Thursday, 23 July 2020

Patent Office Opinions - s73 Revocations

Since 1 October 2014 it became possible for a request for a Patent Office Opinion under Section 74A to result in revocation, as a result of Section 73 being amended to include subsections 1A-1C, which state:
(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) [novelty or inventive step] is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.
(1B) The power under subsection (1A) may not be exercised before
(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or
(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).
(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.
Regular readers will know that I have been keeping an eye on the outcomes of Opinions for the past few years, and have written a few posts on the subject. It has now been nearly six years since the amendment came into force, and it seems a good time to provide an update on where things are now. 

Out of around 90 Opinions that have issued to date, 43 have found the patent in question to be invalid for lack of novelty and/or inventive step. Of these, a final decision has been made in 36 cases, whether this is to take no action, maintain the patent as amended or to revoke. The IPO has indicated that revocation will only be done in 'clear cut' cases. In practice this means that if an Opinion finds a patent invalid and the proprietor does nothing about it, there is a strong chance that the decision will be to revoke. In cases where the proprietor contests the Opinion's finding, however, the chances of getting the patent revoked, based on the information to date, reduces to zero. In some cases the proprietor will want to amend their patent, while in others they might contest the finding by filing arguments or requesting a review under section 74b. In all cases so far this has resulted in the IPO deciding not to proceed with revocation. 

The chart below summarises the 36 cases where a decision has been made. In half of them, no action was taken, i.e. the Comptroller decided that the patent was not sufficiently clearly invalid to justify being revoked. Of the other half, 12 have resulted in the patent being amended, either via post-grant amendments under section 27 or central limitation via Article 105a EPC. In only 6 cases has the patent been revoked. The details of each of these cases are provided in the table below, with links to the Opinion, patent register and the decision. In each case the proprietor did nothing in response to the initiation of revocation proceedings under section 73(1A). 

It is perhaps not surprising that the IPO decide in the great majority of cases not to proceed with revocation following a negative Opinion, given that the procedure under section 74a is strictly time-limited and decided only on the papers after a single round of correspondence with the patent proprietor. The opportunity to provide evidence that would normally be possible during court proceedings is not available under section 77a so the benefit of any doubt, whether reasonable or not, is clearly given to the proprietor. Anyone who might think that the Opinion service could be a quick and cheap way to get rid of a troublesome patent is therefore very likely to be disappointed if the patent proprietor decides to put up any level of resistance. However, given that there are no estoppel issues that would prevent similar, or expanded, arguments being put later in revocations proceedings, the Opinions service could be seen as a useful way of trying out a case to see what might work without committing to any particular aspect, the only downside being that the proprietor will then be forewarned and ready next time. This seems to have been used in only one case so far though, based on the information available from the IPO Ipsum register

What is surprising, to me at least, is how little the Opinions service has been used. Is this due to a general reluctance to put arguments on the public record, or is it something else? Are enough people even aware of the possibility of requesting an Opinion when an issue of validity or infringement comes up? Could it be a factor that those who are experienced in litigation proceedings are unwilling to advise their clients to use it? It is still a puzzle to me. 

 


Opinion

Proprietor

Patent No.

Opinion Result

Status

(23/7/20)

04/15

Fujifilm Corporation

EP1837182

Lack of novelty

Revoked

14/15

Albertus Abraham Petrus de Groot

GB2508152

Lack of novelty

Revoked

02/16

Shane Kelly

EP2160936

Lack of novelty

Revoked

22/16

De La Rue International

EP2493707

Lack of inventive step

Revoked

18/17

IMMOSPA AG

EP2700769

Lack of novelty

Revoked

 

21/18

Spectrum Technologies Plc

EP1641572

Lack of novelty

Revoked


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