1. What Are the Grounds for Patent Revocation in New Zealand?
2. What Is the Requirement to File a Patent Revocation in Europe?
3. Steps to Patent Revocation in Europe
4. When Can the Court Revoke a Patent?
5. Where Can Appeals to Revocation Be Filed?
6. What Is Provided Under Case Law of the Boards of Appeal Sec. 4.5.2?
7. Can a Patentee Still Pursue Damages If Parts of the Patent Have Been Invalidated?
8. When Can the Defendant Rely on the Revocation as to Damages?

Can a patent be revoked? A patent can be revoked if an aggrieved party files patent opposition or revocation proceedings to disprove the claims of the person who was granted the patent of their right of exclusivity.

What Are the Grounds for Patent Revocation in New Zealand?

If a party holds the view that a patentee should not be granted a patent or seeks the revocation of a granted patent, then the person can file a patent opposition or revocation proceedings based on the following reasons:

  • The patent's claims fail to spell out the subject matter which qualifies for a patent
  • The claim is not new or lacks inventive steps
  • The patent applicant is not the rightful owner of the invention
  • The details of the patent application fall short of specific requirements
  • The patent applicant has tried to secure the patent through false claims, fraud, or misrepresentation of facts.
  • The invention has been used in New Zealand secretly before the priority date
  • Granting the patent will be unlawful.

What Is the Requirement to File a Patent Revocation in Europe?

Regarding European or German patents, anybody can file an opposition for the revocation of a patent provided the opposition was filed within the nine-month period from the time when the grant of the patent was announced in the Patent Bulletin. In situations where the time for filing opposition proceedings has elapsed, or the opposition proceeding failed, the opposing party can still file a revocation proceeding against the granted patent.

Steps to Patent Revocation in Europe

The following are steps involved in patent revocation in Europe:

  • The opposition or revocation action must provide reasons it was wrong to grant the patent.
  • An experienced patent attorney should evaluate the success rate of the opposition or revocation action before it is filed by reviewing the file and relevant cases.
  • The company may file proceedings against the patent if the chances of success are considered to be high and the company can foot the bill.
  • When an opposition is filed, the Patent Office will reassess the relevant requirements for a grant or maintenance of the patent to determine their authenticity. A panel made up of the Patent Office officials will conduct the assessment.
  • Once the opposition has been examined, the Patent Office shall issue its decision on whether the patent should be revoked, maintain in limited form, or maintained as originally granted.
  • If the opposing party is not satisfied with the outcome of the proceedings, it may appeal the decision before the German Federal Patent Court.

When Can the Court Revoke a Patent?

If the Federal Patent Court considers the revocation action to be justified, it may decide to revoke the patent.

Where Can Appeals to Revocation Be Filed?

The German Federal Supreme Court is responsible for hearing appeals against the decision of revocation boards.

What Is Provided Under Case Law of the Boards of Appeal Sec. 4.5.2?

Under G 9/92 and G 4/93 (OJ 1994, 875), during opposition appeal proceedings, the amount of amendments which the patent holder can do depends on the outcome of the original opposition proceedings and on whether the patentee filed an admissible appeal or he was merely responding to the opposition proceedings.

Can a Patentee Still Pursue Damages If Parts of the Patent Have Been Invalidated?

Patentees can no longer claim damages in English courts if certain parts of the patent have been invalidated after the case has been decided in favor of their claim on infringement. This judgment has halted a century's precedence that allows patentees to seek damages even after the patent has been revoked.

The Supreme Court has also considered the possibility of allowing defendants to pursue revocation of damages after it has been awarded in such situations, even after the damages have been paid.

When Can the Defendant Rely on the Revocation as to Damages?

The Supreme Court recommends changing the way the Patent Court handles applications to stay proceedings until an EPO opposition is filed.

The Supreme Court holds a clear position in circumstances where an English court decides that a patent is valid and infringed, regardless of whether it's English or European, after which the patent was revoked or amended retrospectively. The defendant is allowed to rely on the revocation or amendment of the patent with regards to damages. Based on the speech of Lord Neuberger, the chances of an inquiry taking place are very slim in such situations.

If you need more information about patent revocation, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.