The United Kingdom Intellectual Property Office (UKIPO) has for the first time revoked a UK patent following issuance of an unfavourable validity opinion requested by a third party.
Since 2005, the UKIPO has offered an opinion service allowing interested parties 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 potentially left third parties with the need to subsequently launch separate revocation proceedings at the UKIPO or in the courts.
As of October 2014, the rules were amended to give the UKIPO the power to revoke a patent under Section 73(1A) following a negative opinion on novelty or inventive step. The UKIPO indicated at the time that such revocation would only be done in “clear-cut” cases, although it did not set out what this would mean in practice.
This is the first case where the issuance of an unfavourable UKIPO opinion has led to the revocation of a patent. This case differs from previous cases in that the patent proprietor did nothing to contest the negative opinion.
In particular, the UKIPO Examiner found, in a validity opinion issued in June 2015, that the claims of the patent were either lacking in novelty or inventive step. The patent proprietor then failed to request a review of the opinion within the prescribed three-month period. Shortly after this, the UKIPO wrote to the proprietor’s representative inviting them to file amendments. Again, the proprietor took no action. The UKIPO then sent another communication stating that they were considering revoking the patent. Finally, a decision issued in February 2016 revoking the patent.
It therefore appears from this decision that a “clear-cut” case may, at least in part, refer to one in which no attempt is made by the proprietor to defend the patent.
Furthermore, it is notable that the entire process, from the third party’s request for a validity opinion to the revocation of the patent, took less than a year. Accordingly, it is clear that the UKIPO opinion service can provide for rapid revocation of a UK patent provided the initial negative opinion is not contested by the proprietor. Since the Official fee for requesting an opinion is just £200, the UKIPO opinion service is an attractive option where rapid, cost-effective revocation of a competitor’s patent is desired.
If you would like advice relating to this, please contact Daniel Weston or your usual Boult Wade Tennant advisor.