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Sunday, 11 October 2009

Accidental GB designation causes problems

When a European application is granted designating the UK, the resulting EP(UK) patent has, according to section 77 of the UK Patents Act, the same effect as a patent that was granted by the UK Office. One problem, however, is when the priority application was filed in the UK and also granted (rather than abandoned in favour of the EP application, as is often the case). Because two patents for the same invention cannot be allowed, the applicant (or, more usually, his agent) has to make a decision whether to go with the UK granted patent or to allow the EP(UK) version to override it. If no decision is made, only the EP(UK) patent can survive if both claim the same invention, according to section 73(2). If, once the EP application has been granted with the GB designation intact, the applicant wants to keep his original UK patent, it is by then too late, as there is no way to remove the UK patent from causing this conflict (at least not one that would leave the EP version unscathed).

So what happens if, hypothetically, an applicant fails to withdraw the GB designation from his EP application and allows both his original UK application and the EP(UK) version claiming the same invention to go ahead, but then deliberately does not pay renewal fees for the EP(UK) one? Restoration under section 28 would not be possible for the EP(UK) patent, because it could not be said that the failure to pay renewal fees was unintentional, but the fact that the EP(UK) existed, even if this was only for a short time, would mean that the UK patent would have to be revoked. Is there any way out of this pickle?

The above situation is, more or less, exactly what happened in the case of Orkli (UK) Limited, a decision recently reported by the UK-IPO (as BL O/302/09). Orkli's agent made an application to restore their EP(UK) patent, which had lapsed through non-payment of a renewal fee. Orkli's earlier GB application, from which the EP application claimed priority, had been granted while the EP application was pending. The applicant's agent had, without informing the applicant, decided to withdraw the GB designation to avoid double patenting. This decision was not, however, acted on by the EPO, possibly as a result of a letter withdrawing the GB designation not being received at the EPO (it certainly does not show up on the European patent register for EP1215473) . The EP application then proceeded to grant without the agent or applicant noticing that the GB designation was still present. Renewal fees were then not paid on the resulting EP(UK) patent. The GB patent was under consideration for revocation under section 73(2) by the time the duplicate EP patent had lapsed. The agent then applied for restoration of the EP patent.

The hearing officer considered that the evidence clearly showed that the agent's intention had been to not pay the renewal fee on the EP patent. The proprietor, however, who had apparently not been made aware of the agent's intention to withdraw the GB designation, did intend to pay the renewal fee, even though this intention may have been through lack of patent knowledge. On that evidence, the hearing officer was satisfied that the proprietor's failure to pay the renewal fee was unintentional, and the application for restoration was allowed.

The IPKat thinks that this decision has come to the correct conclusion, because otherwise the applicant would have been left with no UK patent through no fault of their own as a result of the rather strange way the law works in these situations. He cannot help thinking that there should really be a better way to avoid this kind of situation (apart from the obvious one, which is to keep a proper eye on which countries are designated). Why is it not possible for a patentee to choose to have their own UK patent revoked, as it is for their European patent as a whole (via Article 105a EPC)?


Ara said...

under the circumstances an alert from the EPO informing the applicant of the priority claim(s)and designation(s) (accidentals or otherwise) in common should help the applicant in making up their minds / realise their errors.

EP applications do contain info on the priority claims and designations.

Peter Smith said...

Isn't surrendering a UK patent under s.29 the equivalent procedure of revoking a European patent under Art. 105a? But, as neither procedure has retrosepctive effect, it would not solve the problem that the UK and EP(UK) patents had once co-existed.

Anonymous said...

@Peter Smith

Revocation under A105a *does* have retroactive effect (see A.68 EPC).

Surrender under s.29 UKPA does not.

Anonymous said...

@Anon 11:50am (and generally in response to the original post)

A.68 EPC says that the revocation applies for the effects of A.64 and 67 EPC, i.e. the same rights as a granted/published national patent/application. So when your patent is revoked, you can't get e.g. damages for infringements prior to the revocation.

But, EP patents grant under A.97 EPC, and s.73(2) UKPA refers to the grant of an EP patent. A revoked patent may be considered to have had no effect from grant, but personally I think you'd have trouble arguing that it was never granted at all - it was, it was just later revoked. So I reckon s.73(2) UKPA would still apply, and so even revoking your entire EP patent wouldn't save your GB patent. (So in particular there would be no advantage to being able to revoke only your EP(UK) patent, which I presume is what is being suggested in the final sentence of the original post.)

I'm happy to be told that case law says I'm wrong, though!

Anonymous said...

UKIPO will not revoke a GB patent under s73(2) until the opposition period is over or until any oppo procs are finally done with (s.73(3) UKPA) - if as a result of an opposition the EP is revoked (or limited so as to be to a different invention) no revocation proceedings under s73(2) are then taken.

I would assume the same would apply if you revoked or limited under A105a.

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