Section 73: Comptroller's power to revoke patents on his own initiative
Section (73.01 - 73.12) last updated: October 2023.
73.01
This section specifies the only grounds on which a patent may be revoked other than at the request of a third party.
| Section 73(1) |
| If it appears to the comptroller that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 2(3) above, he may on his own initiative by order revoke the patent, but shall not do so without giving the proprietor of the patent an opportunity of making any observations and of amending the specification of the patent so as to exclude any matter which formed part of the state of the art as aforesaid without contravening section 76 below. |
73.02
Proceedings under s.73(1) will be initiated after the grant of a patent where a relevant document has been brought to the attention of the examiner (either because of actions within the Office or as a result of observations from a third party - see 21.17) after the date of issue of the letter informing the applicant that the application is in order see 18.88. Unless the examiner is not satisfied that the pre-grant search was complete for art in the s.2(3) field see 17.118, no search is done after grant as a matter of course for such documents. Action may also be taken under s.73(1) in the exceptional case where it has not been possible before the end of the s.20 period to obtain a copy of the priority document of a cited European application (UK) in order to determine whether or not it has an earlier priority date than the invention see 18.18. Proceedings under s.73(1) may also be initiated in the event that an opinion is issued which concludes that a granted UK patent or European patent (UK) lacks novelty over a patent application which forms part of the state of the art under section 2(3) see 74A.11.1
73.02.1
Where the patent is a European patent (UK), the examiner should ensure that they are referring to the latest version of the patent, which could have been amended under the central limitation procedure at the EPO.
73.02.2
A UK or European patent application which was withdrawn prior to publication, but too late to prevent publication, is not considered to form part of the state of the art under s.2(3) (Woolard’s Application [2002] RPC 39 – see 2.32). The examiner should therefore check the status of the potential s.2(3) citation, and if it is withdrawn, the date on which it was withdrawn.
[The status of a UK application, including the date of any withdrawal, can be checked using the DISPLAY FULL REGISTER function on the Common Enquiries Menu of COPS. The status of an EP application, including the date of any withdrawal, can be checked using the European Patent Register. ]
73.03
r.35(6) and r.109 is also relevant.
When action appears necessary the proprietor must be informed and must be given a period within which to submit observations and/or amendments. A suitable period is normally three months, although a shorter period may be specified at the comptroller’s discretion, and this period may be extended under r.109. (The amendments must comply with s.76. They are not advertised since s.73 proceedings are ex parte and so third parties cannot intervene.) If leave to amend is given, the applicant may be required to file a new specification as amended, prepared in accordance with rules 12 and 14, before the amendment is effected. Any offer to amend and its outcome should be specifically recorded on the Register.
73.03.1
Proceedings under s.73(1) should normally be initiated using Letter Clause PL2. However where the document was a European application cited before grant but action was deferred because of non-availability of priority documents (see 73.02, 18.18, Letter Clause PL1 should be used). [ (a) A report should be made by the examiner in a minute and the case referred to Restoration and Post Grant Section (RAPS) who will arrange for the action to be noted in the Register, for the appropriate letter to be issued, and for the case to be referred back to the examiner on receipt of any amendments and/or observations.]
[The examiner should add the minute to the dossier, addressing the minute to RAPS, and a PDAX message should be sent to the RAPS mailbox.]
[ (b) If the examiner is satisfied after consideration of any amendments and/or observations submitted by the proprietor that revocation is not necessary, they should report this in a minute and the case should be referred to RAPS Section. RAPS Section will create a minute and send a message to the Group Head in charge of the group of the examiner considering the amendment. The Group Head will confirm whether the amendments are allowable and that Decision Form 1, 1a or 2a can be prepared. Where amendments have been allowed, RAPS Section should effect them in the specification and prepare a certificate for signature by the Group Head. The case should be referred to Publishing Section for the issue of a ‘C’ publication as described in 27.20. Unless the amendments can be dealt with in the ‘C’ publication by means of a schedule, RAPS Section should firstly obtain a retyped specification from the patentee under r.35(6).]
[The group head should add the minute to the dossier, addressing the minute to RAPS Section, and a PDAX message should be sent to the RAPS mailbox]
[ (c) If amendments and/or observations are received but the group head cannot be satisfied that the objection is overcome, and further amendments appear possible, a further period may be specified in order to allow such amendments to be filed. The time periods specified may be extended if appropriate under s.117B and rule 109. If no agreement can be reached, a hearing should be offered to be taken by a Group Head. The examiner should prepare a report for the Group Head before the hearing. If the Group Head decides, as a result of the hearing, that the patent should be revoked, they should issue a reasoned decision to that effect.]
[ The examiner should record their objection(s) in a minute which should be added to the dossier and addressed to RAPS and a PDAX message should be sent to the RAPS mailbox. The objection(s) should be stated in a form which is suitable for inclusion in an official letter, which will be sent over the signature of a member of RAPS but will give the name and telephone number of the group head. RAPS will inform the proprietor of the latest date for response and will deal with requests for extensions of time periods.]
[ (d) Where the proprietor responds but raises no objection to revocation of the patent or leaves the question of revocation to be decided by the comptroller, RAPS should prepare Decision Form 3a and refer the case along with the Decision Form to the group Group Head for their signature.]
[ (e) If the proprietor fails to reply to Letter Clause PL1 or PL2, RAPS should offer a hearing by issuing Letter Clause PL4. If there is still no response from the proprietor, RAPS should prepare Decision Form 5 and refer the case along with the Decision Form to the group Group Head for their signature.
73.04
Article 54(3) of the EPC specifies that the only document published on or after the filing date of an application for a European patent which forms part of the state of the art for that application is another European application. If follows therefore that a European patent (UK) may be validly granted by the EPO even though the invention is disclosed in a published UK patent application having an earlier priority date. Such a patent could however then be revoked by the comptroller under s.73(1). An examiner who becomes aware of such a situation should proceed as described in paragraph 73.03. Such action should also be taken where a European patent (UK) is clearly anticipated by another European patent application (UK) which form part of the state of the art by virtue of s.2(3) and EPC a.54(3) but which was not cited by the EPO.
[Action under s.73(1) against a European patent (UK) should be initiated using Letter Clause PL2.]
[Action to cite a prior European application against a European patent (UK) under s.73(1) should be taken only in the clearest cases, and in any case should not be taken if the application had been indicated on the printed European patent specification as having been cited by the EPO.]
| Section 73(1A) |
| Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent. |
| Section 73(1B) |
| The power under subsection (1A) may not be exercised before- (a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or (b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined). |
| Section 73(1C) |
| The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76. |
73.04.1
Proceedings under s.73(1A) will be considered where an opinion issued under section 74A has concluded that the invention in a granted patent is not new or does not involve an inventive step. The patent cannot be revoked until EITHER the period for requesting a review of the opinion (which is three months from the date of issue of the
opinion) has expired and no review has been requested OR, where a review has been requested, until after a decision has been made on the review (and if there is an appeal against that decision, the appeal has been determined) and that decision and any appeal has upheld the opinion. However, action under section 73(1A) may be initiated during the period for requesting a review. Action should not be initiated if a review has already been
requested.
[Once the opinion has been issued, Tribunal Section should send a message to the group head (who handles the relevant subject matter), who should consider whether action under section 73(1A) is necessary. Action under this section should only be initiated if the group head considers that the patent is clearly invalid due to lack of novelty or inventive step. The opinion should be considered but the group head is in no way bound by it.]
73.04.2
Where the patent is a European patent (UK), the group head should ensure that they are referring to the latest version of the patent, which could have been amended under the central limitation procedure at the EPO.
73.04.3
If, after the relevant date, action under s.73(1A) appears necessary, the procedure set out in 73.03 above, and described in more detail below, should be followed.
(a) The group head should report in a minute whether or not action is justified under s.73(1A) and refer the case to Tribunal Section who will arrange for an appropriate entry in the Register, for the appropriate letter to be issued, and for the case to be referred back to the group head on receipt of any amendments and/or observations.
The group head should add the minute to the dossier, addressing the minute to Litigation Section, and a PDAX message should be sent to the Litigation mailbox. The minute should also confirm that the group head is content for the case not to be referred back to them in the event that the proprietor fails to reply (see point (e) below).
(b) If the group head is satisfied after consideration of any amendments and/or observations submitted by the proprietor that revocation is not necessary, they should report this in a minute and the case should be referred to Tribunal Section. The group head should confirm that any amendments are allowable and that Decision Form 1A or 2A can be prepared. Where amendments have been allowed, Litigation Section should effect them in the specification and prepare a certificate for signature by the group head. The case should be referred to Publishing Section for the issue of a ‘C’ publication as described in 27.20. Unless the amendments can be dealt with in the ‘C’ publication by means of a schedule, Litigation Section should firstly obtain a retyped specification from the patentee under r.35(6).
The group head should add the minute to the dossier, addressing the minute to Tribunal Section, and a PDAX message should be sent to the Litigation mailbox
(c) If amendments and/or observations are received but the group head cannot be satisfied that the objection is overcome, and further amendments appear possible, a further period may be specified in order to allow such amendments to be filed. The time periods specified may be extended if appropriate under s.117B and rule 109. If no agreement can be reached, a hearing should be offered to be taken by the DD. If the DD decides, as a result of the hearing, that the patent should be revoked, he should issue a reasoned decision to that effect.
The group head should record their objection(s) in a minute which should be added to the dossier and addressed to Litigation Section, and a PDAX message should be sent to the Tribunal mailbox. The objection(s) should be stated in a form which is suitable for inclusion in an official letter, which will be sent over the signature of a member of Tribunal Section but will give the name and telephone number of the group head. Tribunal Section will inform the proprietor of the latest date for response and will deal with requests for extensions of time periods.
(d) Where the proprietor responds but raises no objection to revocation of the patent or leaves the question of revocation to be decided by the comptroller, Litigation Section should prepare Decision Form 3A and refer the case along with the Decision Form to the group head for their signature.
(e) If the proprietor fails to reply Tribunal Section should issue Decision Form 5A on behalf of the group head. ]
| Section 73(2) |
| If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent. |
| Section 73(3) |
| The comptroller shall not take action under subsection (2) above before (a) the end of the period for filing an opposition to the European patent (UK) under the European Patent Convention, or (b) if later, the date on which opposition proceedings are finally disposed of; and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention. |
73.05
Subsections (2) to (4) empower the comptroller to revoke a 1977 Act patent which is for the same invention as a European patent (UK), in certain circumstances, in order to avoid having two patents in force in the UK for that invention. However, conflict with a granted European patent (UK) does not constitute a reason for the comptroller to refuse to grant a patent in the UK.
73.06
The tests for determining whether the two patents relate to the same invention are the same as for deciding whether two UK applications are in conflict see 18.91-18.97.1.
73.07
If an examiner becomes aware of a European application or patent (UK), or an international application designating GB (European Patent), which apparently relates to the same invention as an application with which they are dealing, both applications being filed by the same applicant and having the same priority date, they should warn the applicant that if this application proceeds to grant (after entering the regional phase in the case of an international application), revocation under s.73(2) may subsequently need to be considered. An opportunity to withdraw the UK application should not be offered if the application has already been marked in order for grant. For the case when the conflicting application is an international application designating the UK (i.e. not a European patent (UK)), see 18.91.
[The examiner should ensure that they are referring to the latest version of the European patent (UK), as it could have been amended under the central limitation procedure at the EPO.]
[ A warning to the applicant should be given by adding clause RC31 to the examination report under s.18(3) or to EL3 in the appropriate circumstances regardless of whether the corresponding EP(UK) patent has already been granted. If the potential conflict is with an international application designating EP(UK) which has not yet entered the regional phase, RC31 will be used with the WO publication number ]
[ If the application is in order an intention to grant letter will be issued by the examiner assistants. The examiner should indicate that an RC31 clause is needed in the intention to grant letter by checking that box in the grant form and adding the associated EP or WO publication number in the corresponding box (see 18.86) This ensures the applicant is notified about possible conflict (see 18.81 and 18.86.2 for detail on the intention to grant process).]
[ Examiners can determine whether an international application has entered the regional phase by checking on the European Register, e.g. using the European Patent Register (the COPS function DIS EQU cannot be used to obtain this information). An international application will normally be recorded on the European Patent Register as having entered the regional phase within 40 months from the priority date. The COPS function DIS FUL will give information about an EP(UK) once granted, including about the filing of any opposition proceedings. If there is reason to suspect that the relevant record is inaccurate or incomplete, the matter should be referred to Patents IT BAU Team. ]
[ Restoration and Post-grant section (RAPS) will identify all granted GB patents that have granted EP(UK) equivalents and maintain an active electronic report of these cases showing the status of each. For those GB patents where an assessment of conflict has been made, this RAPS report will indicate the action taken (for example: “no action”, “PL3 issued”, “revoked”, etc.). The report will be periodically updated by cross-referencing IPO records with data received from the EPO to identify GB patents with potential s.73(2) conflict. For each newly identified GB patent, RAPS will first determine if the EP equivalent is in the opposition period. If so, no further action can be taken under s.73(3)(a), and RAPS will therefore indicate the earliest date on which the case should be re-inspected. Where opposition proceedings are ongoing, further action will again be deferred until such proceedings are disposed of under s.73(3)(b). If the opposition period for the EP equivalent has ended (or opposition proceedings have been disposed of), RAPS will then determine whether the EP equivalent no longer designates UK, or has been refused, revoked or ceased. In these circumstances action under s.73(2) does not need to be initiated. It is possible to ascertain whether the European patent application has been refused, withdrawn or treated as withdrawn or the UK designation has been withdrawn (thus removing the possibility of section 73(2) action) from the same COPS function. Furthermore, the European patent may have been centrally revoked at the EPO. It can be determined if this is the case by checking on the European Register, e.g. using the European Patent Register All enquiries as to register status should be recorded in a minute.]
[RAPS will determine if an application to surrender the EP(UK) has been made before its date of grant (see 73.11-12 for where an offer to surrender the EP(UK) patent has been made). If no application to surrender has been made prior to grant, RAPS will then determine if the EP patent designates UK; if no UK designation is present, no action is required and RAPS will record this accordingly in their report. If the EP patent designates UK, an assessment of conflict will be necessary.]
[The above procedure will be used even where either or both of the GB or EP(UK) patents have ceased due to non-payment of renewal fees. Under these circumstances there will have been a period of time where both patents will have been in force at the same time (and therefore potentially in conflict), which the applicant retains legal rights to even though the patent has ceased. See 73.10. ]
73.08
EPC a.99 and s.25(1) is also relevant.
In accordance with subsection (3), action to revoke a patent under s.73(2) cannot be taken until after either the date of expiry of the period within which an opposition to the European patent may be filed, ie, nine months from the publication of the mention of the grant in the European Patent Bulletin, or the date when any opposition proceedings are disposed of by a decision to maintain the European patent, or, if later than either of these dates, the date when notice of grant of the UK patent is published in the Journal. The amended section removes any doubt which there might previously have been as to what should happen if the European patent (UK) failed as a result of opposition proceedings: it is now made clear that revocation action should not be taken. The “decision” in question in s.73(3) is that of the EPO in determining opposition proceedings (Citizen Watch Ltd’s Patent [1993] RPC 1).
The date of publication of the mention of the grant in the European Patent Bulletin is the same as the date of publication by the EPO of the specification as granted, this date being given on COPS (see 73.07).
73.09
If, after the relevant date (see 73.08), action under s.73(2) appears necessary, this should be taken as described below in paragraph 73.09.1. Although under previous practice it would have been considered unnecessary to take action under s.73(2) if a UK patent had been surrendered or have lapsed, action under s.73(2) should be taken for all granted UK patents, even if they have been surrendered or have lapsed. Similarly, it would have previously been considered unnecessary work if an offer to surrender the UK patent had been made, unless the offer was withdrawn or refused; however s.73(2) action should be taken on these UK patents too.
73.09.1
Action should be initiated by the issue of Letter Clause PL3. This gives a period of two months (reducible at the comptroller’s discretion) for the proprietor to submit amendments and/or observations.
(a)
[ (a) RAPS will create a “Section 73(2)” PAFS action and forward the case via PDAX to an examiner assistant for a preliminary assessment of conflict. If the examiner assistant identifies any identically worded independent claims, they will report this in PROSE form GBEPCONF and send the associated checklist via a PDAX message (S73(2) – CHECKLIST CONFLICT REPORT Examinername) to the RAPS mailbox. RAPS will then complete the PAFS action, and arrange for the action to be noted in the Register and for the Letter Clause PL3 to be issued. The claims of the EP(UK) may be centrally amended before the EPO, and care should be taken to ensure that the latest version of the claims is considered when assessing the requirement for revocation action under section 73(2).
If the examiner assistant cannot identify any identically worded independent claims, they will report this to RAPS and the PAFS action will be transferred to the examiner, who will make their assessment of conflict and report their findings in PROSE form GBEPCONF, sending the associated checklist via a PDAX message (S73(2) – CHECKLIST CONFLICT REPORT Examinername) to RAPS once complete. Where conflict is present, the PROSE form should indicate that revocation action should commence in respect of the patent, outlining the reasons why claim conflict exists. The content of PROSE form GBEPCONF should be recorded in a form which is suitable for inclusion in the official PL3 letter, which will be sent with the signature of a member of RAPS but will give the name and telephone number of the examiner.
If no conflict is present, the examiner should record their reasons why on the GBEPCONF form.
Note that only examiners can report a status of “no conflict”. If amendments or observations are made in a response to the PL3 letter, RAPS will refer them to the examiner and create a new PAFS action.]
[ (b) If amendments and/or observations are submitted by the proprietor and the examiner is satisfied that the UK patent and the European patent (UK) are no longer in conflict, they should report this in PROSE form GBEPCONF and the case should be referred to RAPS. RAPS will create a minute and send a message to the group head or group head in charge of the group of the examiner considering the amendment. The group head will confirm whether the amendment is acceptable and that Decision Form 1B, 1C or 2 can be prepared. Where amendments have been allowed, RAPS should effect them in the specification and prepare a certificate for signature by the group head. The case should be referred to Publishing Section for the issue of a ‘C’ publication as described in 27.19. ]
[ (c) If the proprietor offers amendments and/or observations but fails to satisfy the examiner that the UK patent and the European patent (UK) are no longer in conflict, but further amendments appear possible, a further period may be specified in order to allow such amendments to be filed. The time periods specified may be extended if appropriate under s.117B and rule 109. If no agreement can be reached, a hearing should be appointed (see 73.03.1) to be taken by group head. A report should be made to the group head before the hearing. If the group head decides, as a result of the hearing, that the patent should be revoked, they should issue a reasoned decision to that effect.]
[ The examiner should record their objection(s) in PROSE form GBEPCONF and a PDAX checklist message should be sent to the RAPS mailbox. The objection(s) should be stated in a form which is suitable for inclusion in an official letter, which will be sent over the signature of a member of RAPS but will give the name and telephone number of the examiner. RAPS will inform the applicant of the latest date for response and will deal with requests for extensions of time periods. ]
[ (d) Where the proprietor responds but raises no objection to revocation of the patent or leaves the question of revocation to be decided by the comptroller, RAPS should prepare Decision Form 3 and refer the case along with the Decision form to the group Deputy Director or group head for their signature. ]
[ (e) If the proprietor does not respond to Letter Clause PL3, RAPS should issue Letter Clause PL5 offering a hearing and, if there is still no response from the proprietor, RAPS should prepare Decision Form 6 and refer the case along with the Decision Form to the group head for their signature. ]
73.10
EPC r.39, a.105a and s.27(3) is also relevant
It is not possible to withdraw the UK designation after grant of the European patent. Nor does s.73(2) allow the comptroller discretion instead to revoke the European patent (UK). One way envisaged by s.73(2) to avoid revocation of the UK patent is to amend the specification of the UK patent to remove the conflict. Such amendment is deemed to take effect from the date of grant, so that any double grant that may have taken place will be nullified. Any amendments offered under s.73(2) are not advertised since s.73 proceedings are ex parte and so third parties cannot intervene. A further alternative available to the proprietor may be to request central revocation of the European patent before the EPO under EPC Article 105a. This allows the proprietor to request that their patent is revoked in all Contracting States in which the patent is in force. If the request is allowed, the revocation takes place ab initio having the effect of nullifying any double grant. Another course open to the patentee seeking to avoid revocation under s.73(2) is to make observations. In Henry Reed v Sir James Laing & Sons Ltd (BL C/74/96) Laddie J allowed amendment of the European patent (UK) under s.27 to avoid s.73(2) conflict even though the patent had lapsed. In this case Laddie J did not view a delay of 2½ years in seeking amendment enough to justify refusing leave to amend since the question whether or not the patent protection should proceed under the UK patent or the European patent (UK) or whether both could survive side by side was much more a matter of patent formality than substance.
Another option available to the proprietor may be to amend the European patent (UK) under s.27 to remove the conflict see 27.03-27.06 and 27.12-27.1 for further details of this process). In such circumstances, the s.27 proceedings should have a clear timetable in order to expedite the s.73(2) proceedings. The procedure for advertising the notice of such amendments in the Journal is the same as that of other requests to amend under s.27 see 27.20 The patent proprietor also has the option of amending his patent centrally before the EPO. If this course of action is taken then the time periods specified by the comptroller will still apply (see 73.09.1). If the patent in question has lapsed; the effect of the patent would be altered for the time it was in force as well as if it were to be restored. If s.28 proceedings are commenced for restoration of a lapsed European patent (UK) in case the corresponding UK patent gets revoked, but are not pursued following successful disposal of the s.73(2) proceedings, refund of the s.28 proceedings fee is not normally appropriate. See 73.11-12 for a further option open to the patentee.
| Section 73(4) |
| The comptroller shall not take action under subsection (2) above if the European patent (UK) has been surrendered under section 29(1) above before the date on which by virtue of section 25(1) above the patent under this Act is to be treated as having been granted or, if proceedings for the surrender of the European patent (UK) have been begun before that date, until those proceedings are finally disposed of; and he shall not then take any action if the decision is to accept the surrender of the European patent. |
73.11
Section 73(4) gives an opportunity to avoid revocation of the UK patent by, before grant of the UK patent, offering to surrender the corresponding European patent (UK). Surrender differs from revocation in that it is not fully retrospective in effect. There may, therefore, be a period in which two patents are in force for the same invention, but as one of those patents will be under notice of surrender throughout that period, nobody will be misled. However, once objection under s.73(2) has been made, revocation of the UK patent cannot be avoided by allowing the EP(UK) patent to lapse by non-payment of renewal fees, irrespective of whether the EP(UK) lapsed before or after the grant of the corresponding UK patent (Albright & Wilson Ltd’s Patent BL O/190/92 and Citizen Watch Ltd’s Patent [1993] RPC 1).
73.11.1
For the avoidance of doubt, s.73(4) makes it clear that the date at which the UK patent is to be treated as granted for this purpose is governed by s.25(1). In other words, for the purpose of the s.73(4), as with all provisions of the Act following s.25(1), the effective date of grant is the date on which the notice of grant appears in the Journal. The grant letter informing the applicant under s.18(4) that the UK application complies with the requirements of the Act and Rules and that a patent is therefore granted is issued several weeks before this date. This letter also informs the applicant of the date on which notice of the grant will be published in the Journal. Receipt of this letter therefore potentially gives the applicant a short window of time in which they can offer to surrender the European patent (UK) under s.29, secure in the knowledge that the UK patent will shortly come into force.
73.12
Revocation action should not be initiated if an offer to surrender the European patent (UK) under s.29 has been made and either been accepted or is still pending when the UK patent is granted. Such an offer should follow the procedure in 29.02-06. If however the offer is refused, action under s.73(2) should then be taken in the usual way. Where there are ongoing court proceedings which could result in an EP(UK) being revoked, this does not prevent revocation action being initiated under s.73(2) against a conflicting UK patent.