The (little-known) route to patent revocation

All too frequently, a business discovers a competitor’s patent lurking in the wings, standing in the way of a new project or commercial product. However a very small percentage of those businesses know that patent revocation actions before the UK Intellectual Property Office can play a fundamental part in securing their route to market.

They are available at a fraction of the cost of going to court, which is the only way to revoke a patent in most European countries after a certain point. GJE has now filed more UKIPO revocation actions on behalf of clients than any other law firm and, more importantly, we have racked up an impressive 80% success rate.

Our experience in UKIPO revocation actions has taught us some valuable lessons and we would like to share some of those in this article.

You may be familiar with the EPO opposition procedure, as it is often a first line of attack against a European patent. However, once that opportunity has passed with the expiration of the nine-month opposition deadline, or if you find a competitor has a UK patent instead of a European patent, this is no longer an option.

What can you do then? For many lawyers, two words will immediately spring to mind: court action. This can be very effective, but it can also be expensive and time-consuming, with costs easily exceeding £100,000 and years before a final decision is reached. However, there is another way to revoke a UK patent without spending so much. It is as effective as court action but is, surprisingly, much less well-known.

That alternative is to file a patent revocation action with the UK Intellectual Property Office, which will be heard by a UKIPO hearing officer instead of a court judge.

This can achieve full revocation of a patent in the same way as a court, but with several advantages:

1. It keeps costs down

A UKIPO revocation action that is not defended might cost only £5,000 and if the case is defended, the whole process would typically cost between £40,000 and £90,000. In contrast, costs for a patent revocation before a court would easily exceed the £100,000 mark and frequently even hit £500,000 and beyond.

2. It’s quicker

The decision is reached more quickly – in fact many cases are over within a year. The UKIPO aims to issue a revocation decision within nine weeks of the hearing whereas courts or the EPO can take years.

3. It’s easier

The whole procedure is less complicated than it would be in the High Court. For example, there is no disclosure (the procedure where parties to a lawsuit have to tell the other side about all and any relevant documents), which is always time consuming and costly. Disclosure is very rarely requested by the UKIPO but is almost always involved in court proceedings.

4. It’s all over quicker

Hearings are usually over in one or two days while court cases will be much longer.

5. No deadlines

There is no deadline to keep to. A UKIPO revocation action may be filed at any time.

6. Evidence

Unlike in the European Patent Office, parties have to supply their own expert evidence before the UKIPO, and it is the evidence presented that is often instrumental to winning or losing a case.  Cross-examination is also used in UK proceedings so you can directly put the other side’s evidence to the test.

If you think there is a third-party UK patent that could potentially pose a difficulty for your business, speak to Josh Price or your usual GJE contact to see whether a UKIPO revocation action could play a role in your IP strategy. Our experience in these matters speaks for itself: GJE has filed more UKIPO revocation actions than any other firm, and our success rate stands at 80%.