Under UK patent law, there are five grounds for revocation of a patent, which include: 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. However, this route provides patent proprietors with the right to appeal to the Patents Court a specialised section of the UK High 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. 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.
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: 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. Typically, at this stage, the case is considered by the Opposition Division at the EPO, and a decision is made. Validity of the patent may still be challenged in each country via the national court. 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. 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.