The need-to-know on forum shopping for patent revocation

Patent revocation proceedings at the UK Intellectual Property Office (UKIPO) represent an attractive option for clearing the way in the UK.  The grounds for revocation are largely the same in both the European Patent Office (EPO) and the UKIPO, so how do they shape up in revoking patents?  We explore the reassuring similarities and the finer points of distinction between opposition proceedings at the EPO and revocation proceedings at the UKIPO.

EPO

Pros and cons

The biggest benefit of EPO oppositions is the possibility to wipe out a problem patent in all EPC contracting states in one go.

The main drawback of EPO oppositions is the nine-month, post-grant window in which an opposition may be filed.

The EPO does not have jurisdiction for patents granted by national authorities, so it may still be necessary to engage in national proceedings where other patents are in the way.

In for the long haul

Oppositions can be lengthy, sometimes lasting years.  The EPO have introduced a streamlined opposition procedure to start in July 2016, but the 15-month target window for finishing an opposition is perhaps still optimistic.

Relevant further arguments and prior art documents, as well as more auxiliary requests for claim amendments, can often be introduced later in proceedings.

A pre-hearing opinion is usually only given by the Opposition Division shortly before the hearing and almost always only once.

Decisions and decision-makers

The Opposition Division is made up of three technically specialised members.  It usually decides on the common general knowledge without the need for witnesses or textbook evidence.

A decision will be announced at the hearing, with written reasons given soon after.

Costs can theoretically be awarded, but this rarely happens, and usually each party pays its own costs.

The Law at the EPO

Oppositions at the EPO follow established EPO case law, for example interpreting the claims according to Article 69 EPC and its Protocol and assessing lack of inventive step (obviousness) using the problem-solution approach.

The EPO is usually satisfied to form a stance on common general knowledge based on the technical and legal skills and experience of the Opposition Division.

Appeals

To challenge a revocation decision from the Opposition Division, appeal to the EPO Boards of Appeal is possible.  The deadlines for both formal and substantive elements are reasonably short, at two and four months, respectively.  The appeal fee at the EPO is not insignificant.

Due to the well-known backlog of appeals at the EPO, it may take as long as four years for a decision to be issued, sometimes even longer.

UKIPO

Pros and cons

The UKIPO route is only useful for UK patents, making it less attractive when the EPO opposition window is open.

However, the UKIPO route is cheaper than the options available for UK Courts and generally speedier than proceedings at the EPO.

Even better, there is no deadline for bringing a revocation action at the UKIPO against a UK patent, so it is a useful extra card to have up your sleeve if the opposition deadline has passed.

Make your first case your best case

To balance out the strict adherence to procedure, expect a speedier conclusion at the UKIPO.  There is almost no back-log of revocation cases and the UKIPO must follow the overriding objective to deal with cases expeditiously and fairly.

There is little sympathy at the UKIPO for shoe-horning in of documents or arguments by petitioners for revocation after the initial submission.  Be prepared for short deadlines and do not rely on extensions of time.

Patent claim amendments can be considered and decided on before the hearing.

Decisions and decision-makers

A single Hearing Officer, not necessarily a specialist in the technology area, will decide the outcome of revocation proceedings at the UKIPO.

A decision can take several months to be issued and is in written format, with no indication of the outcome given at the hearing.

The loser contributes to the winner’s costs, on a fixed scale, unless either side has been outrageous in conduct.  In any event, do not expect a full reimbursement.

The Law at the UKIPO

Regardless of whether the patent was granted by the UKIPO or by the EPO, remember that UK case law applies.  In theory this is harmonised in Europe, but in practice the structure differs.  In particular, the UKIPO uses the Kirin-Amgen principles[1] for claim construction and the Pozzoli approach[2] for inventive step.

Compared to the problem-solution approach, the Pozzoli approach relies more heavily on evidence, such as witnesses or standard textbooks.

Appeals

To challenge a revocation decision from the UKIPO, appeal to the High Court is possible.  The deadlines for formalities are short, although the substantive elements can usually wait until much later.  Official fees are low for appeals to the High Court.

Depending on the court calendar and the issues to be heard, an appeal can sometimes be finished within a year.

Both EPO oppositions and appeals and UKIPO revocation proceedings can be beneficial to patent users.  Your usual attorney at GJE can advise you on your options for clearing the way in the UK.  We can offer particular expertise in EPO oppositions with our well-established oppositions team/

[1] Kirin-Amgen and others v Hoechst Marion Roussel Limited and others [2005] RPC 9

[2] [2007] EWCA Civ 588