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IP Cases & Commentary – Details

17 March 2010

Challenging Competitors' Patents in the UK - Patent Revocation

Garreth Duncan

In addition to the centralised EPO opposition procedure, it is also possible to request revocation of the UK part of European patents, as well as UK national patents, via the UK national courts or the UK IP Office (UKIPO). Revocation actions are often brought as a counter-claim by defendants in infringement actions. However, it is becoming increasingly common, particularly in the pharmaceutical sector, for companies to “clear the way” by applying to revoke relevant competitors’ patents prior to launch of a product.

If a patent is revoked by the UKIPO or court, it is treated as never having existed. Under UK patent law, there are five grounds for revocation of a patent:

Non-patentability: the invention is not patentable (i.e. it is not novel or inventive, or it relates to excluded subject-matter such as business methods or methods of medical treatment);

Non-entitlement: the patent was granted to a person not entitled to it;

Insufficiency: the patent specification does not describe the invention sufficiently to enable it to be reproduced by the skilled person;

Added matter: the subject-matter of the patent extends beyond the content of the originally filed application;

Unallowable post-grant extension: the protection conferred by the patent has been extended by an amendment after grant but which should not have been allowed.

A patent may only be revoked for non-entitlement after the UKIPO or court has established the person applying for revocation was the person entitled to the patent, and must be brought within 2 years from grant of the patent (unless the patent proprietor knew at the time of grant he was not entitled to it). The other grounds for revocation may be raised at any time during the term of the patent (including an SPC term).

There are three possible forums for revoking patents in the UK: each has the power to transfer the case to one of the others if they consider that the matter would be better dealt with in that forum.

Patents Court

This is a specialised section of the UK High Court with specially qualified patents judges. If the proprietor is claiming for infringement of the patent, the issues of infringement and validity are heard together. Parties have the right to disclosure and to cross-examine witnesses. Patent attorneys have no right of audience in the Patents Court: a barrister or solicitor-advocate presents the case. Typically, infringement / revocation actions in the Patents Court take 9-18 months from filing the initial claim to trial and cost in the region of £200,000 to £500,000 for straight-forward cases but can cost upto and more than £1,000,000 for complex cases.

Patents County Court (PCC)

This is an alternative court aimed at resolving shorter and less complex patent disputes (especially between small and medium sized entities) more cheaply and quickly. A specialist patents judge also sits in the PCC. Parties wishing to use the PCC must generally file facts and evidence earlier in the proceedings than with the Patents Court, and disclosure of documents and cross-examination of witnesses is limited in comparison with Patents Court cases. Unlike in the Patents Court, a patent attorney may represent a party before the PCC. Typically, infringement / revocation actions in the PCC take around 6-9 months from filing the claim to trial and may cost in the region of £20,000 to £100,000. The nature of the type of proceedings handled by the PCC and the manner in which they are handled is currently under review.

UKIPO

Proceedings before the UKIPO are almost completely in writing, and disclosure of documents and cross-examination of witnesses is even more limited in comparison with Patents Court or PCC cases. A patent attorney may also represent a party seeking to revoke a patent before the UKIPO. Typically, infringement / revocation actions in the UKIPO take around 6-9 months and may cost in the region of £10,000 to £50,000. There will be a hearing if experts are to be cross-examined.

Decisions of the UKIPO can be appealed to the Patents Court. Decisions of each of the Courts may be appealed to the Court of Appeal: leave is required for a further appeal to the UK Supreme Court, and is only granted on points of law.

It is possible to commence UK national revocation proceedings even if parallel EPO opposition proceedings are pending. The UK courts have the power to stay proceedings if there is a concurrent EPO opposition.

For further information, please contact your usual advisor at D Young & Co.

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