Losing patent protection is generally undesirable from the perspective of a patent owner, especially if you haven’t maximised the market potential of your product. So, when the UK Intellectual Property Office (UK IPO) grants you a patent, you wouldn’t necessarily expect them to say that they intend to revoke that same patent soon afterwards, right?
This August 2017 decision of the UK IPO demonstrates why claiming priority and managing your patent application(s) properly from the beginning is vital.
In the beginning
In the case at issue, the applicant and inventor (Derrick Green) filed a GB patent application on 23rd November 2011 (let’s call it GB1). He also filed an international (PCT) patent application on 22nd May 2013 (outside the priority period, and so couldn’t claim priority – mistake #1).
The GB application was allowed to publish on 29th May 2013 (as it turned out, mistake #2). This was after the PCT application was filed, so the GB application was available as ‘novelty-only’ prior art for the PCT application (so it wasn’t relevant for inventive step). Unfortunately, it appears that the content of the PCT application as filed was identical to the earlier GB application (mistake #3).
It also appears that, having switched focus to the PCT application, the GB application was effectively forgotten about. No request for substantive examination was filed for the GB application (mistake #4) and the application was eventually terminated.
In the meantime, the PCT application was converted into a GB ‘national phase’ application and a European ‘regional phase’ application, amongst others. In the end, the resulting GB patent (let’s call it GB2) was published as granted on 28th December 2016, and the European patent was published as granted on 27th September 2017. Except that isn’t the end.
Enter the UK IPO
In certain circumstances, the UK IPO has the power to revoke a patent of its own motion. This includes a scenario where the claimed invention of a patent is not novel (i.e. not new). And that is exactly the case here. Around a week after granting the patent (GB2), the UK IPO moved to revoke it.
Even though it was his own patent application, Derrick’s lapsed GB patent application (GB1) is prior art for his PCT-derived GB patent (GB2), because it was filed earlier than GB2 and there was no priority claim. That means that GB2 was not novel at its date of filing, and so the patent GB2 is not valid, and should not have been granted. This isn’t the USA, where a first ‘provisional’ application doesn’t ever publish, and where an inventor’s own disclosure doesn’t necessarily count against them. In the UK, publication of the original patent application GB1 was fatal for GB2.
What about the European application?
You may know that it is possible to get a GB patent via a European patent application (referred to as an EP(GB) patent). Unfortunately, however, the same rules apply with respect to revocation of an EP(GB) patent. The content of the European application will be the same as the original PCT application which led to GB2. Anything else would count as added matter, which is prohibited.
Therefore, the EP(GB) patent will inevitably be unenforceable (and should also be revoked by the UK IPO in due course). And that is how you can lose the same patent three times – once for the original application (GB1), once for the PCT-derived GB patent (GB2), and once more for the EP(GB) patent.
If we could turn back time
There are a number of things that could have been done to avoid the loss of GB patent protection in this case:
1) File all of the necessary follow-up patent applications within 12 months of the first filing.
- This allows you to claim priority, and have all of the applications treated as if they were filed on the same day. That way, none of them can serve as prior art for the others. Doing this would have essentially avoided all of Mr. Green’s problems.
2) If (1) isn’t possible for whatever reason, then:
- File the follow-up patent application(s) before the first application is published and add extra information to the new application(s) prior to filing, i.e. features which are not present in the first filing; or
- Actively withdraw your first application before it is ready for publication (in the UK, that is usually 5 weeks before it is scheduled for publication), leaving no rights outstanding, and then file a follow-up patent application in the UK, so that the priority period begins anew.
- This means that the old application isn’t going to be published, and so cannot serve as the basis for revocation, or that you have extra features to put in the claims and circumvent the eventual novelty objection in some way.
3) Instead of withdrawing the first filing as in 2(b), request examination of that application before the deadline.
- This ensures that the application is queued for examination. GB1 could then have been available to provide corresponding patent protection in the UK, in place of the vulnerable GB2 and EP(GB) patents.
- Note that the UK IPO used to issue a warning if examination wasn’t requested on time. That hasn’t been the case since 1st July 2014, so the onus is on the applicant to remember.
- If you don’t request examination, you won’t receive any notification from the UK IPO, your patent application will just end up being terminated. Therefore, it is important to closely manage your patent portfolio to avoid losing vital protection.
4) As a final resort, if examination isn’t requested and the application lapses, request reinstatement within 12 months of the missed deadline.
- In this case, the inventor tried to reinstate GB1, but it was over 3 years from the deadline, and even though the loss may have been unintentional, the 12 month period is the legal limit, so the request for reinstatement was not allowed.
As always, it is easy to assess the situation with the benefit of hindsight, but it is clear that there were several stages at which to potentially avoid guaranteed loss of GB patent protection.
The experienced attorneys at Albright IP are here to advise you and help you to navigate through complex intellectual property matters, including patent portfolio management. If you need any advice regarding patents or other IP issues, please feel free to contact us for a free consultation.