Tuesday, 15 March 2016

A Clear Cut Case

I have mentioned a few times in previous posts the UK IPO's statement that they will only revoke a patent under s73(1A) in "clear-cut cases where the patent clearly lacks novelty or an inventive step". What this actually means is not yet itself clear, as we have only had one revocation so far since the new section came into force in October 2014. Apparently, even if a patent examiner considers that a patent lacks novelty, the IPO will not proceed with revocation if the cited document is a Chinese utility model or if the patent proprietor responds with some arguments about how the examiner got it wrong (see here and here for the examples I have in mind). There must, however, be some cases where the issue is so blindingly clear that there can be absolutely no argument about the examiner's finding of a lack of novelty.

What about a case where a patent is granted and the very same invention is then found to have been disclosed in an earlier published application by the same inventor that was not found by the examiner during prosecution? Such cases must be very unusual indeed, as doing this would be a very silly thing to do for any applicant, and a patent examiner would surely be able to easily find any previous published application by the same inventor when doing a routine search. This does, however, appear to have happened, and has resulted in patent office opinion 02/16, issued on 23 February 2016.

European application 08252964.5, in the name of Shane Kelly as inventor and applicant, was filed on 5 September 2008 without any claim to priority. The application related to a piece of agricultural equipment generally known as a harrow. The main embodiment from figure 1 of the application is shown here. The application was then searched by the EPO examiner, who found some documents and objected on grounds of lack of inventive step, but pointed out that the application could be allowed based on one of the dependent claims. After a couple of rounds of examination, the applicant relented and got the application allowed based on the examiner's suggestion. The application was then granted in January 2012 as EP2160936B1, and has been kept in force in a few EP countries, including the UK, for the past four years.

A request for a patent office opinion on validity was filed on 11 January 2016, which identified a published Australian application AU2007216912A1, having a publication date of 10 April 2008 (i.e. five months before the filing date of the patent). The request is fairly simply written, and alleges that claim 1 of the patent would be obvious because it is a combination of claims 1 and 8 of the previous publication (suggesting that the request was not prepared professionally). The examiner, however, was quick to point out that the patent was actually not new because it was virtually identical to the previous publication. Figure 1 of the patent (above), which is the main embodiment, is actually the same as figure 6 of the previous publication (below), and the examiner found there was a direct correspondence between every claim of the patent and either a claim or a part of the description in the previous publication. Unsurprisingly, the invention in the patent was found to be not new.

The proprietor now has until 23 May 2016 to request a review of the opinion, but I think it is very unlikely they will do so. The patent will then stand to be revoked by the comptroller under section 73(1A), which in my opinion is certain to happen.

This case seems to me to be a good example of why the new section 73(1A) is a good thing, because it enables clearly invalid patents to be removed from the register, at least in the UK. Examiners do sometimes miss documents that would be very easy to find (for example in this case with a search for the inventor's name in the same classification), but the result can be a patent sitting on the register providing a deterrent to others that would otherwise be potentially expensive for anyone else to get rid of. Although initiating revocation proceedings at the IPO is very cheap, doing so will expose the requester to costs if they do not win. Even in cases where the case is a clear win, the possibility of adverse costs alone can be a strong deterrent to anyone considering getting a patent out of the way. What the opinions service does is remove this deterrent, and allows such patents to be got out of the way with as little fuss as possible, and with no potential for adverse costs.


  1. Why on Earth did the EPO examiner not find the AU application? It was published nearly a year before the EP application was searched.
    The applicant of the EP application was the inventor of the AU patent. It looks like if the inventor decided to apply for a patent outside Australia on its own volition.

    Something has clearly gone wrong. An EP application from Australia without claiming priority is highly suspect, and all alarm bells should have been ringing for any search examiner, especially the one who did the search as he is quite experienced.
    And yet production had not yet been pushed as it presently is.....

    1. I agree that it does look like something went wrong, but I thought it would be best for me not to try to apportion blame. Instead, I think it's a useful example of why the system needs to have the ability to correct such things as easily and simply as possible.