New Year cheer for European patent owners everywhere

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  • What an astonishing load of nonsense! The patentee in this case submitted an application form to the EPO which stated in unequivocal terms that the GB jurisdiction was "not desingnated". It even put it in capitals. The upshot was that the European Patent should not have been granted for GB. By a mistake at the EPO they went ahead and acted as though it had been designated. Actually, the non-designation could only have been reveresed if it could be shown to have been a mistake by the applicant. Nothing about the relevant form spoke of a mistake. The only mistake was that made by EPO officials. The upshot was that a patent was granted which should never have been granted and the patentee spent six years trying to enforce it against various defendants. Fortunately their efforts failed on all fronts, but the irrecoverable time and cost was immense. Rather than sleeping soundly at night, the general public should be very concerned that the EPo can make any adminstrative mistake it likes, but UK businesses and citizens have no right of judicial review according to this perverse decision. This strange state of affairs forms part of Spain's justified attack on the proposed Unitary Patent System, where the all powerful influence of the unaccountable EPO will only be strengthened.

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  • The article asks "Is it fair to deny a patent owner a full opportunity to make a return on his investment because of a procedural error?"

    I think an equally valid question would be "Is it fair to subject multiple parties to six years of litigation on a patent that should not have granted were it not for a procedural error by the EPO?"

    The patent in question was a divisional European patent application which eventually granted with a GB designation. Nothing too odd there you might think until you appreciate that the applicant explicitly requested that GB should not be designated when they filed the divisional application forms! They even used CAPITAL LETTERS (the use of which in a comment such as this would normally be taken to mean "shouting"! So you could argue that the applicant didn't just ask for GB not to be designated but they shouted the request at the EPO!)

    The statement "EPO had itself reviewed the 'error'" is also interesting. The GB designation issue was raised in Opposition proceedings but the opposition division sent the question back to the examining division to address. In other words the division that made the oversight then decided whether there had been an error.

    It is interesting that in the High Court The Hon Mr Justice Floyd commented (para 188 of Virgin v Contour and others [2012] EWHC 2152 (Pat)) that "the desire not to designate GB at all, or to countermand immediately the mandatory designation, could scarcely have been clearer" !

    Another take on this issue can be found at http://ipcopy.wordpress.com/2014/01/07/the-unitary-patent-the-spanish-challenge-and-a-costly-admin-error/ which considers the designation issue in the context of the Spanish challenge to the unitary patent system.

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  • I for one will not be sleeping soundly. I’m just glad I wasn’t acting for the defendant as I might have advised them that patentee’s statement on the patent application form that “GB is expressly NOT designated” was pretty much the end of the road so far as protection in the UK was concerned, and that the erroneous entry in the patent register would be corrected as soon as the European Patent Office’s mistake was brought to their attention. It’s a sorry state indeed when one part of the European Patent Office apologises for the “inconvenience” caused by its error, and another part issues a statement that is legally flawed. Viva Espana!

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