Patentee prevented from surrender to hearing officer

This Kat recently became aware of a, to him, somewhat surprising decision of the UKIPO (BL O/170/14) to stay the allowance of an offer to surrender a patent pending the outcome of a revocation action before the High Court.

For the benefit of those who are not quite so au fait with UK patent practice, surrender of a patent (governed by section 29 of the Patents Act 1977) results in the patent ceasing to have effect as of the date of publication of the surrender (ex nunc). Surrendering is a quicker and more definite way for a patentee to be rid of an unwanted patent than simply allowing the patent to lapse by failing to pay renewal fees. By contrast, if a patent is revoked under section 72, the effect is retroactive and the patent is deemed never to have been granted (ex tunc).

Turning to the case at hand, OR Specific (“ORS”) was the proprietor of EP(UK) 1237494 B (“the Patent”). In a letter of 30 December 2013, the representative for ORS contacted the UKIPO offering to surrender the Patent. In accordance with the statutory obligation, ORS duly informed the UKIPO that Kimberley-Clark Europe Limited (“KC”) had commenced an action for revocation of the Patent prior to the surrender offer being made. Being a curious creature, this Kat poked his moist and highly sensitive nose into the UKIPO’s online file history and found that, in the letter to the UKIPO, ORS stated that KC did not enter into any pre-action correspondence with them and that had KC done so, ORS would have made the offer to surrender earlier in order to avoid revocation proceedings altogether.

Who could delay this offer
to surrender?

In any case, the offer to surrender was advertised in the Patents Journal, no opposition to the surrender was filed, and everything appeared to be going smoothly for the patentee. However, the UKIPO Hearing Officer had other ideas. After considering the “sparse” case law on what should happen when a patentee offers to surrender a patent while a revocation action is pending, the Hearing Officer ruled that it would be desirable to bring the offer to surrender into the same forum as the revocation action. The Hearing Officer ordered that the surrender proceedings before the IPO be stayed pending the outcome of the revocation action. The Hearing Officer considered that such an order would not unduly delay the overall proceedings and would not prejudice the patentee’s position, as surrendering would still be an option for the patentee, and that if they have no interest in the Patent they may simply choose not the defend the revocation action (as, if revocation were ordered by the court, there would be no patent left to surrender).

This Kat finds the lack of a clear precedent to follow in these circumstances rather surprising, and the Hearing Officer’s decision has likewise raised an eyebrow. The offer to surrender was not opposed, giving a strong impression that no third party would be adversely affected by any surrender. Subsequent revocation of a surrendered patent would only really change the effective date on which the patent ceased to have effect, and hence this Kat can see no harm in allowing the surrender now, which would give more certainty more quickly.

A hearty Katpat to Fergus Tyrrell for assistance in the preparation of this post.