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Friday, 9 May 2014

Patentee prevented from surrender to hearing officer

This Kat recently became aware of a, to him, somewhat surprising decision of the UKIPO (BL O/170/14) to stay the allowance of an offer to surrender a patent pending the outcome of a revocation action before the High Court.

For the benefit of those who are not quite so au fait with UK patent practice, surrender of a patent (governed by section 29 of the Patents Act 1977) results in the patent ceasing to have effect as of the date of publication of the surrender (ex nunc). Surrendering is a quicker and more definite way for a patentee to be rid of an unwanted patent than simply allowing the patent to lapse by failing to pay renewal fees. By contrast, if a patent is revoked under section 72, the effect is retroactive and the patent is deemed never to have been granted (ex tunc).

Turning to the case at hand, OR Specific (“ORS”) was the proprietor of EP(UK) 1237494 B (“the Patent”). In a letter of 30 December 2013, the representative for ORS contacted the UKIPO offering to surrender the Patent. In accordance with the statutory obligation, ORS duly informed the UKIPO that Kimberley-Clark Europe Limited (“KC”) had commenced an action for revocation of the Patent prior to the surrender offer being made. Being a curious creature, this Kat poked his moist and highly sensitive nose into the UKIPO’s online file history and found that, in the letter to the UKIPO, ORS stated that KC did not enter into any pre-action correspondence with them and that had KC done so, ORS would have made the offer to surrender earlier in order to avoid revocation proceedings altogether.

Who could delay this offer
to surrender?
In any case, the offer to surrender was advertised in the Patents Journal, no opposition to the surrender was filed, and everything appeared to be going smoothly for the patentee. However, the UKIPO Hearing Officer had other ideas. After considering the “sparse” case law on what should happen when a patentee offers to surrender a patent while a revocation action is pending, the Hearing Officer ruled that it would be desirable to bring the offer to surrender into the same forum as the revocation action. The Hearing Officer ordered that the surrender proceedings before the IPO be stayed pending the outcome of the revocation action. The Hearing Officer considered that such an order would not unduly delay the overall proceedings and would not prejudice the patentee’s position, as surrendering would still be an option for the patentee, and that if they have no interest in the Patent they may simply choose not the defend the revocation action (as, if revocation were ordered by the court, there would be no patent left to surrender).

This Kat finds the lack of a clear precedent to follow in these circumstances rather surprising, and the Hearing Officer’s decision has likewise raised an eyebrow. The offer to surrender was not opposed, giving a strong impression that no third party would be adversely affected by any surrender. Subsequent revocation of a surrendered patent would only really change the effective date on which the patent ceased to have effect, and hence this Kat can see no harm in allowing the surrender now, which would give more certainty more quickly.

A hearty Katpat to Fergus Tyrrell for assistance in the preparation of this post.

14 comments:

Anonymous said...

Darren, Darren, Darren!!! You must remember this as an important legal point during your training. This rare scenario should have trainees jumping up and down with glee at the thought of the practical application of much revised theory. The benefit to the patentee of ex nunc v ex tunc is clear in general, even if not obvious or directly applicable in the case at issue.

KC may have missed the notice of the offer to surrender. Not difficult with the antiquated state of the UKIPOs systems and I'm still waiting for someone to help me red the microfiche of the a document published a whole month ago.

Darren Smyth said...

Dear Anonymous, you rather fail to state what is apparently so clear to you. So you leave me guessing. Yes there is a benefit to a patentee for the patent to cease ex nunc instead of ex tunc. But only if they are alternatives. If a revocation action is already pending, and if it can continue anyway, I see no harm to anyone if in the meantime an ex nunc surrender is permitted.

If that is not what you meant, then I am afraid that you are going to have to be more explicit.

Darren

Anonymous said...

The decision refers to Connaught Laboratories Inc’s Patent [1999] FSR 284 where Laddie chose not to use the IPO route for surrender. Laddie referred to particular reasons for this: 'The latter course will involve advertisement, the possible involvement of third parties, delay and additional expense'. Also I believe not having parallel proceedings is surely preferred. I think the Hearing Officer will have seen these reasons and perhaps also realised the case would be setting a precedent, and therefore took the safest option. I imagine a UK court would not be pleased if for some reason a parallel IPO surrender proceedings caused some complexity, and possibly an appeal happened, etc.

Darren Smyth said...

[Posted comment earlier then accidentally deleted it while reviewing. Below is reposted from memory]:

Dear Anon at 10.14 your hypothesis is interesting but seems to lose sight of the fact that the underlying situations are different, because in the present case the revocation action was pending and, unlike Connaught, the surrender offer had already been made and advertised. The hypothesis also seems inconsistent with paragraphs 8 and 9 of the judgment, immediately following the consideration of Laddie's judgment in Connaught :

"8 I do not think this takes away the comptroller’s powers of decision under section 29 where a revocation action is before the court. It does however suggest that, where the court is aware of an offer to surrender, it will consider in all the circumstances of the case whether it is preferable to go ahead with the revocation action or to leave the offer of surrender to take its course before the comptroller. If revocation were ordered, there would of course be no patent left to surrender."

"9 I do not think that the factors which weighed with Laddie J in Connaught are especially pertinent to the present case, since the offer of surrender has already been advertised and has not been opposed. No question of further delay and expense would therefore seem to arise."

Anonymous said...

the tribunal first seised should dispose of the matter. If you didn't validate an EPO grant, the Opposition Division still carry on

Darren Smyth said...

To anonymous at 14:39 - I think that there are two points in your comment. Taking them in reverse order

1) Indeed, an Opposition continues even if a patent has lapsed or been surrendered for all contracting states according to Rule 75 EPC. This is again because the ex tunc effect of successful opposition is different from the ex nunc effect of lapse. There will pretty much inevitably be some residual rights even if the proprietor does nothing post grant, because the patent will survive until a renewal fee is due and not paid in countries that have no translation requirement, of which there are now many. Thus even if there is no "validation" the patent is not void ab initio. So the opposition action is not nugatory.

2) I don't think that "the tribunal first seised should dispose of the matter" answers the question, because surrender is a process that according to Section 29 has a procedure that has to be followed before the Comptroller. I think that both the decision being reported here, and the earlier Connaught decision, make it clear that the Court cannot circumvent this. The revocation action may take some time before the Court, subject to any possible appeal. If the patent is then found valid, what then becomes of the surrender? If the surrender is stayed, then the Comptroller has to carry on with the action. I still don't see what is wrong with accepting the surrender first and allowing the revocation action to proceed to deal with any residual rights.

Anonymous said...

And what if the patentee decided to sue on the basis of extant patent term they had been entitled to, post surrender?

Darren Smyth said...

Anon at 19:40, I don't quite understand your comment, but in any case I think that section 29 (3) of the Patents Act, which sets out the effect of surrender, may provide the answer:

"...as from the date when notice of his acceptance is published in the journal, the patent shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date for the services of the Crown."

Does that help?

Anonymous said...

Licence terms related to the patent would still be enforceable. Royalties could be due for the period the patent was in force. If it did not matter whether the patent was surrended or revoked, there would be no need for the ex nunc/tunc positions.

The real answer, therefore, is that in the academic/private practice world it doesn't matter, but in the real world it does.

Darren Smyth said...

To Anon at 8.42 - what you say concerning a surrendered patent is completely correct. But I don't understand your comment because neither the post nor any of the comments concluded or suggested that "it doesn't matter". Of course it matters. That is why it is being considered.

Anonymous said...

If I can paraphrase Darren's position:

"Black is white, unless it isn't, in which case, white is black, and if you can't explain my thinking, your position must be wrong"

Darren Smyth said...

Thank you anon at 13.23 for your helpful comment. I think that there must be some misunderstanding going on. I am doing my very best to address it and try to understand what the issue is, but now I think I am at a brick wall.

All I said is what is wrong with accepting surrender while revocation action proceeds. No-one has answered that point and I suspect that they are answering something else entirely, which I did not say.

Anonymous said...

What an odd series of comments!

Perhaps what has been missed (except for Darren) is the significance of the advertisement in the journal. Whereas the mechanism is archaic and the advertisment could have been missed, it is never the less the only available formal mechanism by which third parties are provided with the opportunity to oppose surrender. It is legally irrelevant whether someone could possibly have missed this opportunity by mistake, as some Anonymice (or should that be Anonykats?) have argued. Yes, they could, but that would simply be tough luck.

In this case, it seems unlikely that a party already engaged in proceedings would be unaware of the offer to surrender. Similarly, the hypothetical licensee must surely be expected to be aware of the status of the patent which has been licensed.

All of the hypothetical consequences arising from the ex nunc surrender (prior to an ex tunc revocation - which may or may not ultimately occur) have been disposed of by virtue of the advertisement in the journal.

In view of this, it is hard to understand why the hearing officer came to their decision.

It may also be worth re-emphasising that the revocation proceedings are pending. This means that the patent may or may not be revoked, or may or may not be maintained in its original or an amended form. The assumption that the offer to surrender infers that the patent must be invalid is tempting, but premature.

In short, I agree with Nick.

Darren Smyth said...

Dear Anonymous at 09:19 thank you for your kind comments. I am relieved not so much that you agree with me (although that is always nice) but that you appear to have understood what I was arguing. Some of the earlier comments, while not making much sense to me, seem to suppose that I was arguing for acceptance of surrender instead of the revocation, rather than (as was actually the case) as an interim step while the revocation action proceeds.

I do wonder however who is Nick.

Best wishes

Darren

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