Recent changes in the UK mean that it may now be easier, quicker and cheaper to get a UK patent revoked using the UK Intellectual Property Office (IPO) Opinion Service and new powers given to the Comptroller of the IPO.
In particular the IPO now has new powers to revoke a patent on its own initiative if the IPO’s Opinion Service finds the patent not to be new, and/or not to be inventive. The Comptroller’s new power allows parties to avoid going to court to get a patent revoked, so avoiding the costs and time delays involved with legal proceedings. This applies both to UK applications and to the UK designation of European applications.
Anyone can make a request for an Opinion about the validity of a patent and the official fee is just £200. In addition to the fee, a document setting out the question on which you want an Opinion and your arguments and evidence must be provided.
Getting an Opinion in your favour, stating that the patent in question is not novel or inventive, is not the final step. The IPO has discretion as to whether or not to revoke a patent following a negative Opinion, and is only likely to do so in clear-cut cases. The patent owner also has the option of requesting a review of the Opinion, and, if the Opinion is upheld, the patent would not be revoked without the patent owner being given an opportunity to make amendments. Providing robust arguments in the initial request for an Opinion against all of the claims which you think should be revoked is therefore crucial, so we strongly recommend getting in contact with your Barker Brettell attorney to discuss preparing any requests.
If you find a granted UK patent which you think should not have been granted, perhaps owned by a competitor, requesting an Opinion is now a powerful and cheap tool for attacking the patent. Even if the patent is not revoked as a result, an Opinion in your favour might be useful in any subsequent negotiations or court proceedings although the Opinion given by the IPO is not binding in any way on the courts of the UK.