The Comptroller of Patents has been given extra powers to revoke patents based on lack of novelty or inventive step.

The Comptroller of Patents has been given extra powers to revoke patents. Section 73 of the Patents Act 1977 previously gave the Comptroller power to revoke patents on his own initiative in two scenarios. First, if there was a prior unpublished application which anticipated the patent under s.2(3). Second, if a GB patent and an EP had been granted for the same invention having the same priority date filed by the same applicant.

As of 1 October the Comptroller may revoke a patent, on his own initiative, for lack of novelty or inventive step following an opinion from the Patent Opinion Service that the patent is invalid on one or both of those grounds.

Anyone can request an opinion on a patent from the Patent Opinions Service and by doing so set in train the procedure which could end in the revocation of the patent. There is clear scope for mischief-makers to put patentees to extra cost and distraction in defending their patents in this new forum, notwithstanding the government's insistence that the Comptroller will use this power to revoke only very clearly invalid patents.

This rather startling change is an extension to the Patent Opinions Service launched by the Intellectual Property Office (IPO) in 2005. A party may obtain the IPO's opinion on a range of issues including on the infringement and/or validity of a particular patent on payment of a £200 fee and submission of two copies each of the following:

  • 'patents form 17' (request for an opinion);
  • a statement setting out, in full, the facts of its case and its arguments or analysis with reference to which claims of the patent it would like the opinion to cover; and
  • any evidence or other documents referred to (procedure as set out in Part 8 of the Patent Rules).

The IPO will advertise the request, notify the patent holder, licensees and other parties identified as having an interest and invite everyone to make observations. Parties must file observations within four weeks of the advertisement. Those observations will be publicly available, and the person who filed the request, the patentee and an exclusive licensee may respond to those observations within two weeks of the closing of the previous four-week period.

The opinion will then be prepared and delivered. This opinion is "not binding for any purposes" and to date the procedure has been little used. Here is the interesting change: the opinion remains non-binding but, if it concludes that the patent is invalid for lack of novelty or inventive step, then the Comptroller now (as of 1 October 2014) has the power to revoke the patent on his own initiative.

That is to say, for the price of a statement and a £200 fee, parties can side-step the entire tiresome business of going to court to revoke a patent for lack of novelty or inventive step.

Now, of course it is not as draconian as that: the patentee may apply for a review of the opinion within three months of it being issued, and the Comptroller cannot revoke the patent until the patentee has had the opportunity to exhaust the review procedure and any subsequent appeal has been decided.

In the review procedure, all those who filed observations in the first instance procedure will be notified, including the person who filed the request, and the application for review will be advertised. Parties may file observations on the patentee's application and then the IPO will hold a hearing (unless parties agree to no hearing) and come to a decision.

That review decision can be appealed only by the patentee or exclusive licensee if it upholds the opinion in whole or in part (i.e. it still maintains that the patent is wholly or partially invalid).

The nature of the appeal is important in that it determines whether the new law has indeed brought in a procedure which circumvents the usual revocation procedure, or whether it is simply a longer route to a full High Court validity hearing.

The Government Consultation paper commented that there are no rules for the existing revocation process under s.73(1) (Comptroller's power to revoke on his own initiative) and consequently the new process will mirror the old one. This includes the appeal procedure, which is therefore governed by s.97 PA and the Civil Procedure Rules. Civil Procedure Rule 63.16 specifies that appeals from the Comptroller are subject to CPR 52, which states that:

  1. Every appeal will be limited to a review of the decision of the lower court unless -
    1. a practice direction makes different provision for a particular category of appeal; or
    2. the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a re-hearing.

In turn, this leads us to Practice Direction 9.1 which states that:

The hearing of an appeal will be a re-hearing (as opposed to a review of the decision of the lower court) if the appeal is from the decision of a minister, person or other body and the minister, person or other body -

  1. did not hold a hearing to come to that decision; or
  2. held a hearing to come to that decision, but the procedure adopted did not provide for the consideration of evidence.

The Manual of Patent Practice states that "an appeal to the Patents Court is limited to a review of the comptroller’s decision, unless the court considers that in the circumstances of an individual appeal, it would be in the interests of justice to hold a re-hearing."

The general rule is that appellate courts are reluctant to interfere in a first instance decision unless there is an error of principle or it is plainly wrong on the evidence and the case-law relating to appeals against IPO decisions supports this position.

Assuming that appeals are a review, not a re-hearing, then perhaps a patentee might be able nonetheless to introduce new evidence to bolster its argument (the most likely being a request to cross-examine a witness). However, the law generally prohibits evidence which was not before the lower court unless the criteria set down in Ladd v Marshall [1954] 1 W.L.R. 1489 are fulfilled. Those are that:

  1. the evidence could not have been obtained with reasonable diligence for use at the original hearing;
  2. if given, the evidence would probably have had an important influence on the result of the case, though it need not be decisive; and
  3. the evidence is such as presumably to be believed i.e. it must be apparently credible, although it need not be incontrovertible.

Again, case-law indicates that it is difficult to introduce new evidence.

Might there be another way for a patentee to appeal? Could the patentee appeal not against the review decision, but against the decision by the Comptroller to revoke the patent or perhaps against the revocation itself? A decision by a government body is subject to judicial review, but could a full validity re-hearing be crowbarred into a judicial review?

It seems more likely that the High Court would back the Comptroller and hold that he was entitled to make the decision on the evidence before him.

Notwithstanding the intricacies of how a patentee might appeal, it appears that a patent is at greater risk now than last month. The only cost risk for a party filing a request for an opinion, to set in train this sequence of events, is the £200 fee and the cost of preparing the statement and evidence to request the opinion and contribute to the review.

There is no liability for the patentee's costs in the event of a failed attack on the patent (but conversely the patentee might be required to pay some costs of other parties following a failed review). Mischief-makers may be drawn to the idea of putting patentees to the distraction and expense of defending patents either in their own name or by a straw man.

A chink of light for patentees lies in High Court costs provisions. Assume that the Comptroller revokes a patent but the patentee fights his corner all the way to a successful High Court appeal. The patentee will then be entitled to recover his costs from the Comptroller. This risk, and the time commitment to defending against appeals, should ensure that the Comptroller will be circumspect about using his new powers. Indeed, the various government documents introducing the new power make clear that the Comptroller will use it only in very clear cut cases. Further, the speedy procedure should mean that it is ineffective as a torpedo to stay an infringement action.