In addition to working around a competitor’s patent, we are also often asked how to knock-out or challenge the validity of the patent. In legal speak, this is called ‘revocation’, where an action is brought in order to try and fully or partially invalidate the patent in question.
The general principle of the revocation of patents is founded on the basis that it is in the public interest to keep invalid monopoly patent rights off the patent register. In order to have a patent revoked, it is necessary to file for revocation proceedings, which exist in a variety of forms, depending on the jurisdiction in which revocation of a patent is sought.
Although revocation actions are often brought as a counter-claim by defendants in infringement actions, it is becoming increasingly common for companies to challenge the patentability of their competitors’ patents in order to open up the market.
So, what options are available to challenge a patent or patent application? Below, we will briefly look at the United Kingdom, Europe, USA and the international patent (PCT) system.
United Kingdom
Post-grant
After grant of a patent in the UK, it is also possible to request revocation via the national courts (including the Patents County Court), as well as the UK Intellectual Property Office (UK IPO).
Under UK patent law, there are five grounds for revocation of a patent, which include:
- Non-patentability:
– The invention is not a patentable invention (for example, it is not new or inventive)
- Non-entitlement:
– The patent was granted to a person who was not entitled to be granted the patent
- Insufficiency:
– The patent specification does not disclose the invention clearly and completely enough for it to be performed
- Added matter:
– The subject-matter of the patent extends beyond the content of the originally filed application
- Unallowable extension:
– The protection conferred by the patent has been extended by an amendment which should not have been allowed
Except in the case that a revocation action is brought on the grounds of non-entitlement, which can only be initiated by a person entitled to the granted patent, it is possible for any person to apply for the revocation of a patent, even if the applicant is an agent acting for an undisclosed principal.
Non-entitlement actions must be brought within two years from grant of the patent; whereas revocation based on one of the other four grounds may be raised at any time during the term of the patent.
A cost effective way of bringing a revocation action, is to initiate proceedings before the UK IPO. However, this route provides patent proprietors with the right to appeal to the Patents Court (a specialised section of the UK High Court).
Another option is to bring an action in the Patents County Court. This has the aim of resolving cases more quickly and cheaply, particularly when the patent dispute is less complex.
If a patent is revoked, it is treated as never having existed.
Pre-grant
Another way of challenging the patentability of a competitors’ patent application is to file observations during the prosecution or pre-grant stage of the application, in other words, before it grants.
Observations can be filed against any patent application which relates to an invention which is considered not new or not patentable for some other reason. The observations will be taken into account by the UKIPO when deciding whether to grant the patent or not.
Observations filed before the UKIPO may be done so at any point after the patent application is published, and before it is granted. It is recommended that any such observations are filed within three months of publication, as the application may be granted after this time.
A major difference between the post-grant revocation procedure and the pre-grant observations procedure is that the person opposing the patent is allowed to take part in the revocation proceedings, but the person opposing the application by filing observations is not allowed to take part in the proceedings. Therefore, if filing observations, it is down to you to monitor the progress of the patent application at the UKIPO, and to submit follow-up observations before grant, if necessary and if things are not going your way.
Before the European Patent Office
Post-grant
Presently, the only way to challenge the validity of a European patent centrally (i.e. at the EPO), for all the designated states, is to file an Opposition against the grant of the European patent.
Opposition proceedings must be filed within nine months of the date of grant of a European patent and if successful, can result in the complete revocation or knock-out of the patent in all of the designated European states or territories covered by the patent.
The Opposition procedure is thus a consolidated process which allows a single challenge to be made that is effective in all countries covered by the patent.
A European patent can be challenged or opposed on the grounds of:
- Non-patentability:
– The invention is not a patentable invention (for example, it is not new or inventive)
- Insufficiency:
– The patent specification does not disclose the invention clearly and completely enough for it to be performed
- Added matter:
– The subject-matter of the patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or a new application filed stemming from a base parent application, beyond the content of the earlier application as filed.
In order to file for Opposition proceedings, it is necessary to compile any necessary evidence to support the grounds on which the challenge is based.
An Opposition must include a written reasoned statement of case in English, French or German, which provides, an indication of the facts, the evidence relied on and the arguments in support of the grounds upon which the opposition is based.
An Opposition fee is payable and as mentioned above, any such Opposition proceedings must be filed within nine months of the date of grant of the patent.
On acceptance of the Opposition, the European Patent Office (EPO) will forward the Opposition to the proprietor of the patent which is being challenged for their review. The proprietor is set a deadline in which to consider the Opposition and respond, by filing counter-arguments and/or amendments to overcome the objections. The opponent is then provided with the proprietor’s response and is given a period of time to file further arguments. Typically, at this stage, the case is considered by the Opposition Division at the EPO, and a decision is made.
Depending on the outcome of the decision, which may be that the patent is entirely revoked, is only partially revoked and thus maintained in amended form, or that the Opposition was dismissed and the patent is fully maintained in unamended form, the opponent and proprietor may be able to file for appeal. If the appeal maintains the decision, validity of the patent may still be challenged in each country via the national court.
Opposition proceedings normally take in the order of two to three years and can attract some significant costs. However, the centralised procedure does provide a cost-effective way to challenge a European patent, before the need arises to challenge the patent separately in each country in which the patent is validated.
Pre-grant
As in the UK, an additional way to challenge the patentability of a European patent application is to file observations. Observations may be filed after the European application is published, and prior to grant.
Again, observations may be filed on the grounds of patentability of the invention, with lack of novelty and/or inventive step being the most common argument. The observations may also be directed to the clarity of the application, sufficiency of disclosure, and unallowable amendments.
Observations must be filed in writing in English, French or German and must include a statement of grounds on which the arguments against patentability are based.
Although the third party is sent acknowledgment of the receipt of his observations, the EPO does not specifically inform the party of any further action it takes. The outcome of any review by the EPO will be noted in a communication by the EPO to the patent applicant, and the third party will have to monitor the patents register in order to keep abreast of developments.
United States
The United States Patent and Trademark Office (USPTO) have recently introduced a new rule that provides an independent third party with a mechanism to oppose a patent application, in order to reduce the likelihood of it being granted with an overly broad scope. This is known as a pre-issuance submission.
The rule, which came into effect on the 16 September 2012, provides means by which a third party can anonymously submit patents, published patent applications and other documents during the examination of a pending US patent application.
The third party submitting such documents has the opportunity to explain the relevance of each document, thus adding weight to any arguments submitted.
Any submissions must be made before the earlier of:
a) the date a notice of allowance is given, thereby indicating that the US application is in a condition for grant; or
b) the later of (i) 6 months after the date on which the application for a patent is published or (ii) the date of the first rejection of any claim by the examiner during the examination of an application.
The only date which can be determined with certainty is the date six months after the date on which the application is published (typically being 18 months after the earliest patent filing date). Accordingly, the most prudent time to make any submissions is as soon as practically possible after publication of the application.
There is no limit as to the type of publication that can be submitted.
When compared to contested proceedings, such as re-examination, post-grant review, or litigation, pre-issuance submission can be relatively inexpensive, with a large majority of the cost being attributable to the amount of time invested in the search for documents to submit. If the applicant is able to overcome the documents, the patent may be protected from any such future attacks based on the same prior art.
PCT Applications
An international patent application, also known as a PCT application, allows an applicant to file an international patent application, which is prosecuted at the ‘international phase’, before being converted into multiple separate national or regional patent applications in countries of interest.
During the international phase, the search for relevant prior art in relation to the PCT application is performed by an international search authority (ISA), which for UK originating international patent applications is the EPO. The applicant can optionally request that preliminary examination is carried out, based on the prior art found by the ISA.
Until recently, there was no way by which third parties could comment on the validity of an international patent application, whilst it is in the international phase. However, with the recent introduction of the World Intellectual Property Organisation’s ‘ePCT’ interface, it is now possible for third parties to submit observations on a PCT application, if they feel the invention lacks novelty or inventive step.
Using the ePCT interface, third parties may:
- submit observations on a PCT application from the PCT publication date and until 28 months from the priority date of the PCT application
- make just a single observation on any particular PCT application
- submit a maximum of ten observations on any particular PCT application
- submit any one observation consisting of a list of at least one and up to a maximum of ten citations that reference documents published prior to the international filing date (or have a publication date before the priority date of the international filing date), along with a brief indication of how each document is considered relevant to the patentability of the claimed invention
Following the filing of an observation, the applicant is permitted to respond to the observations until 30 months from the priority date of the PCT application. Any observations and responses by the applicant will be noted on the application, and passed to the ISA, the International Preliminary Examination Authority (IPEA) and any designated offices (i.e. the local or regional patent offices). It is then up to the individual offices to decide on the relevance of the observation and whether to take into account the observations submitted.
Any observations and responses will be made public, and can be searched on PATENTSCOPE, the patent database of the World Intellectual Property Office (WIPO).
Related Pages: UK patent, European patent, US patent, International (PCT) patent
If you would like further information, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide.
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