UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
Certificates (SPCs) (see 1.6 Further Protection After Lapse of the Maximum Term ). In order to enjoy the full 20 years of protection, the owner must pay a renewal fee annually from the fourth anniversary of the filing date onwards (at the UK IPO) or the third anniversary onwards at the EPO. 1.5 Rights and Obligations of Owners of Intellectual Property Rights Subject to a patent being found valid and infringed, the owner will be entitled to the fol- lowing remedies (as set out in more detail in 6.1 Remedies for the Patentee ): • an injunction to prevent further infringement of the patent; • delivery up of infringing goods; • destruction of infringing goods; • publication of the judgment finding infringe- ment at the cost of the infringer; • reasonable legal fees; and • damages or account of profits. • In order to maintain their rights, owners must ensure they pay any applicable renewal fees and requirements following the grant. Registered rights may be identified via the rel- evant registers – for example, UK patent rights can be found via Ipsum and European patents via the EPO or Espacenet. There is no register listing patents applicable to certain products or processes. 1.6 Further Protection After Lapse of the Maximum Term In addition to the standard 20-year patent term, certain medicinal products may qualify for SPC, which can extend the protection period by an additional five years. The duration of the SPC is calculated by taking the time elapsed between
the date the application for the basic patent was submitted and the date of the first market- ing authorisation (MA) and then subtracting five years from that total. SPCs were first introduced through EU regula- tions and subsequently imported directly into UK law following Brexit (Section 128B and Schedule 4A, Patents Act). Products protected by SPCs must first be protected by a patent in force and be subject to an active Marketing Authorisation. Additionally, where studies have been conduct- ed into the effects of the medicinal product on children, the patentee can apply for a further six-month paediatric extension to the duration of the SPC. 1.7 Third-Party Rights to Participate in Grant Proceedings During the procedure of registering a UK patent, third parties may intervene by filing oppositions or observations. During the examination of a pat- ent, third parties may file observations with the patent office (UK IPO, EPO or WIPO as applica- ble) or UK IPO, respectively. Following the grant, filing oppositions within a certain timeframe is possible. The objections should be filed within nine months of the grant at the EPO. It is not possible to file an opposition to a patent registered with the UK IPO, but an opinion may be requested. The UK IPO’s senior examiners will review the patent and publish a non-binding opinion typically within three months. Following the publication of an opinion that considers the patent invalid, the UK IPO may also decide to revoke the patent.
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