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 74a 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

A Patent for a Hairdressing Salon in a Shipping Container - Really?

A while ago I wrote about a patent that was granted by the EPO in August 2016 which, it seemed to me, should not have been granted because it was clearly invalid. The patent, EP2700769B1, claimed the following:

1. A hairdressing salon (1) comprising at least one styling station (3), which is embodied in a room (5), wherein the room (5) is arranged in a mobile structure (7), which can be displaced by means of a lifting tool, characterized in that the mobile structure (7) has at least one window (13).

A South African barbershop,
in a repurposed shipping container.

Anyone remotely familiar with patents would immediately recognise that the claim, which effectively defines a hairdressing salon in a shipping container, would have fairly obvious validity issues. Even if nobody had thought to repurpose a shipping container in this way before (which on the face of it sounds implausible), there would be a question to be asked about what particular technical problem the invention solved that was not obvious. The claim therefore seemed, even before doing any kind of search, either not novel or lacking inventive step. How it got through the EPO's examination system, with the examiner not really finding anything of relevance and then allowing the application on the basis of the characterising clause being to add a window, is a mystery (at least to me), and is unfortunately something we will probably never find out.

As I wrote in my previous post about the patent, I did a quick search for prior art (taking no longer then 5 minutes) and found something that seemed to me good enough to knock out at least claim 1 for lack of novelty. The prior art I found is available here, from which I have copied the most relevant photograph. The webpage refers to a book that was published in 2011, which has all the photographs in. There was therefore no doubt that the photograph, described on the webpage as a "Boyz & Girlz Salon (in a shipping container)", was available before the August 2012 priority date of the patent.

Being a bit annoyed that something so obviously invalid could get through the EPO's supposedly high quality examination system, and also a bit of a fan of the UK IPO's opinions service, I thought I would have a go at seeing what a UK examiner thought of the patent. After waiting for the opposition period to expire (I wasn't going to file an opposition, given the high fee and the long wait for a result), I prepared and filed a quick request for an opinion on validity at the UK IPO, using selections from the book as my prior art.

A couple of days ago, just short of the usual 3 month timescale after filing the request, the opinion issued. In brief, the examiner agreed with me on every point and found all of the claims to be invalid, either for lack of novelty (as in claim 1) or lack of inventive step. The only claims that were found to be novel were those that added a staircase to access the walk-on roof (claims 7 & 8), which were unsurprisingly found to be lacking in inventiveness. As a result, the patent was found to be entirely invalid.

It is a little disappointing that the patent proprietor decided not to file any observations in reply to the request, but since they had failed to pay the latest renewal fee it seemed they might have already lost interest in it, or had perhaps discovered after getting it granted that it didn't stand much chance of surviving any attacks. The request did provoke observations from another quarter though, from someone calling themselves "The Patent Labrador". Unfortunately, these observations could not be taken into account by the examiner as they raised new issues that were not mentioned in the request, although they were mentioned in the opinion as having been filed, by "an anonymous observer". Perhaps the Labrador needs to have a look at Rule 96 before having another go.

Along with proving a point that was previously only made by me in a fairly obscure and esoteric blog, this little exercise has shown how easy, and potentially quite powerful, it can be to get something on the public record relating to an invalid patent that would make anyone wanting to enforce it think very hard before doing so.

Regular readers of this blog will, of course, already know that this is not necessarily the end of the story. The next step the UK IPO can take is to initiate revocation proceedings under section 73(1A), provided they agree with the examiner that the case is sufficiently clear cut. If, as I suspect, the proprietor does not contest the opinion, my guess is that this patent will, in due course, be got rid of in the UK and will, in effect, never have been granted, which is of course what should have happened in the first place.

Why amend an expired patent?

The maximum term of a UK patent, according to section 25 of the UK Patents Act, is 20 years from the date of filing of the application. If renewal fees continue to be paid, the last day of a patent's life will be on the day before the 20th anniversary of the date of filing. In the case of EP0736030, which was filed on 20 December 1994 and granted in 2001, the patent expired on 19 December 2014. The patent, titled "Tetrahydrofuran Antifungals" claimed the compound shown here on the right (with some optional features for X and R1).

The compound was apparently worth protecting a bit more, so a Supplementary Protection Certificate was applied for, and granted. SPC/GB06/007, granted in 2007, extended the protection by the usual five years beyond the expiry date of the patent, i.e. until 19 December 2019.

In April last year, two requests for an opinion were filed in relation to the patent and the related SPC, the requester alleging that the patent was invalid due to lack of novelty or inventive step. The requests were dealt with together, since validity of the SPC depended on validity of the patent, and resulted in opinion 09/16 & 10/16, issued on 31 May 2016. The examiner found that claims 1 to 4 of the patent were lacking novelty, but that claims 6 to 19 were novel and inventive. As is now allowed under section 73(1A-C), the comptroller initiated revocation proceedings on the patent, giving the proprietor (Merck Sharp & Dohme Corp.) until 21 December 2016 to respond. The proprietor responded, stating that they were "somewhat surprised" that the comptroller might consider revoking their patent, since it had already expired and that third parties were "unaffected by the validity, or otherwise of an expired patent", and suggesting that the only reason for amending an expired patent would be bureaucratic. They also questioned whether "otiose actions of this kind were in the mind of Parliament when S.73(1A) of the Patents Act was enacted". They did, after all this protesting, nevertheless submit amendments that limited the patent to the claims that were found to be allowable, and which also still covered the product covered by the SPC.

What I find surprising about this case is not the fact that revocation was initiated on an expired patent, but that the proprietor was apparently surprised by this possibility. An expired patent can still be used against third parties, since it could be used to claim damages for past infringements that took place while it was still alive. It can also be used to support an ongoing SPC, as in this case, so initiating revocation proceedings would be very relevant, particularly if they resulted in the SPC being knocked out as a result of the patent being found invalid. The fact that in this case the patent could be amended so that it was found to be both valid and still capable of covering the product protected by the SPC is something of a lucky break for the patent proprietor, but I don't think that this means the action was otiose at all.

Negative IPO Opinions - The Story So Far

Since 1 October 2014, when section 73 of the UK Patents Act was amended to allow for revocation to be initiated by the comptroller following a negative opinion on validity, a total of 13 opinions have issued where an examiner has concluded that a patent is either lacking in novelty or inventive step. This is out of a total of 42 requested opinions that reached a conclusion, 25 of which related to validity.

A first point worth noting is that these numbers are quite small, suggesting three possible reasons: i) people are reluctant to use the opinions service, possibly due to the public nature of the procedure; ii) the service is still not well known, even though it has been around for several year now; and iii) that there is just not very much contentious action around in the UK. I suspect the main reason is the first one, as many will be unwilling to put questions of validity or infringement before an examiner and have it decided on the papers alone, with the result being publicly available, even if the resulting opinion "shall not be not binding for any purpose" (section 74A(4)).

A second point worth noting is that the hit rate of a finding of invalidity, with 13 out of 25 opinions finding the patent to be invalid, is about 50%. If you are looking to use an opinion as a card to play in negotiations, this is not a bad hit rate. Sometimes, of course, a positive opinion can be useful too, particularly if the question is framed in the right way, as I know from personal experience relating to this one.

According to section 73(1A), the comptroller may revoke a patent if an opinion finds that section 1(1)(a) or (b) is not satisfied, i.e. if the claimed invention lacks novelty or an inventive step. He cannot, however, do so until any review under section 74B has been concluded, or once the three month period for requesting a review has passed.

It has now been nearly two years since the new procedure started, so how many patents have actually been revoked using section 73(1A)? Of the 13 negative opinions issued to date, only two have resulted in the patent in question being revoked (EP1837182 and GB2508152), although another one (EP2160936) should be revoked shortly, which I wrote about here [UPDATE 17 August 2016: it has now been revoked, confirmed by this letter from the IPO]. Three other opinions (relating to GB2493904, GB2487996 and EP2124945) resulted in the Office deciding to take no action, with no amendments being made to the patent, while for two others (EP1657072 and GB2503963), no action was taken following amendments being made. The remaining five (relating to GB2493904, GB2480275, EP0736030, EP1472164 and EP2018153) are currently awaiting a decision, four of these being within the 3 month review period, with the other one (GB2493904, which I have posted about before here) having been delayed due to arguments and extensions of time.

Although the overall count may change over the next few months once a few more decisions are made, the impression I get so far is that automatic revocation is likely to remain a rare option for the Office to take, and an option that is only taken when the case is very strong and/or if the patentee does not put up any fight. If the case for revocation is strong, a sensible patentee will be well advised to consider making amendments, either before the UK Office or, if applicable, centrally at the EPO. If the case is less strong, the advice would probably be to put up a fight to try to get the Office to back down, which they seem likely to do in most cases.

Not a Clear Cut Case?

As regular readers will know, I have been keeping a watch on cases where a negative patent office opinion on validity has been issued since October 2014 when section 73 was amended to allow for revocation by the comptroller following an opinion under section 74A finding a patent to lack novelty or inventive step. So far, there has been only one opinion that has resulted in revocation, which I have written about here. Two others resulted in a decision not to revoke the patent, and at the time of writing there are six others that are at various stages awaiting a final decision, including one that in my opinion will inevitably be revoked. One of these six cases involved opinion 10/15, which related to whether the UK part of EP2124945B1 was valid over various documents filed by the requester. The examiner found that the patent was not valid because it lacked an inventive step.

In brief, the invention related to a method of treatment using pirfenidone to treat idiopathic pulmonary fibrosis, the treatment involving a specified escalating dosage regime [as an interesting aside, the very narrow scope of claim 1 of the patent defines the exact dosage regime described in the SPC information for Esbriet (pirfenidone)] . The examiner found that, since everything apart from the specific claimed escalating regime was already known and that there was no proof that the regime had any particular benefits or that there was any technical prejudice against it, the claimed regime was obvious. This finding applied to all of the claims in the patent (of which there were only four). In principle then, the patent stood to be revoked by the comptroller under section 73. The proprietor had, however, the opportunity to request a review of the opinion under section 74B before any action would be taken.

The patent was granted in the name of InterMune, Inc., which was acquired last year by Roche Products Limited in a deal worth apparently £5 billion, and relates to a drug that is a recommended treatment for idiopathic pulmonary fibrosis. It is not therefore surprising that the patent proprietor did not take the opinion lightly and decided to request a review rather than risking the patent being revoked. The result of the review was a decision that issued a couple of weeks ago, BL O/163/16. The proprietor argued that the examiner had got it wrong because he had misapplied the law on inventive step, and in particular by presuming that any new dosage regime would be obvious without there being a clear technical prejudice pointing away from it, referring to this paragraph of the 2008 Court of Appeal decision in Actavis v Merck, which stated that new dosage regimes would nearly always be obvious because it was standard practice to investigate appropriate dosage regimes, and that only in an unusual case, where there was a technical prejudice against the claimed dosage regime, could specifying a dosage regime confer validity on an otherwise invalid claim.

The hearing officer did think that the examiner was wrong in taking the presumption of invalidity as a starting point, but did not think that the opinion was clearly wrong because the examiner had correctly followed the multi-part Windsurfing/Pozzoli test and had carried out a multifactorial analysis based on the material before him. The opinion was therefore not set aside.

What happens now is the interesting question. Given how much money is at stake, the proprietor will presumably not give up and let the opinion stand. To do so would risk getting the automatic revocation process initiated. Instead, I expect they will appeal the decision, which will tie things up for a while. The appeal cannot itself result in revocation but only a final decision as to whether the opinion should be upheld or set aside. If it is upheld, the process could then start all over again, as the patent office will still have the option open to them of initiating revocation of the patent. I wonder though, whether the patent office would decide to do this, given that the patent is one that is clearly worth fighting over, even though it may be (and, I suspect, is) clearly invalid. I suspect the patent office will really not want to get involved in a dispute that could mean having to defend a decision and spend a lot of money doing so. Unfortunately, assuming an appeal is filed, they will be involved anyway. Someone at the patent office might now be thinking that automatic revocation was perhaps not such a good idea after all.

UPDATE 31 May 2016: The IPO has issued a decision stating that no action will be taken to initiate revocation proceedings under section 73(1A). Presumably this means that an appeal has not been filed against the decision to uphold the opinion, which is an interesting approach to take for a patent that is clearly worth a lot of money. Perhaps the patent proprietor managed to find out what the IPO's opinion was on whether action would be taken before they decided not to appeal. Although the patent might not be clearly invalid in the IPO's view, it is at the very least arguably invalid and the negative opinion is there for all to see. I wonder if anyone will now bother to file a proper revocation action?

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.

The First Section 73(1A) Revocation

As from 1 October 2014, when section 73 of the UK Patents Act 1977 was  amended, it has been possible for a patent to be automatically revoked by the Patent Office following a negative opinion on novelty or inventive step issued under section 74A. As the IPO indicated at the time, such revocation would only be done in 'clear-cut cases', although they did not set out what this would mean in practice. Since then, nine opinions have issued that have found a patent to lack novelty or inventive step. I have been keeping a close watch on how these cases have progressed, and have provided updates here, here, here, here and here. In the first two cases where a decision from the IPO was reached, no action was taken to revoke the patent. The IPO provided no reasoning in either case as to why they decided to take no action.

A decision has now issued in relation to EP1837182, a patent owned by Fujifilm Corporation. The patent, titled "Ink washing liquid and cleaning method" relates to use of a liquid as an ink washing liquid for a photocurable ink in an inject printer system. An opinion on validity was requested by Acredian IP (presumably on behalf of an interested party) in March 2015, raising three documents that the requester considered were relevant. The examiner found, in Opinion 04/15 issued on 4 June 2015, that the claims of the patent were either lacking in novelty or inventive step over the cited documents. The patent proprietor then had three months to request a review of the opinion to contest it, which they did not do. Shortly after this period expired, on 16 September 2015 the IPO wrote to the proprietor's representative inviting them to consider filing amendments. The proprietor did not respond to this in time. The IPO then sent another letter on 22 January 2016 indicating that they were considering revoking the patent. No response was sent to this either. A decision then issued on 19 February revoking the patent. The decision is fairly short, and states in full:

1. An Official letter dated 16 September 2015 explained that the invention of claims of the above patent was not new or did not involve an inventive step and that revocation of the UK Patent under Section 73(1A) might therefore be necessary. The proprietor did not submit observations or proposals for amendment. A hearing was therefore offered in an Official letter dated 22 January 2016 but the proprietor has not asked to be heard. 

2. In the absence of any argument to the contrary, I am satisfied that the conditions of Section 73(1A) are met. I therefore order revocation of the UK patent. 

Appeal 3. Any appeal must be lodged within 28 days after the date of this decision.

This decision is the first that has been taken by the IPO to revoke a patent following a negative opinion. In contrast to the earlier case relating to GB2487996 (which I wrote about here), where the proprietor contested the IPO's initial view that the patent should be revoked, in this case the proprietor did nothing to try to keep their patent. The result should therefore not have been too much of a surprise. Although this is probably generalising a bit too much from only two cases, it does seem so far that the IPO might mean 'clear-cut' to be cases where their initial opinion is not contested. I would like to see this disproved, for example by the IPO defending their view that a patent should be revoked, but at the current rate of issuance of opinions it might take quite a while to see this happen. For now though, it is at least interesting to see that the new provision of section 73(1A) can actually work and that it can be all done (barring any appeal) in just less than one year.

Section 73(1A) Revocation - A Good Hair Day for Jemella

My last post on the subject of revocation following a Patent Office Opinion mentioned three cases where proceedings had been initiated. The first related to a patent from JCB, which I wrote about previously here, but this has not been the first one to get a decision. Instead, the third one, relating to a patent from Jemella, GB2487996, has been the first patent to get a decision on revocation under Section 73(1A). The decision, which issued today (18 December) says in full (with links added):

1. An Official letter dated 18 September 2015 explained that the invention of claims of the above patent was not new or did not involve an inventive step and that revocation of the UK Patent under Section 73(1A) might therefore be necessary.

2. The proprietor contested this view in their letter dated 29 September 2015. I have considered their observations and I make no order for revocation of the UK patent.

As I reported briefly in the update to my previous post here, the patentee had argued that the examiner got it wrong by interpreting the claims incorrectly, and made no amendments to the patent. They could, of course, have done this instead by requesting a review of the opinion and should have got the opinion set aside. We would, however, then have had a decision of why the opinion was wrong. The decision here goes into no detail at all about why the opinion was wrong to decide that the patent was invalid, which it presumably must have been if the patent is not being revoked. I wonder therefore whether the IPO is taking this thing entirely seriously.

Section 73(1A) Revocations - An Update

To follow up from my previous posts (here, here and here) on the subject of revocation following request for an opinion on validity, this  is to provide a little update on where things currently stand. At the time of writing revocation proceedings have been initiated in three cases. These are:

GB2497956 (JCB): Proceedings were initiated on 7 August 2015, with an initial deadline of 7 October to file observations and/or amendments. This has now been extended to 9 December 2015.

EP1837182 (Fujifilm): Proceedings were initiated on 16 September 2015, providing a deadline of 16 November 2015 (extendable by two months).

GB2487996 (Jemella): Proceedings were initiated on 18 September 2015, providing a deadline of 18 November 2015 (extendable by two months).

Two further opinions, 07/15 and 10/15, look likely to result in initiation of revocation proceedings. The proprietors have until 11 November and 24 November respectively to request a review of the opinion under section 74B.

UPDATE 4 November 2015: It seems that Jemella are keen to defend their patent. Their attorneys have responded with a letter arguing essentially that the examiner got it wrong by interpreting the patent incorrectly, and are not offering any amendments. I'm not sure why they didn't do this previously by requesting a review of the opinion.

Opinions and Revocation - JCB is the Guinea Pig

Following my earlier posts here and here about the new provision under section 73 of the UK Patents Act for automatic revocation following an opinion, I have noticed that the first step has been taken today in relation to Opinion 25/14. As mentioned in my post here, this opinion found GB2497956 to lack novelty over a patent cited by the requester. The period for requesting a review expired on 11 May 2015 with no request being filed. After taking nearly three months to think about it, the UK IPO has now written to the proprietor, stating the following:

"Under Section 73(1A) your patent has been reviewed by a Deputy Director on behalf of the Comptroller who considers that claim 1 is not novel in view of US 3485037 and also not inventive, in particular in view of US 2007/175209 and EP1439310.

Before beginning revocation proceedings, you are invited to amend your patent and/or to comment on the citations before [7 October 2015]."

This is the first time the new provision under section 73(1A) has been used to initiate action. The proprietor, JC Bamford Excavators Limited, now has two months to decide what to do to try to avoid getting their patent revoked. I will, of course be keeping a close watch to see what happens.

Opinions & Revocation - Continued

Earlier this year I wrote about the first couple of Patent Office opinions under section 74A that issued under the new provisions of section 73(1A)&(1B), where the comptroller now has the option of initiating revocation if an opinion finds a patent to lack novelty or inventive step.

The question I had at the time was how the comptroller would decide where initiating revocation proceedings would be justified. The two opinions issued so far seemed to me to be fairly "clear cut" (in the words of the Office's own guidance on the matter), since both found claim 1 of the patent to lack novelty over a prior publication. I therefore expected that we should see the first action to initiate revocation shortly after the 3 months period for requesting a review expired on the first one, which was in April (no review was requested).

After a couple of months to think about it, the Patent Office has now written to the proprietor in a letter dated 12 June that states in part:

"Whilst opinion [23/14] did conclude that your patent was invalid the comptroller does not consider it appropriate to initiate revocation proceedings against your patent.  

You should note that the decision not to initiate action under section 73(1A) does not alter or set aside the conclusion in the opinion. You may still wish to amend your patent."

The opinion, which was written by a senior examiner, was quite clear in finding that claim 1 lacked novelty over a prior published Chinese utility model publication. This makes me wonder what it would take for the comptroller to decide when a case met the "clear cut" criterion. How clear cut does it have to be? There is no real further guidance in the Manual of Patent Practice, which simply states that the group Deputy Director (DD) "should consider whether action under section 73(1A) is necessary. Action under this section should only be initiated if the DD considers that the patent is clearly invalid due to lack of novelty or inventive step. The opinion should be considered but the DD is in no way bound by it". Based on this, it appears that the comptroller could decide not to take action for any reason at all, however subjective it might be. This does not sound to me like a good way to implement the new provisions.

Perhaps we will know more when a decision is made regarding the second opinion that resulted in a finding of invalidity, which should issue soon. The situation at the moment does appear to be in need of some clarification.

Opinions & Revocation

Since 1 October 2014, when section 16 of the Intellectual Property Act 2014 came into force, amending section 73 of the Patents Act 1977, it has been possible for the comptroller to revoke a patent following an opinion finding the patent to lack novelty or inventive step. This has substantially extended the comptroller's power to take action on his own initiative, which previously was only possible to prevent double patenting. Under the law as it stood prior to October 2014, the only other way to get a patent revoked would be to apply for revocation, either to the patent office or the court. Applying for revocation, however, is a tricky business and can lead to all kinds of complications, not least of which are high costs to pay for lawyers, together with potential exposure to at least some of the other side's costs if the case does not go your way. It is therefore not something to be taken lightly, even if your case seems to be watertight and the patent clearly invalid.

Under new section 73(1A)-(1C), if an opinion is issued that finds a patent to be not novel or to lack inventive step, the comptroller may revoke the patent. He must, however, wait until the patent holder has had an opportunity to request a review of the opinion, which can be done within 3 months of the opinion issuing, and cannot proceed until any review, and any subsequent appeal, has been disposed of. If, of course, the review finds the opinion to be wrong, it will be set aside and no action will be taken.

Once the comptroller decides to take action to revoke the patent, he has to give the patent holder an opportunity to make any observations and to amend the patent. Importantly, this procedure happens only between the Patent Office and the patent holder. The person who made the request for an opinion is no longer a party to the proceedings. They can, however, oppose any amendments requested under section 75, which are always advertised before they are made (although typically with a very limited 2 or 4 week period to file any opposition).*

The upshot of all this is that a person who has what they think is a solid case for knocking out a patent in the UK now has potentially an entirely risk-free way of getting rid of the patent by simply requesting an opinion on validity and waiting to see what happens. If the examiner agrees with the requester, the patent could then be knocked out, or at least amended, without any further action needed by the requester of the opinion and with no potential for a costs decision being made against them (even if the patent is only limited and not revoked in full). For those who do not want to get into an expensive procedure just to get rid of an inconvenient, but clearly invalid, patent, the new law seems to be a very good option indeed.

At the moment, we do not yet know how the new procedure will work in practice. The IPO have indicated that they will only act "in clear-cut cases where the patented invention clearly lacks novelty or an inventive step". What does "clear-cut" mean though? What is the difference between a patent lacking novelty and clearly lacking novelty? We may find out over the next few months, as two opinions have now issued that have found patents to lack novelty and inventive step.

The first of these, Opinion 23/14, was requested on 24 October 2014, and issued on 21 January 2015. The request was made regarding validity of GB2493904, granted to Actegy Limited and relating to an "apparatus for electrical stimulation of a foot" (or more likely a pair of feet, as seems to be clear from the illustration of the product shown on the right, and available here). The examiner found the  patent to be not novel over published Chinese utility model CN200973920Y relating to a "foot-care and body-beautifying machine with electromagnetic waves". According to Rule 98(1), the patent holder has until 21 April 2015 to request a review of the opinion. If no review is requested, or if any review does not result in the opinion being set aside, the comptroller may decide to revoke the patent.

The second is Opinion 25/14, which was requested on 13 November 2014 and issued on 11 February 2015. The request was made regarding validity of GB2497956, granted to J. C. Bamford Excavators Limited (more widely known as JCB, famous for making machines like the one shown on the left) and relating to a hydraulic system with kinetic energy recovery and storage device. The examiner found that the independent claims of the patent were not novel over US3485037 and were obvious over other documents cited by the requester. The patent holder has until 11 May 2015 to request a review.

In each case, the examiner's finding seems to be pretty clear in finding a lack of novelty of at least the independent claims of the patent. If the opinions are not set aside following a review, I would have difficulty seeing how either case could be anything other than "clear-cut" cases where revocation under section 73(1A) would be inevitable. We will, however, have to wait and see to find out whether the comptroller agrees.

*This turns out not to be correct. Any amendments made as a result of objections under section 73 are not advertised and are not subject to opposition. Only proposed amendments under sections 75 and 27 are advertised.