Patent Validity

We have previously considered when you might need to consider issues of patent infringement and validity and looked in more detail at patent infringement.  In this blog, we are going to look at patent validity in more detail.

What do we mean by validity?

You might think that once the Patent Office has granted a patent, there is no longer an opportunity to question whether or not the patent should have been granted.  However, this may not be the case.  Validity is an assessment of whether or not a granted patent meets all of the requirements for patentability, including novelty, inventive step, industrial applicability and not consisting of excluded subject matter.  This is essentially the same as the examination process, but is carried out post-grant and is usually the result of an objection from a third party.

Why is it possible to carry out this assessment again when it’s already been carried out during examination of an application?

When examining your application, the patent office examiner should look at all potentially relevant prior disclosures to assess whether or not your claimed invention is new and inventive and meets all other requirement to be considered patentable. 

However, given that all potentially relevant prior disclosures includes anything published, in any form, before the filing or priority date of an application, it is possible that the examiner may miss a potentially significant piece of prior art.  Furthermore, on some occasions, an examiner may not fully appreciate the full extent of a piece of prior art and therefore may not consider it as relevant as perhaps it should be.

What can you do if you think a granted patent is not valid?

Validity of a granted patent may be questioned post grant in invalidity proceedings, which may be stand-alone proceedings or may be filed in response to an infringement action.

You may consider commencing stand-alone invalidity proceedings if you have missed an opportunity to oppose a patent – for instance if you did not become aware of a patent until after any opposition period had expired and you think it may block your development in the future. 

In other circumstances, in carrying out searching as part of a product/process development plan a third-party patent may be highlighted that could potentially block commercialisation of a new product, or at least indicate a higher risk of infringement than you are comfortable with.

Sometimes you may look at such a third-party patent and decide to modify your product or process to avoid it.  Other times, you may look at the patent and wonder how it was granted.  In this situation you may choose to launch invalidity proceedings.

When else may I consider invalidity?

If you are on the receiving end of infringement proceedings, it is common to look at the validity of the patent you are accused of infringing.

What to do?

Whether you are on the receiving end of invalidity proceedings or you are considering instigating them, you should speak to you patent attorney.  They can review the relevant evidence and advise you on validity.  It is also possible to obtain further opinions on validity from an IP barrister or the UKIPO.  Your patent attorney can assist you in instructing these requests.

The patent attorneys at Mathisen & Macara LLP are all experienced in assessing validity of patents and providing opinions, so please feel free to contact us if you require any further advice or assistance.