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.
It is starting to look like opinions are a cost effective way of getting a patent revoked post grant. I wonder what the balance between filing third party observations and requesting an opinion is? If one files third party observations and these are ignored by the examiner, the same ammunition cannot be used again for requesting an opinion. The request for an opinion appears to be very thoroughly considered by the patent office. It is not always so clear that this is the case for third party observations.
ReplyDeleteThe (initial) cost of requesting an opinion would not seem to be much greater than filing observations (assuming that a proper job is done in either case), although I suppose the additional round of observations might significantly increase costs.
You might be right, but it's too early to say at this stage. I think we need to see what happens to the first few patents to go through the revocation procedure.
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