Having issued a negative opinion on its validity, the UK Intellectual Property Office (“UKIPO”) has had the power subsequently to automatically revoke a patent since October 2014. However, it has taken until this month for them to exercise this discretion for the first time. Fujifilm Corporation’s GB granted patent deriving from EP1837182, entitled “Ink washing liquid and cleaning method”, has been revoked following the issue of a negative opinion on validity, and the lack of any response from the Proprietor in respect of that opinion and the Official Letters that were issued subsequently.
In March 2015, Acredian IP – presumably acting on instructions from a third party who wished to remain anonymous – requested an opinion on validity in respect of Fujifilm Corporation’s GB(EP) patent.
The patent Proprietor was given several opportunities to contest the opinion and/or amend the patent and did not make any submissions. The UK Manual of Patent Practice sets out that if the Proprietor fails to respond to the invitation to contest the opinion and/or amend the patent, they will be offered a hearing. It seems that if the Proprietor remains unresponsive at this stage then the patent will be revoked.
There has been only one other case so far in which revocation by the UKIPO following a negative opinion has been threatened and a Decision has issued, namely GB2487996. In that case the Proprietor contested the UKIPO opinion and actively defended their patent throughout the proceedings. In view of the Proprietor’s arguments the UKIPO decided there was no need to revoke the patent, whereas in the current case Fujifilm Corporation did not respond to any of the UKIPO Communications and have not contested the UKIPO opinion at any stage.
It is interesting to note also that although three documents were relied upon by Acredian IP to back up their request that the patent be considered invalid, only one of these was considered by the UKIPO. This was a document that had not been considered by the European Patent Office (EPO) during examination of the European application (although it had been cited and considered in the corresponding application in the United States). In contrast, the other two documents were cited during prosecution of the European application, and the UKIPO did not consider these documents, despite assertions by Acredian IP that they were insufficiently considered by the EPO.
It seems the UKIPO is likely to be reluctant to reconsider documents which have already been considered by the Examiner during the application procedure - particularly if these were considered previously with reference to novelty and/or inventive step.
In terms of practical lessons to be learned from this case, for patent Proprietors it seems that contesting a negative opinion is crucial to avoiding revocation. If you have missed all opportunities to contest the UKIPO opinion then it is possible to Appeal to the Patents Court in respect of the Decision to revoke the patent, but the deadline for doing so is short – 28 days from the date of the decision – and it would be expensive.
On the flip side, requesting an opinion on validity could offer an effective route to knocking out a GB patent, which is likely to be considerably cheaper than revocation proceedings and could be pursued anonymously. The chances of success are likely to be improved if prior art documents can be found which were not considered by the EPO.