Manual of Patent Practice

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Section 72: Power to revoke patents on application

Sections (72.01 - 72.45) last updated: January 2016.

72.01

s.77(1) s.130(7) is also relevant.

This section provides for the revocation of patents granted under the 1977 Act, including European patents (UK). Section 72(1) and (2) are so framed as to have, as nearly as practicable, the same effects as the corresponding provisions of the EPC and CPC. These are Articles 100 and 138(1) of the EPC and Article 57(1) (renumbered in December 1989 as Article 56(1) [1989]) of the CPC.

72.02

The following discussion is largely concerned with revocation proceedings brought before the comptroller. Procedure in applications to the Patents Court and Patents County Court, which is outside the scope of this Manual, is governed by Part 63 of the Civil Procedure Rules and the Practice Direction supplementing Part 63.

 
Section 72(1)
Subject to the following provisions of this Act, the court or the comptroller may by order revoke a patent for an invention on the application of any person (including the proprietor of the patent) on (but only on) any of the following grounds, that is to say
­ (a) the invention is not a patentable invention;
(b) that the patent was granted to a person who was not entitled to be granted that patent;
(c) the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed;
(e) the protection conferred by the patent has been extended by an amendment which should not have been allowed.

72.03

Revocation has effect ex tunc and the patent is therefore deemed never to have been granted. The matters which are specified as grounds for revocation in s.72(1) (a) to (e) are discussed more fully in (a) paragraphs 1.01 to 1.39, 2.01 to 2.56, 3.01 to 3.99 and 4.01 to 4.24, (b) paragraphs 7.06 to 7.11, (c) paragraphs 14.58-14.105, (d) paragraphs 76.01 to 76.23, and (e) paragraphs 76.24-76.27. (It has been confirmed by the Patents Court in Liversidge v British Telecommunications plc [1991] RPC 229 that s.72(1)(e) relates only to amendment of the patent which occurred after it had been granted.) Although the grounds listed for revocation do not, as such, include non-compliance with section 14(5), Lord Hoffmann in Biogen v Medeva [1997] RPC 1 held (at page 47) that “the substantive effect of section 14(5)(c), namely that the description should, together with the rest of the specification, constitute an enabling disclosure, is given effect by section 72(1)(c)”. That said, in Kirin-Amgen Inc. v Transkaryotic Therapies Inc. [2003] RPC 3, the Court of Appeal stated that “Section 72 which contains the grounds of revocation has no equivalent to s.14(5). Thus clarity, conciseness and support are matters to be considered by the Patent Office granting the patent, but lack of clarity, conciseness and support are not grounds for revocation”.

The list of grounds for revocation in s.72(1) is an exhaustive one. In Virgin Atlantic Airways Ltd v Jet Airways (India) Ltd & Ors [2013] EWCA Civ 1713 the defendants challenged the validity of Virgin’s European Patent (UK) based on the allegation that the EPO had applied the UK designation to the application in error. The defendants sought to engage Article 6 of the European Convention on Human Rights (ECHR) claiming their inability, as a third party, to challenge the patent on the basis of the actions of the EPO pre-grant breached their Article 6 rights by denying them a fair hearing. The Court of Appeal held that Article 6 does not extend to creating substantive rights to challenge the validity of a patent where none already exist. The only grounds available to challenge the grant of a patent are therefore those under s.72 and s.74 (see also 77.03.1)

72.03.1

The provision in subsection (b) allows revocation if the patent was granted to one person when it should have been granted to another. It also allows revocation if the patent was granted to two people when it should have been granted only to one of them. In Henry Brothers (Magherafelt) Ltd. v The Ministry of Defence and the Northern Ireland Office [1999] RPC 442, the Court of Appeal considered the situation where a patent was granted to one person when it should have been granted jointly to that person and another person and concluded that, although the question of co-ownership called for clarification in the law, revocation did not appear to be possible in these circumstances. Section 37(2)(a) of the 1977 Act allows the second person to be included as one of the proprietors of the patent, and this is an adequate remedy.

72.04

s.36(3) is also relevant.

Any person may apply for revocation, including the proprietor of the patent. However, where there are co-owners, unless all co-owners agree that it should be possible, one co-owner may not seek revocation of the patent against the wishes of the others. More generally, there is no need for the applicant for revocation to establish locus standi (except in the circumstances set out in 72.40 nor is there any limit as to the time within which an action may be brought. Thus in Cairnstores Ltd v Aktiebolaget Hassle [2002] FSR 35 the court refused to strike out an application for revocation made by a company with no assets, which did not trade and which was unrelated to the technology of the patent in question. The court also refused to order the applicant to disclose the name of any party on behalf of whom it was acting. Similarly, in Oystertec Plc’s Patent [2003] RPC 29, the Patents Court upheld a hearing officer’s decision (BL O/0298/02) to refuse an application for an order for a firm of patent agents applying for revocation of a patent to disclose the identity of the principal they were assumed to be acting for. However, in British Numberplate Manufacturers Association v Hills Numberplates Limited (BL O/066/05), the hearing officer held that an unincorporated association was not entitled to bring revocation proceedings in its own name in light of general case law which prevents an unincorporated body launching proceedings. In Buehler AG v Chronos Richardson Ltd [1998] RPC 609, it was held that both cause-of-action estoppel and issue estoppel may apply to proceedings concerning the validity of a patent where there had been a final judicial decision, but that the decision of the Opposition Division of the EPO is not a final judicial decision as to the validity of a European Patent. It was also noted that cause-of-action estoppel would not be applicable in any case since the grounds of revocation under section 72 are not the same as those in Article 100. Please refer to 1.94-1.106 of the Patent Hearings Manual for detailed discussion of the different types of estoppel.

72.04.1

In Axis Genetics PLC’s (In Administration) Patent [2000] FSR 448 it was held that a revocation action falls within the wording of section 11(3)(d) of the Insolvency Act 1986. This means that proceedings for the revocation of a patent held by a company in administration requires either the consent of the administrators or the leave of the court. The Enterprise Act 2002 replaced section 11 and inserted Schedule B1 into the Insolvency Act 1986; the equivalent provision to section 11(3)(d) is now in paragraph 43(6) of this Schedule.

Preliminary procedure

The Application, Statement and Counterstatement

72.05

PR part 7 is also relevant.

An application for revocation should be made by filing Form 2 accompanied by a copy thereof and by a statement of grounds in duplicate. This starts proceedings before the comptroller, the procedures for which are discussed at 123.05 – 123.05.13. Where the patent is co-owned, and an applicant for revocation is one of the proprietors of the patent, references to the proprietor of the patent in r.77 (and in 72.05-72.23) should be taken as a referring to the proprietors who do not make the application. However, rr.75(2)­ (8) do not apply where all the proprietors have made the application, and instead, the comptroller shall give directions as he may think fit with regard to the procedure for determining the application.

72.06

The statement should be sufficiently explicit to allow the proprietor of the patent to be aware of the specific allegations which he will have to answer if he wishes to defend his patent. Thus while normally it will not be necessary to provide elaborations of technical fact, nevertheless where prior disclosure or prior use of the invention are alleged, or an argument of obviousness is based thereon, the disclosure or use must be sufficiently identified to allow the proprietor to appreciate the scope of the allegation he is required to meet. While there are no prescribed requirements as to the particular facts which need to be pleaded in the statement in proceedings before the comptroller, guidance as to what is required under s.72(1)(a) may be obtained from paragraph 11.4 of the Practice Direction supplementing Part 63 of the Civil Procedure Rules. The details required from this paragraph are as follows:
(1) in the case of matter made available to the public by written description the date on which and the means by which it was so made available, unless this is clear from the face of the matter; and (2) in the case of matter made available to the public by use ­
(a) the date or dates of such use;
(b) the name of all persons making such use;
(c) any written material which identifies such use;
(d) the existence and location of any apparatus employed in such use; and
(e) all facts and matters relied on to establish that such matter was made available to the public.

Contesting an application for revocation

72.07

r.77(5) r.77(6) is also relevant.

If the proprietor wishes to contest the application, he must file a counter statement in the proceedings.

72.08

The contents of the counter-statement are prescribed by r.78. Provided that a ground is replied to, the proprietor is not required to argue with every point of detail advanced by the applicant (Marshall’s Application, [1969] RPC 83).

Failure to file counterstatement

72.09

Failure to file a counterstatement (except where the applicant has withdrawn unconditionally) will lead to the proprietor’s case being treated as undefended, and he will forfeit the right to take any further part in the proceedings. However, the proceedings remain strictly inter partes. The application will be considered by the comptroller as if each specific fact set out in the statement were conceded, except insofar as it is contradicted by other documents available to the comptroller. If on this basis it is determined that a ground has been made out, then the patent will be revoked. However, if it is the preliminary opinion of the Office that no ground has been made out then the applicant should be informed by Litigation Section of this preliminary opinion and offered a hearing before the application is dismissed. The application will be considered in a similar way by the comptroller if the patentee decides not to defend the application at a later stage in the proceedings.

Offer to amend under s.75

72.10

A counterstatement is still required even if, before it is due to be filed, the applicant has indicated that he is willing to withdraw on the condition that certain amendments are made to the specification and the proprietor is agreeable to these amendments. In such a case however it will be sufficient for the counterstatement merely to offer the proposed amendments, stating that the offer is unconditional (see 72.11).

72.11

s.76(2) is also relevant.

If the proprietor offers in his counterstatement to amend the specification it should be made clear on what basis the offer is made, that is, whether the offer is firm or is conditional upon an adverse finding on the unamended specification. Unless the amendments are very minor, they should preferably be identified on a copy of the published specification showing the amendments, referred to in the counterstatement, in red. Any such amendments are made under s.75 and are subject to r.35 procedure (see 75.04-07 and 75.15-17). The proposed amendments should be considered by the examiner to report on whether in his opinion they are prima facie allowable. At this stage the only questions which need to be considered by the examiner are whether the amendments would add matter or extend the protection conferred by the patent; no attempt should be made to consider whether they meet the alleged ground of invalidity.

[ Once the action officer has checked that the nature of the proposed amendments and the basis upon which they are offered has been properly indicated the case should be referred to the Deputy Director in charge of the subject matter concerned for a preliminary report on the amendments. In making his assessment the Deputy Director should make no attempt to review the whole case; in most cases it should not be necessary to look beyond the copy of the specification on which the proposed amendments are shown. He should bring the case to the attention of the hearing officer at this stage of the proceedings. Reporting on an offer to amend should be regarded as urgent and if the Deputy Director is absent for more than a few days the Senior Examiner acting for him should consult the hearing officer as to the course to follow. ]

72.12

Any objection arising out of this preliminary scrutiny of the amendments should be communicated in an official letter to the proprietor allowing a specified period for reply (normally one month). If the proprietor maintains that the amendments are allowable, both parties should be informed that this has been noted and that the matter will be determined at the substantive hearing. If no reply is received within the specified period, the proposed amendments should be treated as if the proprietor maintains that they are allowable and the parties should be informed accordingly. If new or modified amendments are proposed in reply, the above procedures should be repeated. Although such amendments may initially be proposed in correspondence, in order to be brought formally into the proceedings, they must be incorporated into or referred to in an amended counterstatement.

[ If the Deputy Director is satisfied that there is a clear major objection under s.76, he should report in a form suitable for incorporation in a letter expressing the objection as a prima facie view. To this end such a letter (issued by the litigation manager) should open with, ‘The amendments have been referred to an examiner who has expressed the following prima facie view:- ……….’ If, however, there are no or only minor objections or there is a reasonable element of doubt, the Deputy Director should report accordingly in a minute and inform Litigation Section that in the circumstances no action on the amendments is necessary at this stage; he should not expressly state or imply that the amendments are allowable. It must be remembered that it is for the hearing officer to pronounce on the allowability of the amendments and nothing that the Deputy Director reports to the applicant should purport to derogate from the hearing officer’s authority. The Deputy Director must accordingly communicate nothing which could be interpreted as a decision or as a finding, regarding the allowability of the amendments. ]

72.12.1

When amendments have been submitted in a counterstatement they should be advertised in the form subsisting as soon as the procedure described in paragraphs 72.11­ - 72.12 has been completed unless they are clearly minor and of no substance.

72.13

s.75(2) is also relevant.

The revocation proceedings should usually proceed in parallel with the consideration of the amendments under s.75. Thus the applicant should be allowed (a) a specified period (normally one month) in which, if he wishes, to amend his statement or file a supplementary statement in respect of the amendments (Dust Suppression Ltd’s Application [1976] FSR 438) and (b) a period in which to file evidence in chief (see 123.05.9-123.05.11).

The comptroller may however stay the revocation proceedings at the request of the applicant pending consideration of the amendments. Similarly, if the amendments are opposed the comptroller may stay the revocation proceedings pending a resolution of the opposition or may leave the opposition to be decided in the revocation proceedings. Note that the proprietor also has the opportunity of amending a European patent (UK) before the EPO (see 72.44.1 below).

72.14

r.82(1) is also relevant.

Amendment of the application for revocation, the statement or the counterstatement is allowable with the leave of the comptroller; for example a new applicant for revocation may be added or substituted or a new ground or further facts may be introduced. In a preliminary decision, (GEC Avery Service Ltd v Derwent Measurement and Control Ltd, BL O/62/94) the hearing officer acting for the comptroller held that, in exercising discretion as to admit new or amended grounds, he should follow the principles established in Owens-Corning Fibreglas Corporation’s Patent [1972] RPC 684 for cases decided under the 1949 Act, namely (a) whether the applicant had used due diligence in preparing his case; (b) the relevance of new art sought to be introduced; (c) the time that had elapsed since the filing of the application; and (d) whether delay will be caused which might be unjust to the patentee or against the public interest. Evidence in the form of statutory declaration or affidavit may be necessary to explain the lateness of the amendment. The fact that evidence may be necessary in support of a new ground does not of itself justify a refusal to allow the introduction of that ground (Allmanna Svenska Electriska Aktiebolaget’s Application, [1976] RPC 464).

Admission of new grounds

72.15

Where the comptroller decides to admit a new ground, a supplementary or amended statement should be filed. The proprietor should then be given the opportunity to file a supplementary or amended counterstatement in reply. Unless the new ground is not contested or evidence relevant to the new ground has already been filed, each party should be given a specified period (which may run concurrently with any other period set) in which to file further evidence in support of or in response to this new ground.

72.16

Matters not included in the statement or counterstatement as originally filed cannot be raised at the hearing (Bradford Dyers Association Ltd’s Application, [1966] FSR 79 and Roussel-Uclaf (Joly and Warmant’s) Patent, [1971] RPC 304), unless they have been allowed to be introduced into the statement or counterstatement by way of amendment (see 75.14).

Evidence

72.17

[deleted]

72.18

[deleted]

72.19

The applicant for revocation should not wait until the reply stage to complete the evidence necessary to make out his case. Further evidence filed at this stage must be strictly in reply to the proprietor’s evidence. In Scragg (Ernest) Ltd’s Application, [1972] RPC 679, which was an opposition under the 1949 Act, Graham J quoted Halsbury’s Laws of England as authority for the principle that the party on which the onus of proof falls (which in the present case is the applicant for revocation) must adduce all his primary evidence when presenting his case and not seek thereafter to adduce additional evidence to strengthen his case. He stated (at page 682) “to my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to his case”. In Peckitt’s Application [1999] RPC 337 some further evidence was allowed to stand which was little more than repetition of elements of the case put in chief with some minor clarification and comment. The important factor was said to be that it did not either alter or strengthen the party’s case or be such as to prolong the pre-hearing procedure by justifying another round of evidence from the other party.

72.20

r.87 is also relevant.

For the form of evidence, see 123.17-18 and Chapter 3 of the Patent Hearings Manual. Documents referred to

72.21

The provision of copies of documents referred to in statements and evidence is governed by r.79 - see 123.18 Extension of periods

72.22

[deleted]

Subsequent procedure

72.23

After completion of the stages referred to above the matter will normally proceed to a hearing unless either the applicant withdraws or abandons by failure to give security for costs (see 72.24-72.35 and 123.05.10-123.05.12) or the proprietor offers to surrender his patent (see 72.36-72.39). Following the hearing a decision will be issued (see 72.42-72.44 and 123.05.13). In some cases a preliminary hearing may be necessary to decide a dispute between the parties or between the Office and either or both of the parties.

Withdrawal of Applicant

Conditions of withdrawal

72.24

A withdrawal by the applicant may be unconditional, or it may be conditional on amendments which have been submitted by the proprietor being allowed. The applicant’s willingness to withdraw on the basis of the proposed amendments may be indicated in a letter or by counter-signature on a copy of the specification showing the amendments. If it is not clear whether an offer to withdraw is conditional or unconditional, or what the conditions for withdrawal are, Litigation Section should seek clarification from the applicant.

72.25

In Flude (H) & Co (Hinckley) Ltd’s Patent [1993] RPC 197 in which the applicant sought to amend the statement of case under rule 75(1) by a conditional withdrawal of certain grounds of revocation and some of the evidence while leaving open the possibility of relying on them subsequently once a decision had been made on the remaining issues, the applicant was required to choose whether to proceed on the original pleadings or to withdraw certain grounds of invalidity with an order that they should not be raised again in any proceedings between the parties before the comptroller or in the court without leave of the court.

Public interest

72.26

Where an applicant serves notice of withdrawal from revocation proceedings before the comptroller which have been properly launched, an examiner considers whether the comptroller should accept the notice of withdrawal without qualification or whether there are questions remaining that the comptroller should further consider in the public interest (Abbott Laboratories (Chu’s) Patent [1992] RPC 487, following General Motors (Tunney & Barr’s Application) [1976] RPC 659 decided under the 1949 Act). The proceedings are concluded by a formal decision of a hearing officer acting for the comptroller. This procedure, which differs from that in proceedings before the court because the comptroller has technical staff to investigate the matter, was endorsed in R v Comptroller-General of Patents, ex parte Ash & Lacey Building Products Ltd [2002] RPC 46. Prima facie, where an application is treated as abandoned under s.107(4) in default of security for costs or expenses, the same public interest considerations apply as in the case of unconditional withdrawal of the application.

72.27

The specification, including any amendments submitted by the proprietor, should be considered in order to ascertain whether a case for revocation is made out on the evidence of the documents so far filed. The allowability of amendments is subject to the principles referred to in 75.04 - 75.05.1. Normally only clear cases of lack of novelty or inventive step based on prior documentary disclosure should be pursued by the comptroller. Only exceptionally should some other ground of revocation be continued with after withdrawal of the applicant. In R v Comptroller-General of Patents, ex parte Ash & Lacey Building Products (above), it was held that it was allowable for the hearing officer to first come to a view on construction of the claims before determining whether a clear case of lack of novelty or inventive step had been made out.

[ If the applicant for revocation seeks to withdraw, the action officer in Litigation Section should refer the file to the hearing officer’s assistant, if one has been appointed, or otherwise to the Deputy Director in charge of the subject-matter, to determine whether any action is necessary in the public interest. If the Deputy Director considers that revocation is justified on some ground other than lack of novelty or of inventive step, then he should consult the hearing officer concerned before issuing a report. The Deputy Director concerned may deal with the case himself or call on a Senior Examiner to make a report but in either case the Deputy Director remains responsible for any decision made and only he (or a hearing officer in his absence) may sign the decision. When a Senior Examiner is asked to report on a withdrawn revocation, no more than a brief report on the issues which he is required to consider is called for, and this should be minuted. Any points to be raised with the proprietor should be the subject of an appendix drafted in terms suitable for incorporation in a letter which will be issued by the action officer in Litigation Section. All action taken should be recorded in a minute added to the the dossier (PDAX cases) or on the proceedings sheets in the revocation shell (Paper cases). ]

Procedure when no ground for revocation remains

72.28

Where the applicant has requested conditionally or unconditionally to withdraw and the proprietor has submitted amendments which appear to be allowable and to remove the ground for revocation, or where the applicant has withdrawn unconditionally and no amendments have been offered and the Office is satisfied that no ground for revocation has been made out, the proceedings should be dealt with as described in 72.42 except that since the decision does not involve determination of an issue in dispute between the parties it may be issued by the Deputy Director rather than the hearing officer.

Procedure when grounds for revocation remain

Unconditional withdrawal of applicant

72.29

Where the applicant has requested unconditionally to withdraw and the examiner determines that the action should be continued in the public interest by the comptroller, a letter should be sent to the proprietor including a statement that whilst the request for withdrawal has been noted the revocation proceedings are regarded as still in being and the comptroller cannot yet decide the matter. The letter should set out clearly the grounds which are being pursued in the public interest. This letter from the Office must be worded in such a way that there is no danger of it being construed as a decision.

[ The following is a specimen letter:­

‘The applicant’s desire to withdraw from these proceedings, expressed in his letter dated ………., has been noted. However, the application has been referred to an examiner, who feels that the issue(s) of ………. should be pursued in the public interest for the following reasons:­-

‘Accordingly the revocation proceedings are still regarded as in being and the comptroller cannot yet decide the case. ‘This letter has been copied to the applicant for information. However since he is not actively pursuing these proceedings, further correspondence need be sent to the comptroller only.’

s.101 is also relevant.

[ The letter should also indicate the action required, such as the filing of a counterstatement, comments, evidence, amendments or further amendments. A period for reply (normally one month) should be specified and the proprietor should be informed of his right to be heard. The letter should be issued by the action officer in Litigation Section on the instruction of the Deputy Director. A copy should be sent to the applicant. ]

72.30

The proprietor should be advised that any further proposals for amendment should be filed with the Office within the period allowed for reply to the letter. The proprietor should also be advised that such proposals should be shown clearly on a copy of the published specification. Since the applicant is no longer actively pursuing the proceedings, the proposals need be sent to the Office only. Once a form of amendment which is allowable is arrived at, the procedure in paragraph 72.42 should be followed.

72.31

The applicant should be sent a copy of the initial letter to the proprietor and warned that thereafter, unless he requests otherwise, no further correspondence will be copied to him except that, for information, he will be sent a copy of any decision revoking the patent or dismissing the application or an advertisement of amendments to be published in the Journal.

Conditional withdrawal of applicant

72.32

Where the applicant has requested to withdraw conditionally on amendments being allowed and the examiner determines that further action would be required in the public interest by the comptroller, the applicant remains an active party to the proceedings since his conditions for withdrawal have not been met. The hearing officer should then determine the most efficient course of action in the circumstances.

72.33

Since the applicant had offered to withdraw subject to the amendments being allowed, he presumably has no objections to them; the examiner will therefore normally pursue any objections directly with the proprietor until he is satisfied that the amendments are acceptable, the correspondence being copied to the applicant for comment. The action under section 72 will then usually be stayed pending the outcome of the application to amend under section 75. In any case, the examiner will write to the proprietor setting out the objections which would be pursued. As in the case discussed in 72.29 above, this should not be in terms that could be construed as a decision.

[ The following is a specimen letter:­

‘The applicant’s desire, expressed in his letter dated ………., to withdraw from the revocation proceedings subject to acceptance of the proposed amendments submitted with your letter dated ……… has been noted. However, the amendments have been referred to an examiner, who feels that the amendments do not meet the issue(s) of ………. for the following reasons:­

‘Accordingly the revocation proceedings are still regarded as in being and the comptroller cannot yet decide the case. ‘This letter has been copied to the applicant for information.’

s.101 is also relevant.

[ The letter should also indicate the action required, such as the filing of a counterstatement, comments, evidence, amendments or further amendments. A period for reply (normally one month) should be specified and the proprietor should be informed of his right to be heard. The letter should be issued by the action officer in Litigation Section on the instruction of the Deputy Director. A copy should be sent to the applicant. ]

72.34

Once amendments acceptable to the examiner have been reached, it should be determined whether the applicant still wishes to withdraw the application under section 72 on the basis of these amendments being accepted; if not then the applicant should be given an opportunity to amend his statement or file a supplementary statement as described in 72.13. If there is no likelihood of agreement being reached or if further amendments are not acceptable to the examiner a hearing may be necessary.

Costs

72.35

In any case involving withdrawal following agreement between the parties the question of costs should normally have been dealt with as part of the agreement, and in such a case the hearing officer will not normally concern himself with costs, and his decision will not refer to them. If however an order for costs is sought, other than merely in the statement or counterstatement, before the decision issues, then such an order can be included in the decision. Where, after the issue of the decision, one party asks for costs, the request should be referred to the hearing officer for consideration of an award of costs.

[ The Deputy Director is empowered to award costs in withdrawn revocation proceedings. For further details on awarding costs, see Chapter 5 of the Patents Hearings Manual. ]

Surrender

72.36

s.29(1) and s29(3) is also relevant.

The proprietor may at any time offer to surrender his patent (see 29.01­ -29.07). Unlike revocation, however, the surrender only takes effect from the date when notice of acceptance of the surrender is published in the Journal. There will therefore have been some time during which the patent was in force. It follows that an offer to surrender during revocation proceedings will not automatically terminate those proceedings. No suggestion should therefore be made that a proprietor (or patentee) who does not wish to oppose an application for revocation should offer to surrender his patent.

72.37

r42, r75, r76(2) is also relevant.

The offer to surrender must be advertised and the parties informed of the date of the advertisement. The four week period for opposition to the surrender runs from that date.

[ As soon as arrangements for the advertisement have been made and letters sent to the proprietor and applicant for revocation notifying them of the date of the advertisement the case should be referred to the hearing officer to decide on the future action. Normally the hearing officer should arrange for a member of his division, usually a Deputy Director, to write a report on the revocation action. ]

72.38

The matter should be considered as though no counterstatement had been filed, that is, as if each specific fact set out in the statement had been conceded except insofar as it is contradicted by other documents before the Office. If on this basis it is determined that at least one ground for revocation has been made out (and provided that the two month period has expired without an opposition being lodged), the parties should be informed that it is proposed to issue a formal decision revoking the patent, and consequently not to accept the offer to surrender, unless within one month either party opposes this course of action.

[ If it is determined that at least one ground for revocation has been made out, the examiner should draft a letter for issue by Litigation Section. The case should be referred to Litigation Section via the hearing officer. If either party opposes the decision to revoke instead of allowing surrender, or in the very rare cases when no ground for revocation is found, the matter should be referred to the hearing officer for direction as to future proceedings.

[ The hearing officer may change the procedure outlined above in exceptional cases, for example if (a) the offer to surrender is made after both sides have filed evidence in the revocation action, (b) the applicant for revocation is a private applicant who gives no substantial grounds for revocation, or (c) an opposition to the advertised offer has been entered. ]

72.39

If, in revocation proceedings before the comptroller under this section, the proprietor offers to surrender the patent, the comptroller shall, in deciding whether costs should be awarded to the applicant for revocation, consider whether proceedings might have been avoided if the applicant had given reasonable notice to the proprietor before the application was filed.

 
Section 72(2)
An application for the revocation of a patent on the ground mentioned in subsection (1)(b) above ­
(a) may only be made by a person found by the court in an action for a declaration or declarator, or found by the court or the comptroller on a reference under section 37 above, to be entitled to be granted that patent or to be granted a patent for part of the matter comprised in the specification of the patent sought to be revoked; and
(b) may not be made if that action was commenced or that reference was made after the second anniversary of the date of the grant of the patent sought to be revoked, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.

72.40

Thus revocation of a patent on the ground that the patent was granted to a person who was not entitled to be granted that patent may only be sought by a person who has already satisfied the court or the comptroller that he himself should have been the or a proprietor. (See also 37.05 and 37.15). No one else may apply for revocation on this ground. Nor may any application be made on this ground unless proceedings to contest the proprietor’s right to the patent had been started by, at the latest, the second anniversary of the date of grant, unless the applicant can show bad faith on the part of the proprietor.

[Section 72(3) Repealed]

72.41

Section 72(3) was concerned with patents for inventions requiring microorganisms for their performance. This was repealed by the CDP Act, and the equivalent provision is now in section 125A.

 
Section 72(4)
An order under this section may be an order for the unconditional revocation of the patent or, where the court or the comptroller determines that one of the grounds mentioned in subsection (1) above has been established, but only so as to invalidate the patent to a limited extent, an order that the patent should be revoked unless within a specified time the specification is amended to the satisfaction of the court or the comptroller, as the case may be.

72.42

r.75 is also relevant.

If the case for revocation has not been made out, and amendments have been proposed by the proprietor during the hearing, the hearing officer must ensure that the amendments are advertised (see Litigation Manual paragraph 14.30, and chapter 23) unless they are clearly not allowable or would not cure invalidity. If the amendments are to be advertised the issue of a final decision should be deferred until the procedure described in 75.05 has been followed. If the amendments are not to be advertised, or if the specification had already been amended before the hearing (see 72.11-72.13), or if no amendments have been offered, a final decision should be issued dismissing the application for revocation.

[ In the case of revocation proceedings where the applicant has withdrawn, when a decision is due to issue, Litigation Section should be instructed to prepare a Decisions Form; Form B should be used where the applicant has withdrawn unconditionally and there have been no amendments, Form D’ where the applicant has withdrawn conditionally see 72.32-72.34 and Form G’ where the specification has been amended following an unconditional withdrawal see 72.29-72.31. The Deputy Director should sign but not date the decision. Litigation Section should apply the appropriate electronic signature, prepare copies of the signed decision, date them and send them to each of the parties.

[ When a decision authorises amendment of a specification, the amendments are shown in a copy of the specification attached to the decision. After issue of the decision, the amendments should be incorporated into the original specification by Litigation Section and upon receipt of confirmation from the hearing officer a certificate with the appropriate electronic signature is placed on the dossier. If the amendments are extensive, Litigation Section should request retyped pages in accordance with r.35(6) if these have not already been filed. The file should then be referred to the hearing officer (or Deputy Director where the applicant has withdrawn). Where there is an assistant he should check the amendments and the certificate with the appropriate electronic signature is then placed on the dossier. ]

72.43

When the hearing officer decides that one or more of the grounds for revocation has been made out but that the defects of the patent might be cured by amendment of the specification he may if he sees fit issue an interim decision giving the proprietor a specified period, normally two months, in which to amend to meet the findings and thereby avoid revocation see also 72.44.1. A factor in deciding whether to give an opportunity to amend (see 75.04) is the necessity for further proceedings to determine validity of any amendments. In Nikken Kosakusho Works v Pioneer Trading Co. [2006] FSR 4, the Court of Appeal drew a distinction between post-trial amendments only involving deletion of invalid claims or re-writing claims to exclude various dependencies, and those where the patentee sought to introduce a different claim which had not been under attack at the trial, where there was bound to be a further battle in proceedings over the proposed amendments to determine their validity. Considering the overriding objective of the Civil Procedure Rules that in any given litigation the parties are required to bring forward their whole case and the specific requirements of Part 1.1.2 of the CPR that the court should deal with cases justly by saving expense and ensuring that they were dealt with expeditiously and fairly, the court held that the latter sort of post-trial amendment should not be allowed if it would involve a second trial on validity. Monkey Tower Ltd v Ability International Ltd [2013] EWHC 18 (Pat) provided more details about the factors to be considered when deciding whether to exercise discretion to allow an opportunity to amend. Henry Carr QC, sitting as a Deputy Judge, explained that it is necessary for the comptroller to have regard to all circumstances which are relevant to the question of procedural fairness to the parties. These circumstances might include:
a) The resources already devoted by the parties to the proceedings.
b) The extent of any re-litigation as a result of the amendment.
c) The likelihood that a valid amendment can be proposed.
d) Whether there is evidence that prejudice will be caused to the applicant for revocation by the delay caused by an application to amend.

Where the hearing officer does not see fit to allow such an opportunity to amend, or it appears that no saving amendment is possible, a final decision should be issued revoking the patent without allowing an opportunity to amend.

[ Any request for extension of the specified period should be referred by the action officer to the hearing officer. ]

72.44

When amendments are submitted following an interim decision the applicant should be invited to comment within a period specified in the decision, usually one month. If a dispute is apparent the proprietor should be allowed a similar period in which to reply. A further hearing may be necessary if no agreement is reached. A further interim decision may be issued with or without a further hearing. If the amendments are allowable and meet the terms of the interim decision the matter should proceed as described in 72.42.

 
Section 72(4A)
The reference in subsection (4) above to the specification being amended is to its being amended under section 75 below and also, in the case of a European Patent (UK), to its being amended under any provision of the European Patent Convention under which the claims of the patent may be limited by amendment at the request of the proprietor.

72.44.1

Article 138(3) EPC provides a central amendment process for European Patents. This is an alternative to the existing possibility of the proprietor amending the patent under the 1977 Act. In the former case, the amendments are effective in each Contracting State designated by the patent whereas the latter would only affect the European patent (UK). This subsection makes it clear that references to the patent being amended take account of the central limitation process at the EPO.

 
Section 72(5)
A decision of the comptroller or on appeal from the comptroller shall not estop any party to civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds referred to in subsection (1) above, whether or not any of the issues involved were decided in the said decision.
 
Section 72(6)
Where the comptroller refuses to grant an application made to him by any person under this section, no application (otherwise than by way of appeal or by way of putting validity in issue in proceedings for infringement) may be made to the court by that person under this section in relation to the patent concerned, without the leave of the court.
 
Section 72(7)
Where the comptroller has not disposed of an application made to him under this section, the applicant may not apply to the court under this section in respect of the patent concerned unless either
(a) the proprietor of the patent agrees that the applicant may so apply, or
(b) the comptroller certifies in writing that it appears to him that the question whether the patent should be revoked is one which would more properly be determined by the court.

72.45

CPR 63.11 is also relevant.

The comptroller may decide that it appears to him that the question whether the patent should be revoked should be more properly determined by the court. In such a case any person seeking the court’s determination of that question must issue a claim form within 14 days of the comptroller’s decision.

[Further guidance on certification that revocation would more properly be determined by the court is given in Chapter 2 of the Patent Hearings Manual]