What should you do if your patent comes under attack? Simple – contact your patent attorney at Albright IP!
That is exactly what one of our clients did, and we are pleased to have successfully defended his granted patent GB2502993 against a spurious attack by the former patent licensee, Bollard Proof, as decided by the UK Intellectual Property Office (IPO).
How did it all start?
We originally drafted and filed the patent back in 2012. The patent relates to a bollard load-testing apparatus (Fig 1.) which can be adjusted to apply loads at different angles. This provides a better way of assessing whether marine bollards are in good enough condition to handle the high loads applied by ship mooring lines. Figure 1 of the patent shows the patented invention:
Fig 1. The patented invention can apply load to a marine bollard at different angles.
Conventional bollard load-testing devices were nothing like the claimed invention, so the grant procedure was fairly straightforward and the patent was granted in 2016.
Of course, getting a granted patent is just one step along the road to commercial success. The patent was licensed in 2019 in an effort to bring this important new technology to market. Unfortunately the licensee didn’t hold up their end of the bargain, and they instead tried (and failed) to revoke the patent at the UK IPO, beginning in January 2022.
How does patent revocation work?
A patent is intended to protect an invention which is new and non-obvious over other things which are already publicly known. Patent Offices search and examine patent applications in an effort to ensure that they don’t grant patents for known or obvious variations of existing technology. Of course, Patent Offices are not infallible and they don’t always find everything that is relevant to patentability.
If that happens, it is possible to get a patent revoked by applying to the court or to the UK IPO. There are pros and cons to each forum. Revocation at the UK IPO can often be seen as safer and cheaper, because if you lose then the costs award against you is substantially lower than if you litigate in court.
A testing time for the patent
In the case at hand, the licensee found a test rig (Fig 2.) developed in the USA around 2007, i.e. prior to the patent filing date. Instead of having any sort of angle-adjustable frame, the prior art device was designed purely to test bollard load capacity at a single load angle. An important difference was that it used a beam on a greased ramp to transfer the load to the bollard.
Fig 2. The prior art test rig as shown in the UK IPO’s decision BL O/0052/23.
Nonetheless, the testing arrangement described was just about close enough to pose a risk to the patent, so we filed a post-grant amendment to limit the patent claims. This made it clear that the patent only related to an angle-adjustable load testing device, with a pivotable second frame adapted to apply the load, which still provides a commercially useful scope of protection. Whilst this clearly distinguished the patent from the new prior art, the (by that stage, former) licensee chose to continue the revocation action anyway, perhaps thinking that they could still revoke the patent even if it meant a Pyrrhic victory for them.
A pivotal decision – the patent pulls through
Following evidence rounds, including expert evidence where the licensee engaged their own director as their expert witness (despite potential conflict of interest), the case went to a hearing before the UK IPO in November 2022.
A little over two months later, and just under one year since the revocation action was filed, the Hearing Officer issued their decision to maintain the patent using the exact amendments that we had filed months earlier.
The crux of the matter was to frame the invention in the right way. The licensee attempted to argue that it would be obvious to incorporate a pivot arrangement into the known test rig, but this hinged on a faulty assumption that it could be simply “put into” the existing working arrangement. Just because pivot joints are well-known doesn’t mean it is obvious to put them everywhere! The prior art device didn’t have any change in the angle of load application at all, and only made passing reference to “minor modifications” needed for a change of angle (i.e. bolting in a different greased ramp at a different angle), hardly enough to invalidate the patent.
The Hearing Officer agreed with us that the claims as amended were not obvious, and that the patent should remain granted and in force. It can be easy to fall into the trap of thinking that something is obvious when actually it isn’t; at least, not obvious when it comes to patenting. Now, the patent is ‘fireproofed’, and more valuable as a result.
If you have a granted patent in need of defence, or if you wish to attack a granted patent, we would be pleased to assist. And, on a related note, if you have a new invention but you are wondering whether it’s obvious or not, it is worth getting an attorney’s input – a skilfully drafted patent specification can make all the difference in getting (and keeping) a granted patent.
If you have any questions about patents or IP in general, contact us by email or by telephone on +44 (0) 1242 691 801, or using the form below, and we will be happy to advise and guide you.
