Tuesday 8 March 2016

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.


  1. I'm glad to see that the IPO are following through, and eliminating clearly invalid patents. Looking through the other opinions, I strongly suspect that Opinion 02/16 ("Agricultural Implement", EP2160936) will go the same way, as it's a most clear case of lack of novelty.

    1. I don't think you could get any more clear cut than that one, so I would tend to agree with you. We'll have to wait a few months to find out though.