Patent owners spend a lot of time and money to secure a patent
It is important to be aware and avoid the risk of patent invalidation. Here's what you need to know.
Words by Todd Bateman
What are patent invalidation and patent revocation?
After a patent is awarded, it can be annulled, or its scope of protection restricted through a revocation or invalidation procedure. Thisis typically launched by a third party, who do so under a certain legal pretext.
For patent owners it is important to be aware of this potentially occurring and also avoid it where possible - should the patent be commercially critical to the business in question.
There are a number of reasons why this might occur.
For example, due to the huge number of applications, the examiner may only spend a limited amount of time and effort on each patent application during the patent examination process. When the examiners are under a lot of strain, and each examiner spends about two days on an invention on average this may limit the scope of the examiner's work is limited to preliminary screening and the scope of protection designation. It's not surprising that if the designation has a flaw, a competitor may contest the patent's validity.
Every year, a large number of patents are granted around the world, yet only a small percentage of them have significant economic value. Spending a significant amount of time processing each application and precisely defining the extent of protection is not cost-effective. It is more efficient to undertake preliminary screening during the examination process and then use the invalidation method to re-designate the boundaries of some high-value patents after the fact.
What is the process of patent invalidation and what are the factors involved?
Patent invalidation is the process of declaring a patent null and void. In the United Kingdom, the Patents Act 1977 governs the process by which patents can be invalidated. The act states that a patent can be invalidated on the grounds of lack of novelty, lack of inventive step, obviousness, insufficiency, or bad faith.
A patent can also be invalidated if the subject matter is not patentable, meaning it is not new, or if it does not meet the requirements of the act.
To invalidate a patent, a person must file a petition with the Intellectual Property Office. The petition must state the grounds on which the patent is being challenged, and must be accompanied by evidence.
The Intellectual Property Office will then decide whether to invalidate the patent. If the patent is found to be invalid, it will be removed from the register and the patent holder will no longer have exclusive rights to the invention.
How to avoid your patent being invalidated
There are a few key ways to avoid patent invalidation.
First, make sure to file for your patent as early as possible. The sooner you file, the less likely it is that someone else will beat you to the punch and file first.
Secondly, be as specific as possible in your patent application. The more detailed and specific your claims are, the less likely it is that your patent will be invalidated.
Finally, make sure to do your homework and research prior art thoroughly. If you are aware of what already exists, you can tailor your patent application to make sure your invention is truly novel and non-obvious.
All of these mitigate the factors that can come into play that would give rise to grounds for patent invalidation or revocation proceedings.
For more IP answers, review our FAQ section here.
Have received a threat of invalidation as it relates to your patent?
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Disclaimer: This FAQ should not be construed as legal advice on any specific facts. The contents are intended for general informational purposes only. You are urged to consult your own solicitor on any specific legal questions you may have.
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