In depth analysis of the UK patent invalidation system:Legal framework, procedural strategies, and practical points

Section 72 of the UK Patent Act 1977 specifies the statutory circumstances under which a patent may be declared invalid, including the following six categories:

Absolute novelty standard:The technical solution claimed in the patent has been made known to the public (regardless of geographical location) before the priority date through the following means:

Written disclosure(publications, patent documents, etc.);

Using Public(sales, display, public implementation, etc.);

Any other form of disclosure(including oral reports, online disclosures, etc.).

Exception:According to Article 2 (4), if the disclosure behavior originates from the applicant or its former rights holder and occurred within 6 months before the application date, it may not be considered as existing technology (grace period system).

Obvious Test:Based on the cognitive level of ordinary technical personnel in this field, combined with the overall inspiration of existing technology, determine whether the invention exceeds the scope of conventional technological improvements.

Case law guidance:

Windsurfing/Pozzoli Four Step Method (Pozzoli SpA v BDMO SA [2007]): Establish a standardized process for creative judgment;

Technical bias and long-term demand: If an invention overcomes industry recognized technical barriers, it may enhance creativity recognition.

Invention must be able to be manufactured or used in any industry field, including agriculture.

Exclude objects:Treatment methods (surgical procedures, diagnostic methods), animal and plant species, etc.

The instruction manual must disclose the invention in a fully clear and complete manner, enabling technicians to implement it without excessive experimentation (Article 14 (3)).

Key case: Biogen v Medeva [1997] emphasizes that disclosure should cover the full scope of the claims.

The modification of a patent application shall not exceed the scope of disclosure of the original submitted documents (Article 76).

Judgment criteria: Whether the modified claims are directly and clearly derived from the original text (Vector Corp v Glatt Air Techniques [2007]).

Explicitly exclude (Article 1 (2)): discoveries, scientific theories, mathematical methods, aesthetic creations, business methods, computer programs (unless producing "technical effects"), information presentation methods, etc.

The particularity of software patents: It is necessary to prove that the combination of programs and hardware has made a "technological contribution" (HTC v Apple [2013]).

Jurisdiction selection:

The High Court:Complex technical cases and disputes over high standard amounts;

Intellectual Property Enterprise Court (IPEC):Small and medium-sized cases, with a maximum cost of £ 500000 and simplified procedures.

Core process:

Sections of Claim Submission:List the reasons for invalidity and legal basis;

Disclosure:Including existing technical literature, experimental data, expert reports, etc;

Technical Primer:Both parties have reached a consensus on the technical background;

Trial:Oral debate and cross examination (usually 1-2 weeks);

Judgment:The judge may declare the patent invalid in whole or in part.

Key features:

Expert witness system:Both parties need to hire technical experts to issue independent reports;

Cost Transfer RulesThe losing party usually needs to bear 70% -85% of the legal fees of the winning party.

UK Patent Objection (UKIPO):

Time limit: Within 9 months after the patent authorization announcement;

Written trial: No court hearing required, relying on written statements and evidence;

The examiner ruled that UKIPO may maintain, partially revoke, or completely revoke the patent.

European Patent Objection (EPO):

Scope of application: The parts of European patents (EP) that are in effect in the UK;

Objection period: Within 9 months after the EP authorization announcement;

Procedural impact: Successful EPO opposition will result in the invalidation of the patent in all designated countries (including the United Kingdom).

Program comparison:

European patents (EP) can still be validated through the UKIPO verification process in the UK;

The EPO opposition procedure still affects the validity of UK patents, but UK courts are no longer bound by the precedents of the European Court of Justice (CJEU).

The UK's withdrawal from the UPC system renders the UPC ruling invalid for the UK;

The invalidation process for European patents that are in effect in the UK must be conducted separately in UKIPO or UK courts.

fight a quick battle to force a quick decision:Prioritize launching attacks on high-risk patents during the UKIPO/EPO opposition period;

Combination litigation:Apply for Stay of Proceedings while filing an invalid counterclaim in court.

Technical restoration analysis:Disassemble patent claims and match existing technical features;

Comparison of Technical Effects:Proving a lack of creativity or practicality through experimental data.

Utilizing the synergistic effect of EPO opposition and UK court procedures for patents of the same family;

Pay attention to the mutual recognition of evidence between the US PTAB/IPR program and the UK program.