Accelerate With Care

Section 73 of the UK Patents Act 1977 (as amended) grants the Comptroller power to revoke patents on his own initiative, as opposed to revocation proceedings being initiated under Section 72 by another party. The scope of the Comptroller's powers is strictly limited to: i) novelty only prior art under section 2(3) being uncovered after a patent is granted; ii) an opinion on a patent finding a lack of novelty or inventive step (but only in 'clear cut' cases); and iii) an EP(UK) patent being granted for the same invention as a GB patent. These provisions are only used sparingly, with the third being the most common given that it is not unusual for a GB patent to be granted ahead of a corresponding EP. The second is used more sparingly, and has only been used a few times over the past 11 years (see here for more). The first is, as far as I can work out, even more rare. It is not straightforward to find such cases, especially now as the patents journal has been hobbled since its recent 'update' to remove the ability to filter by applicable section number. One such case, however, has come to light recently by way of a decision from the UK IPO from earlier this month: BL O/0018/26 (Chordata), relating to GB2610710B. 

The application was filed on 19 October 2022. Shortly afterwards, the applicant's then representatives requested accelerated examination on the basis that they were trying to secure investment. The UK IPO accepted the request and issued a combined search and examination report on 20 December 2022, based on a search that was carried out on 15 December 2022, which cited documents of only background relevance. The applicant also requested early publication, resulting in the A publication issuing on 15 March 2023. After some further to-ing and fro-ing, the application was found to be allowable and was granted on 13 December 2023. Importantly, this was only around 14 months after the filing date, meaning that the examiner would not have been able to uncover all potential prior art under section 2(3) before the application was granted. As is standard practice, the applicant was notified in the communication under section 18(4) of this, and that the examiner would complete the search after 21 months from the priority date. 

The search was completed in September 2024 and two further documents were identified: EP4316358A1 and EP4319639A1 (these links will take you to the EP register for each case). Both of these were EP re-publications of earlier international applications, specifically WO 2022/255662 and WO 2022/216819. According to how section 2(3) works, if a published patent document has an earlier priority date but a later publication date, it can only count if it also covers the UK, which would include an international application that enters the UK national phase, a European application designating the UK or an international application that enters the European regional phase and designates the UK (and where the UK designation is not withdrawn). Both of the documents related to international applications that entered the European regional phase and designated the UK, although both had since been deemed withdrawn. WO 2022/255662 was published on 8 December 2022 but WO 2022/216819 was published on 13 October 2022, i.e. six days before the filing date of the application. It is also worth noting (although this did not feature in the decision) that a search carried out on 15 December 2022 could in fact have found both documents and could have identified one of them as being 'intermediate' prior art. 

The hearing officer first looked at the two citations and came to the conclusion that, since one of the them was in fact published before the filing date it could not count as s2(3) prior art but was full prior art under s2(2). Regardless of whether this disclosed the claimed invention (which the examiner asserted it did), it could not be considered further and was ruled out. The other citation did, however, count as s2(3) prior art, so the hearing officer assessed whether it disclosed the claimed invention. In short, after some discussion it was found that claim 1 was not novel over this document. The proprietor would therefore need to do something about it. A further problem was that the proprietor had dispensed with the services of their patent agent and was doing this by themselves. The hearing officer, apparently being more lenient with them than he would perhaps be with a represented proprietor, gave them a few suggestions of which claims were not anticipated by the citation and gave an opportunity to make amendments, but suggested strongly that they sought professional help in doing so. The proprietor was given 3 months to sort things out with the examiner, otherwise the patent would be revoked. 

There are a couple of lessons to be learnt from this case. The first is that, although applications can in some cases be accelerated and granted much sooner than would normally be the case, this comes with a risk that further prior art might not be found until after the application is granted. It is typically a risk that is worth taking, but only if the searches that are carried out in the time given are competently done. The second lesson is that searches are not always competently done, which seems to be the case here, given that the examiner did in fact have plenty of time to find the two additional documents before the application granted. It is an unfortunate fact that searches at the UK IPO often do not uncover relevant prior art that could be found by another examiner. A common occurrence in practice is that a UK search report will find no relevant prior art but a subsequent PCT application on the same claims, searched by an EPO examiner, will find some. If the UK application is granted early, this can invalidate the earlier UK patent, although it can be put right if the PCT application then overrules it in due course (resulting in a patent that has a longer duration too). If, however, the applicant does not have the willingness or money to have this fallback position, they can be left with a weak or invalid patent. Best practice therefore, if acceleration of a UK patent is required, is to keep going with a later filed PCT application and keep options open for as long as possible. 

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

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.