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GJE act in all (100%) decided UKIPO patent revocation actions in 2016

Statistics show that GJE has unparalleled experience with the firm acting in all decided revocation actions at the UK IPO in 2016! [1]

Before we get too carried away with this hyperbole, we must be frank … there were only three — with GJE acting as claimant and defendant in different cases. They say you can show anything with statistics! In all seriousness, the recent experience we’ve had of this forum allows us to compare the merits of this underused jurisdiction against the more popular and widely known revocation forums.

One of the advantages to the UK IPO procedure is the flexibility of the decisions. In two of the cases decided in 2016, the hearing officer gave unconventional decisions. For example, in one case the hearing officer proposed an amendment he felt would provide an inventive claim and left the file open for further prosecution. In another, the hearing officer issued an interim decision on limited issues and provided parties with an opportunity to provide further evidence on the undecided issues.

When compared to other forums, the procedure appears much less formal, with the procedure being managed by the excellent hearings team who are always more than willing to help and are flexible and proactive in the case management process with the legal teams. Nevertheless, the hearing itself and the written communication is far closer to court proceedings than you might think. For example, there is a fundamentally different approach to inventive step from the EPO, requiring appropriate expert evidence on common general knowledge. The procedures are common with the other UK courts and so running an EPO-style case is not appropriate.

Practically speaking, hearings can be looked after by a mixture of patent attorneys and/or barristers of different levels and experience, allowing for a blended approach depending on the commercial circumstances. This latter point is important and leads to another advantage of the process — cost certainty. Unlike other forums, while certain costs are recoverable from the losing side, the costs are set at a sliding scale and are negligible, providing a clear and predictable cost for the proceedings, at least at first instance. This applies even where there has been an abuse of procedure. As experience has shown, cost penalties are small even on the odd occasion when they are awarded. Decisions of the UK IPO are appealable to the High Court where costs are not capped and so the total potential costs must also still be considered.

Recent efforts by comparative forums to accelerate proceedings and provide a defined timeframe for a decision mean that the UK IPO no longer holds a speed advantage.

To revoke a patent in the UK there are a variety of different options —a UK IPO action, the Intellectual Property and Enterprise Court, the High Court and (for EP patents having effect in the UK) the EPO Opposition procedure (more details here). Each forum has its pros and cons and it is important that the route chosen is led by the commercial priorities and the circumstances.

[1] https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-gen.htm?YearFrom=2016&YearTo=2016