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Invalidating a patent

Written by Corinne Day on 16 April 2010

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In order to obtain a patent over your invention, it must:

(1) be new

(2) have an inventive step that is not obvious to someone with knowledge and experience in the subject

(3) be capable of being made or used in some kind of industry

(4) not be:

a scientific or mathematical discovery, theory or method

a literary, dramatic, musical or artistic work

a way of performing a mental act, playing a game or doing business

the presentation of information, or some computer programs

an animal or plant variety

a method of medical treatment or diagnosis

against public policy or morality.

However, it is possible for the validity of a granted patent to be challenged on the following grounds:

(i) The invention was not a patentable invention;

(ii) The patent was granted to the wrong person (i.e. a person who was NOT entitled to own the patent);

(iii) The patent specification does not disclose the invention clearly and completely enough for it to be performed by a person skilled in the art;

(iv) The matter disclosed in the specification extends beyond that disclosed in the patent application as filed; or

(v) The protection conferred by the patent has been extended by an amendment which should not have been allowed.

In the UK, the court or comptroller may revoke a patent on any of the above grounds, on the application of any person. Further, the comptroller may on his own initiative revoke the patent.

In Europe, once a European patent is granted it transforms into a bundle of national patents. It can therefore be revoked according to the provisions set out in the relevant national law. However, a third party can challenge a European patent by raising an opposition against it within nine months of the grant of the patent.

Patents are prone to invalidity proceedings because an examined and granted patent is not guaranteed to be valid.

Invalidity proceedings usually arise due to the following circumstances:

Firstly, patent searches are flawed because there may be other more relevant items of prior art which the examiner did not discover or know about. Also, the examiner is normally only looking at published material and he has no knowledge of commercial operations which could amount to prior use of the iinvention.

Secondly, the draftsman of the patent claims will have to decide whether he drafts the patent claims precisely (which may affect the ability of the inventor to go after third party infringers) or widely and generally (which will make it much easier to catch potential infringers of the patent). The latter approach is usually adopted. However, drafting claims widely and generally risks covering prior art. It also risks the claims lacking enablement. These factors could render the patent invalid.

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