New routes to freedom to operate in the UK

What can you do when you find your path to the UK market impeded by a UK patent? [a].  Historically, removing such a freedom to operate obstacle would have required costly litigation in the UK courts, a product work-around, or taking a license.

A work-around is not always possible, or effective.  A license is not always forthcoming, and often not on terms that would enable effective competition with the licensor.

When re-engineering or negotiation proves ineffective, and established routes through the courts or oppositions are too costly or unavailable, the UK now offers a greater variety of options for third parties to challenge problem patents.  Arnie Clarke, a partner in GJE’s Chemicals and Life Sciences team, specialising in oppositions and appeals at the European Patent Office, discusses the options available, how can they be utilised to good effect and what is the future for these tactics?

Apply to the UK Intellectual Property Office to revoke a patent

The UKIPO can revoke both UK and EP(UK) patents.  Proceedings are relatively quick and in most cases the recoverable costs for the winning party are pegged to a modest scale.  Official fees are low (currently £400) and an oral hearing is not always necessary.

The law is the same before the UKIPO as it is before the High Court, but the setup may be more accessible to those put off by the stress and expense of High Court proceedings, such as SMEs.  It is not necessary to appoint a barrister or solicitor: our UK patent attorneys at GJE are qualified to represent you in proceedings before the UKIPO, and have experience in doing so.  If things don’t go your way, decisions of the UKIPO in revocation proceedings can be appealed to the High Court.

Request an Opinion on validity from the UK Intellectual Property Office

The UKIPO continues to offer an Opinions service.  Amongst other issues, the UKIPO will issue an opinion on the validity of an EP(UK) or UK patent.  Official fees are low (£200) and the patent will be assessed by a senior examiner based on the evidence and arguments submitted by the requester.

Due to a law change in October 2014, an opinion finding a patent invalid can lead to revocation if the patentee does not amend the patent.

UKIPO opinions present a very attractive alternative technique to clear the way in the UK.  The requester can remain anonymous throughout and revocation can be cheaply achieved in some cases.  There are no recoverable costs for either the patentee or the requester, so budgets can be tightly controlled.

The UKIPO is showing that it will revoke patents in the absence of convincing arguments or amendments after an opinion that finds a patent to lack validity.

Make an informed decision

Before launching into any contentious proceedings it is always wise to discuss your strategy with your legal adviser.  GJE’s qualified European and UK patent attorneys have considerable experience in helping clients to clear the way both in Europe and in the UK.

For more information please contact Arnie Clarke or Harriet Crawford.

[a] Patents in the UK are granted by either the European Patent Office (EPO) or the UK Intellectual Property Office (UKIPO).  We will refer to these as EP(UK) patents and UK patents, respectively, although for the most part the same provisions apply to both.

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