The Basic Of Patent Law - Revocation, Non-Infringement And Clearing The Way

Gowling WLG's intellectual property (IP) experts discuss challenges to validity, revocation actions, non-infringement and other procedures to remove the effect of an IP right, as part of their 'The basics of patent law' series.

This article is part of a series called 'The basics of patent law', covering: Types of intellectual property protection for inventions and granting procedure; Initiating proceedings; Infringement and related actions; Revocation, non-infringement and clearing the way; Procedure trial, appeal and settlement; Remedies and costs; Assignment and licensing; and the Unified Patent Court and Unitary Patent system.

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Venue Pursuant to the Patents Act 1977 (also referred to below as "PA"), section 72, a claim for revocation of a patent may be brought in the court or before the Comptroller-General of Patents, Designs and Trade Marks (the "Comptroller").

In England and Wales, the appropriate 'court' is the Patents Court or the Intellectual Property Enterprise Court, both of which form part of the Chancery Division of the High Court. In Scotland, the appropriate court for claims under the Patents Act is the Court of Session. Choice of court is discussed in more depth in our article titled ' Initiating proceedings'.

The Comptroller is separate to the courts and leads the UK Intellectual Property Office.

Where an application to the Comptroller has been made but has not yet been disposed of, the applicant may not apply to the court under the same section of the Patents Act (i.e. for revocation) in respect of the same patent without the agreement of the proprietor or the Comptroller's written certification that the question of whether the patent should be revoked would more properly be determined by the court.

Where the applicant is unsuccessful before the Comptroller, no application (other than by way of appeal or by way of putting validity in issue in proceedings for infringement) may be made to the court by that person under the same section of the Patents Act (i.e. for revocation), without the leave of the court (PA s.72(6)).

Proceedings in which the validity of a patent may be put in issue The Patents Act, section 74, provides an exhaustive list of the circumstances in which the validity of a patent may be put in issue:

by way of defence, in proceedings for infringement of the patent (pursuant to s.61 or s.69 (for infringement of rights conferred by publication of an application)); in proceedings for groundless threats of patent infringement proceedings (pursuant to s.70); in proceedings in which a (statutory) declaration of non-infringement is sought (pursuant to s.71); in proceedings for revocation pursuant to s.72 (discussed below); in disputes relating to the "Crown use" provisions of the Patents Act (discussed in our article titled ' Infringement and related actions'). The validity of a patent may not be put in issue in any other proceedings. In particular, no proceedings may be instituted seeking only a declaration regarding the validity or invalidity of a patent.

Grounds for revocation Revocation may be sought on one or more of the following grounds (PA s.72);

the invention is not a patentable invention; the specification of the patent does not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art; the matter disclosed in the specification of the patent extends beyond that disclosed in the relevant application as filed; and the protection conferred by the patent has been extended by an amendment that should not have been allowed. the patent was granted to a person who was not entitled to be granted that patent; Not a patentable invention Point i) refers to the conditions for patentability (PA s.1-4 & Sch. A2), the challenges under this head being that the patent lacks novelty, does not involve an inventive step, is not capable of industrial application or is otherwise excluded.

A concept central to patentability is the 'priority date' of the patent. The priority date of a patent is the date on which the application was filed, unless priority is claimed from an earlier patent application. Such an earlier application is described as a "priority document" and must have been made within up to one year before the later application, anywhere in the world, by the applicant or his predecessor in title. For a patent or...