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25 August, 2015

The United Kingdom Intellectual Property Office (UKIPO) has made its first move to use its new powers to revoke UK patents following a “non-binding” opinion.

Since 2005 the United Kingdom Intellectual Property Office (UKIPO) has offered a Patent Opinion Service allowing anyone to request a non-binding assessment of the validity of a UK Patent. The service met with some success. However, one of its perceived shortcomings was that, since the assessment was non-binding, the patent owner could simply ignore the conclusions – even where the assessment was that the patent was clearly invalid. This left third parties with potentially the need to subsequently launch separate revocation proceedings at UKIPO or in the courts.

In 2014 the rules were changed to give the power to UKIPO itself to start a revocation process where a Patent Opinion has found the invention not to be new or inventive. UKIPO has recently published details of their first exercise of their new powers in the case of Patent Opinion 25/14.

Section 73 of the Patents Act 1977 contains the statutory provisions for revocation of a patent by UKIPO on its own initiative. Section 73(1A) was introduced in October 2014 to allow UKIPO to revoke a patent after issuing a Patent Opinion indicating that the patent lacks novelty or inventive step.

Revocation of a patent under this provision may only occur once the patent owner has been provided with an opportunity to apply for a review of the Patent Opinion and, if the review is requested, once a decision on the review has been made. The patent owner is also provided with an opportunity to make further observations and to amend the patent prior to revocation of the patent taking effect under Section 73(1A).

Recent Developments
Patent Opinion 25/14 was issued in February 2015 by UKIPO with a finding that the patent in question, GB2497956, lacked novelty and inventive step. The patent owner did not request a review of the Patent Opinion. On 7 August 2015 UKIPO wrote to the patent owner warning that it intended to start revocation proceedings under Section 73(1A) and set a two month term for further observations.

It will be of interest to see what further observations, if any, of the patent owner can avoid revocation of the patent under Section 73(1A).

It is also noteworthy that this was not the first opportunity that UKIPO had to exercise their new powers. For example, Patent Opinion 23/14 issued in January 2015 also found a lack novelty of the invention over a prior art utility model. However, in that case the opinion was less clear cut, with UKIPO noting that,

“Although the information provided by the utility model is not very comprehensive it does in my opinion provide enough information to come to the view that on the balance of probabilities the massage sheets disposed on the pedals do provide electrical stimulation of the feet as required in claim 1.”

Consequently, in the case of Patent Opinion 23/14 UKIPO declined to commence revocation proceedings, which appears in line with UKIPO’s published guidance that revocation,

“should only be initiated if the DD [a Deputy Director of UKIPO] considers that the patent is clearly invalid due to lack of novelty or inventive step. The opinion should be considered but the DD is in no way bound by it”.

The case of Patent Opinion 25/14 highlights the new powers of UKIPO to use a “non-binding” Patent Opinion to potentially start revocation proceedings of a UK patent. Currently, it appears that the power will only be used where the patent is “clearly” invalid.

Owners of UK patents should be aware of the potential for a third party to request an opinion on the validity of their patent. If an opinion is requested, patent owners need to engage with the process and look to provide timely and comprehensive observations if they wish to avoid a negative Patent Opinion being issued.

Patent owners will also need to consider whether to request a formal review of a negative Patent Opinion immediately after issuance. This is particularly the case since it is currently unclear what further observations will persuade UKIPO not to continue with revocation of a patent once proceedings under Section 73(1A) are contemplated.

For third parties, UKIPO’s new powers provide another incentive to make use of the Patent Opinion Service. The service allows one to obtain a low cost, non-binding opinion on the validity of a UK patent which may be of use for negotiations with a patent owner. In addition, the powers under Section 73(1A) potentially open up a route to achieve revocation of a patent without a third party having to fund potentially costly revocation proceedings in UKIPO or the courts themselves.