Revocation and Validity of Patent in the United Kingdom
The Patent Act 1977, specifies that the patent will be infringed if it is granted and in force and without consent. Section 60 states that the subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom concerning the invention without the consent of the proprietor of the patent, such things consist of using or disposing of the invention without the consent. Here we will discuss the basics of the revocation and the validity of the patent in the UK and the law that govern it.
Revocation in the United Kingdom
As we talk about the revocation proceedings, the claim for revocation can be brought under Section 72 of the Patent Act 1977. Such claim for revocation can be brought before the Comptroller General of Patent, Designs, and Trade Mark. In the UK, if we talk about the appropriate forum for dispute resolution, there is the Patent Court which is a part of the Chancery Division of the High Court and the other is Comptroller which is separate from the court and led the UK intellectual Property Office. Mostly similar to grounds in other jurisdictions, Section 72(1) speaks about the grounds-
It states that Subject to the following provisions of this Act, the court or the comptroller may by order revoke a patent for an invention on the application of any person (including the proprietor of the patent) on (but only on) any of the following grounds, that is to say:
(a) the invention is not a patentable invention;
(b) that the patent was granted to a person who was not entitled to be granted that patent;
(c) the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed;
(e) the protection conferred by the patent has been extended by an amendment that should not have been allowed.
Two clauses become very important for us. These are Section 72(6) and Section 72(7).
Section 72(6) states that where the comptroller refuses to grant an application made to him by any person under this section, no application (otherwise 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 this section in relation to the patent concerned, without the leave of the court. And Section 72(7) states that where the comptroller has not disposed of an application made to him under this section, the applicant may not apply to the court under this section in respect of the patent concerned unless either:
(a) the proprietor of the patent agrees that the applicant may so apply, or
(b) the comptroller certifies in writing that it appears to him that the question of whether the patent should be revoked is one which would more properly be determined by the court.
Questioning the Validity of the Patent
If we talk about the validity of the patent, it may be questioned by any third party. For such a situation, the act provides an exhaustive list of the situation in which the issue might be raised for validity. Such a situation is described under Section 74(1) and 74(2). Section 74(1) states that subject to the following provisions of this section, the validity of a patent may be put in issue –
(a) by way of defense, in proceedings for infringement of the patent under section 61 above or proceedings under section 69 above for infringement of rights conferred by the publication of an application;
(b) proceedings in respect of an actionable threat under section 70A above;
(c) in proceedings in which a declaration in relation to the patent is sought under section 71 above;
(d) in proceedings before the court or the comptroller under section 72 above for the revocation of the patent;
(e) in proceedings under section 58 above.
Section 74(2) states that the validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.
In the follow-on pieces, we will discuss patentability in the UK with few important cases.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back Global Patent Filing us at firstname.lastname@example.org.