UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
1.8 Remedies Against Refusal to Grant an Intellectual Property Right During the examination of a UK patent, the IPO issues opinions regarding the registrability of the patent. Applicants are given the opportunity to correct any deficiencies identified. If an applica- tion is still refused after this process, the appli- cant can appeal the initial decision directly to the UK IPO. Additionally, applicants have the right to appeal to the High Court, notably demonstrated in the recent case of Thaler v Comptroller of Pat- ents, where the case was ultimately taken to the Supreme Court. In the case of patents filed with the EPO, decisions of the Examination Division can be appealed to the Technical Board of Appeal. 1.9 Consequences of Failure to Pay Annual Fees There is a six-month grace period at the UK IPO during which late payment of the annual renewal fee may be made (additional late payment fees also apply). After this period, the patent right lapses. However, if the patentee has a good reason as to why the deadline was missed, the patentee may apply to restore the patent within 13 months of the expiry of the grace period. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights A UK patent may be amended post-grant in cer- tain restricted aspects (the most important con- sideration in a post-grant amendment context will typically be whether the amendment adds matter over and above the patent application as filed). The patent may not be amended to extend the scope of its protection. The patentee may apply to the IPO or court to request an amend- ment (in the case of the latter, the IPO should also be informed and sent the application). Pat- entees should note that applications to amend
will be published, and third parties may oppose prior to the relevant authority issuing its deci- sion.
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
A claim may be brought by the owner (or an exclusive licensee) of a patent in the first- instance courts (see 2.3 Courts With Jurisdic- tion ). Alternative dispute resolution is encour- aged by the courts but is not mandatory. Most large-scale patent cases proceed to be heard before the court through to final judgment. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Opposition proceedings cannot be brought in the UK; however, it is common to file nullity pro- ceedings in the UK while parallel EPO opposition proceedings are ongoing. Post-grant review is not available. Any party can initiate an action to revoke a pat- ent without needing to establish standing. Revo- cation actions can be brought before the courts of England and Wales or the UK IPO. Addition- ally, infringement and validity opinions can be requested from the UK IPO, although these opinions are non-binding. Nevertheless, a patent may be revoked if it is determined to be invalid by the UK IPO. A declaration of non-infringement may be granted by the Patents Court and the Intellec- tual Property Enterprise Court (IPEC) in main proceedings or upon application to the Comp- troller. “Arrow” declarations (ie, declarations that a claimant’s process or product was obvious or not novel) can be sought by a third party to
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