IPO can revoke patents on its own initiative (Section 16)
The IPO has for several years offered opinions on the infringement or validity of patents (find more information here). These opinions can be helpful as a way of resolving disputes or minimising wasted expenditure on doomed applications. Since October 2014 the IPO has been able to set the grounds on which it is able to give opinions (by changing the applicable rules). In addition, the opinions service will also apply to Supplementary Protection Certificates.
However, in our view the critical change is that the IPO will be able, on its own initiative, to revoke patents on which it has finally opined that the relevant invention is not new (already known) and/or does not involve an inventive step (too obvious), provided that no further review or appeal is available. Patent owners should consider the risk that opinions will be used as weapons to provoke revocation actions by the IPO, but also that seeking an opinion may backfire on the applicant if the IPO decides the applicant is wrong about its position. In addition, it is worth remembering that the opinion process is an open one in which evidence is submitted and the opinion is published by the IPO, so it is not a subtle or quiet way to resolve disputes and could be quite embarrassing if the opinion has the unintended adverse result of revocation.
The indication from the IPO is that this right will be used only in clear cases. In addition, patent owners will be given an appropriate opportunity to make observations concerning the subject matter of the opinion and amend their patent specifications (without adding additional matter). Patent owners should monitor any published opinions/revocations carefully so that they can predict, as far as possible, the IPO’s activity in relation to opinions.
Avoiding the innocent infringer’s defence; no need to mark your product with a patent number (Section 15)
Section 62 of the Patents Act 1977 allows, in certain circumstances, infringers who are unaware of the relevant patent (innocent infringers) to escape the payment to the patent owner of damages and an account of profits made from infringing products. Historically, this defence to such claims for damages would not be available where the infringed product had been marked with the applicable patent number(s) - the word “patent” or “patented” alone is not enough.
The IP Act now expands this rule to allow patent owners to mark products with a link to a website containing the details of the relevant patent(s). This is good news for patent owners because there will be no need to update products with different patent numbers as applicable, with all the production and tooling costs such a restriction would require. Instead, the product owner can simply update the patent details on the website, putting would-be infringers on notice and allowing recovery of damages from them. It is not enough to refer to a homepage, you must mark any patented products with a specific web page that shows a clear association between product and patent(s) and is freely accessible to the public. Start to look for demonstrations of such marking (for example: “patent: www.[LifeSciCo].com/patents”).
Path laid out for the unitary patents; but still a way to go (Section 17)
Section 17 paves the way for the UK to give effect to the Agreement on a Unified Patent Court made in Brussels on 19 February 2013. The unitary patent system would allow applications to the EPO for a patent that covers the territory of the participating European countries. Litigation concerning such patents would be conducted in a specific Unified Patent Court created for that purpose, although the court would have a presence in a number of countries. The idea is to reduce the administrative and financial burden attached to gaining pan-European protection. We await an order from the Secretary of State bringing it all into effect (subject to parliamentary approval) – so we’re not there yet by any means. The good news for the UK life science industry is that the main seat of the UPC for disputes concerning chemistry and pharmaceutical unitary patents will be London. We discuss unitary patents in more detail above.
Improved sharing of information between patent offices (Section 18)
Protecting the confidentiality of information relating to inventions is a constant concern of those interested in patents. However, an arguably greater concern is the time it takes to get the desired protection. In an effort to streamline international cooperation, the IP Act will give the IPO greater freedom to share information concerning patent applications (on a confidential basis) with other national registries. Whilst the need to streamline the process is important, the registries must have adequate protections against unauthorised access or disclosure of technical information relating to unpublished patent applications. The IPO has promised to put in place worksharing agreements with any such registries, and make the details of such arrangements available on its website. There are already questions in the application forms that allow applicants to give the IPO permission to share pre-publication information with other registries, so this change essentially deems that answer to be affirmative.