The IP Bill will enable the Secretary of State to bring the agreement on the Unified Patent Court into effect. This marks the start of the introduction of the Unitary European Patent into UK law.
At present a person found to be infringing a patent will be considered to be an “innocent infringer” during infringement proceedings if they can show that they were unaware of and had no reasonable ground for supposing that the patent he has infringed exists. No damages or account of profits may be awarded against an innocent infringer. A product may be marked with a patent number to help to establish that an infringer would be considered to be aware that a patent exists.
The IP Bill introduces the possibility of using “virtual patent marking”. Instead of marking their products with a patent number, proprietors will be able to mark their products with a link to a web page that provides details of the patents and/or patent applications associated with the product. This significantly reduces the burden on proprietors as they will no longer need to update the patent numbers on their products should any patents lapse and can instead update the web page. Furthermore, a single link may be provided for both UK and US patents, since the America Invents Act also recently introduced the concept of virtual patent marking for US patents.
Ability of UKIPO to revoke a patent
It is possible for anyone to ask the UKIPO for an opinion on the validity or infringement of a UK patent. Hitherto, such opinions have been non-binding and the UKIPO was not able to take subsequent action if the patent was found to be invalid. The IP Bill will enable the UKIPO to revoke a patent on its own initiative if a validity opinion finds it lacks novelty or an inventive step. On the one hand, this will make it extremely unlikely that patent proprietors will ask for a validity opinion. On the other hand, it will provide a low–cost option for third parties to invalidate a competitor’s patent.
Sharing of information on unpublished patent applications
Prior to the publication of a patent application, the UKIPO can currently only share information (such as search reports) if the applicant positively allows it to do so. The IP Bill enables the UKIPO to send such information upon its own volition to other national or regional patent offices with which it has agreements in place to do so. The intention is to reduce the backlog in the examination of patent applications at various patent offices around the world.
A renewal fee may be paid (with an additional fee) in a six month grace period after it is due. If the renewal fee is not paid within the grace period, the patent may be reinstated within thirteen months following the end of the grace period if it can be shown that the renewal fee was not paid unintentionally. Currently, third party rights accrue during the grace period, such that when a person does an act that would infringe a patent or makes serious and effective preparations to do such an act, they can continue to do that act even if the patent is later reinstated. Under the new provisions of the IP Bill, third party rights will not accrue until after the grace period has expired. Therefore, a disadvantage of paying the renewal fees in the grace period will be removed.