patent revoked, what can i do?

[supersnowgirl]

I work for a small UK construction company.
Since 1995, this company has sold a building product that holds a UK patent. During the last year, a disgruntled former employee decided to challenge the patent. Unfortunately, he successfully managed to get it revoked. The case summary is below:

"The applicant, Mr L, sought revocation of patent GB *****B arguing that the invention was not new or was obvious in the light of the disclosures in a number of documents. The invention related to a method of weatherproofing a building structure, in particular a roof, using ferrocement. The hearing Officer having construed the main claim, found that it was not new. The Hearing Officer also found the other independent claim, claim 20, to be lacking in novelty. The patentee's request for a further opportunity to amend was refused on the basis that the Hearing Officer could not find anything that might support a valid patent. "

However, I want to know how such a patent could be granted in the first place, if it could so easily be revoked. Can I claim any compensation from my patent attorney for failing to do proper research? Any opinions would be hugely appreciated. thks!

 

[LawHound]

We would need to see the whole communication from the IPO and the patent number but can give you some initial advice if you email to us. Info @lawhound.co.uk. Please put a link to this thread in the email and in the subject matter just put UKBF thread.

 

[MartCactus]

People tend to assume that once they have a patent, thats it, done and dusted.

Unfortunately that isn't the case. Patents are often granted incorrectly (either the invention already exists, or is obvious etc). This seems to be especially true in the US.

And therefore they can be, and are challenged.

I doubt you'd have any case against your patent attorney, after all he managed to obtain the patent. He submitted the best case he could, and it was granted. Would you sue a your lawyer if he won your case that really you should have lost?

To look at it another way, in every court case there is a loser. Should that party be able to sue his lawyer, because he lost? In cases of law there is always conflicting opinion - if there wasn't then you'd never have court cases (parties would agree everything so would be no need for a trial).

And what compensation would you get from the patent attorney? How have you lost out? You've had a valid patent for 15 years that probably scared off competition. If he'd done his research "properly", he'd have told you that you couldn't get a patent, and you'd have had no patent for 15 years, and probably lots more competition? You'd have been worse off!

So perhaps you should be congratulating him for getting a patent when you really shouldn't have had one?

 

[David Warrilow]

Hi

I'm a patent attorney at London IP.

I think if anything you should be grateful for having had a patent for so long and being able to say that your product was patented.

A patent attorney, or indeed anyone else, can never know whether or not a patent is actually valid. It's not our place to try to invalidate our clients' patents! We are here to help people gain protection.

The patent system is designed so that getting a patent granted is easier than defending one during an invalidation or opposition action and that is easier than defending one in court. This is as it should be.

The job of the patent office is to grant patents, not spend weeks preparing a case as to why one should not be issued.

Don't blame your attorney. Thank them for their help.

 

Well as an ex Product Manager for a global organisation all I can say is if that's the case I would pay a patent lawyer ever again.

All those guys in London and Cambridge getting paid a fortune -jesus:

 

[David Warrilow]

I (evidently) disagree, Michael.

How can a patent attorney know if a patent is valid?

We can never know if all the 'prior art' has been found until someone brings it up.

Even if we did know about everything that had been disclosed everywhere in the world at any time in history (which is 'prior art' and relevant to patent validity) often it is arguable as to whether or not something is 'inventive', which is largely subjective.

The UKIPO allows a lower standard of subjectivity for inventive step than do the courts. This is sensible, as the UKIPO examiners do not have the same time a judge (in any case) does to make decisions. The patent system would grind to a standstill if UKIPO examiners took a few weeks judging the merits of each application.

The patent system has been refined over many years and generally works very well.

It is never going to result in every patent that is granted being valid. That would be impossible for the reasons indicated above; e.g. if a child in Houston in 1932 once created something and showed it to their friends at school that could invalidate any patent granted tomorrow for the same invention in the UK.

We can never be certain of patent validity.

 

[creativebw]

I do not agree that:


"The job of the patent office is to grant patents, not spend weeks preparing a case as to why one should not be issued".

I have communicated with the Intellectual Property Office (IPO) many times over twenty years, concerning a large number of patents, and the replies from the IPO were concerned, initially, with ensuring that a patent was not granted unless newness and novelty was established. Months; not weeks, were often involved.

That is what the Examiner's, often understandable, objections to the Claims is about!

PATENTLY CREATIVE

 

[David Warrilow]

Hi Creative BW

It is the job of the UKIPO to grant patents, just as it is with any other patent office. For example the European Patent Convention states at Article 4(3):

The task of the Organisation shall be to grant European patents. This shall be carried out by the European Patent Office supervised by the Administrative Council.

The same principle applies to all patent offices.

You are correct that patents are examined for novelty and inventive step, but these are set at a lower standard than the courts, as evidenced by the number of patents revoked in litigation. I can dig the stats out from an old copy of the CIPA journal if you like.

The reason it takes months to get a response is not because an Examiner at UKIPO is considering your application, but because of the workload of the Examiners.

Indeed, there is such a backlog of applications at the UKIPO that first examination reports are currently not being issued until around 4 to 5 years from filing (unless combined search and examination is requested on filing). Examination must be requested by around 2 years from filing. The UKIPO certainly isn't spending 2 to 3 years examining each application....

Some Examiners are more difficult than others but provided there is an argument that whatever is being claimed is 'inventive' then we (as patent attorneys) can normally get something granted.

 

[creativebw]

Hello David Warrilow,

I was merely suggesting that it takes months to get a response because your reference was to "weeks".

The request for a Substantive Examination has to be made at between 18 and 24 months from the chosen Priority date.

Notwithstanding any delay in processing due to lack of staff (and I can confirm that it does take a considerable time to get the results back after requesting the Substantive examination) it can, in fact, also take a considerable time to get a patent granted, because the Examiner has to iron out "differences" between my point of view and his or hers.

I still maintain, therefore, that whilst it is the job of the patent office to grant patents, it is also its job to spend time preparing a case as to why one should not be issued; otherwise, without an arbiter, how could the Patent System work! There would be even more cases going into litigation if time was not spent arguing against claimed inventions.

Best wishes.

PATENTLY CREATIVE