Section 73

Comptroller's power to revoke patents on his own initiative

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73.-(1) If it appears to the comptroller that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 2(3) above, he may on his own initiative by order revoke the patent, but shall not do so without giving the proprietor of the patent an opportunity of making any observations and of amending the specification of the patent so as to exclude any matter which formed part of the state of the art as aforesaid without contravening section 76 below.

(1A)1 Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.

(1B)2 The power under subsection (1A) may not be exercised before -

  • (a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or
  • (b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).

(1C)3 The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.

(2) If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent.

(3) The comptroller shall not take action under subsection (2) above before -

  • (a) the end of the period for filing an opposition to the European patent (UK) under the European Patent Convention, or
  • (b) if later, the date on which opposition proceedings are finally disposed of;

and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention.

(4) The comptroller shall not take action under subsection (2) above if the European patent (UK) has been surrendered under section 29(1) above before the date on which by virtue of section 25(1) above the patent under this Act is to be treated as having been granted or, if proceedings for the surrender of the European patent (UK) have been begun before that date, until those proceedings are finally disposed of;
and he shall not then take any action if the decision is to accept the surrender of the European patent.

Notes:
Manual of Patent Practice

73(1) relates to 'dormant' prior art published after grant of application in issue, i.e. application is granted quickly (<18 mo).

"same invention":

  • differences in scope do not avoid the application of s73(2) (Maag Gear's Patent [1985] RPC 532);
  • overlapping protection includes coverage of the same invention (Marley's Patent [1994] RPC 231)

EP(UK) patent being allowed to lapse does not prevent corresponding UK patent from being revoked.

EP(UK) may be surrendered before s25(1) date to avoid revocation of UK patent or by deleting UK designation. Surrendering EP(UK) will only be possible if EP grants before UK (very unlikely).

Comptroller cannot take action before opposition period ends or proceedings are concluded.

Revocation is ex tunc.

"Double Patenting" objection may not be as strict under EPC: T 587/98 (Komag); overlapping parent and divisional claims can be allowable, since there is no provision in the EPC to prevent this.

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