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Tuesday, 30 April 2013

Spontaneous patent revocations? It's a matter of Opinion

An alternative system, "red-carding" patents
and suspending their validity for several months
at a time, did not find favour with industry
It seems like only yesterday that the UK's Intellectual Property Office (IPO) was commencing a consultation exercise as to whether its excellent, under-used and probably far too cheap Patent Opinion service should be extended.  But it couldn't have been yesterday [Katnote: it was last June; yesterday's consultation, metaphorically speaking, was on extending the Appointed Person dispute resolution facility from trade marks to patents] because today sees the publication of a fresh document, "Consultation on the Patents Opinions Service - Response document", a short document that you can read for yourself here.

To refresh readers' memories, it is possible for a person to ask the IPO for a non-binding opinion concerning (i) the validity of a granted patent and (ii) whether a contemplated act is likely to infringe a granted patent.  The law governing these opinions is contained in sections 74A and 74B of the Patents Act 1977 and the IPO's opinions page is here. In short, for just £200 [which is just over half the cost of the latest editions of Terrell on Patents and The Modern Law of Patents] you get, within three months, the non-binding opinion of a senior examiner which you can then wave under people's noses when negotiating the settlement of a dispute or the terms of a licence.

According to the Executive summary
"This document sets out Government policy on expanding the Patent Opinions Service in light of the recent consultation. It indicates the Government’s intention to legislate as soon as possible to extend the questions relating to validity that can be the subject of an opinion to align them more closely with the grounds upon which a person can request revocation of a patent. We intend to do this by amendment to the primary legislation [goodness, says Merpel, the government must be taking patents seriously if they're going to set aside time to amend an Act of Parliament rather than just go for another statutory instrument] to provide the IPO with a more general power to issue an opinion on the basis of questions set out in secondary legislation.

We also intend to expand the service to offer opinions as to whether a Supplementary Protection Certificate (“SPC”) is valid or is infringed [The IPKat can't imagine that the pharma industry -- whether original or generic -- has been clamouring for this, but if it's there they may as well use it].

Thirdly we propose to give the IPO the power to initiate revocation action against a patent that an opinion concludes is clearly invalid because the invention is either not new or lacks an inventive step in light of incontrovertible prior art [this will be so popular with patent owners, chuckles Merpel.  And why should there not be a power to act sua sponte, she mewses ...] ...".
This third proposal reads, in full, like this, at para.59:

"We have restricted the proposal in light of the comments received. We intend now only to extend the powers of the IPO to initiate revocation of a patent where an opinion concludes clearly that the patent lacks novelty and/ or inventive step. Such a limitation means that the revocation action is unlikely to be challenged by the patentee as it would be clear that in order for them to maintain a valid patent they would need to amend to overcome the undisputable prior art [The IPKat cannot imagine that the meaning of the term "indisputable prior art" would not be itself a matter of dispute]. Any conclusion of invalidity that was more finely balanced, where arguments or further evidence could overturn that conclusion would not be pursued. By allowing revocation in those clear cut cases the IPO envisages benefits to SMEs who do not have the financial capacity to bring revocation actions against a patent that is clearly invalid [will there not be benefits for larger companies, which can pick off SMEs' patents in much the same way?]. It would also be a cheaper alternative for the patentee than being faced with inter-partes actions. We believe that this modified proposal, coupled with the explanations we have given concerning the ability of the patent holder to comment fully or make amendments before the patent is revoked addresses the majority of concerns raised by those opposing the proposal".

What happens next?
"The Government intends to introduce legislation to amend the Patents Act 1977 to give effect to these proposals".
We shall keep you informed.

The IPKat wonders, are there any other countries in Europe or beyond in which the granting office can revoke a granted patent under the terms proposed here? If so, what has their judicial and commercial experience been?

2 comments:

Anonymous said...

Wave one under my nose and I'll fall down in hysterics.

The "I have in my hand a piece of paper" quote springs to mind.

Anonymous said...

I'm always very impressed at how little the UKIPO charges for everything. £200 for an Opinion is incredible. I hope the new proposals won't scare people away from using Opinions. I'm sure Opinions are a long way off from challenging litigation as a way of settling disputes, but in time they could become a more central part of how things are done. I know it's too much to ask for, but Opinions based on pending patent applications would be very helpful indeed, and would give so much more certainty to the system.

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