UK patent law outranks EU community law on deadlines, rules IPO

The IPO said that the UK Patents Act took priority over the CPC and said that a maker of devices for the oil and gas industry missed the deadline to challenge a patent decision.

"I concluded that these proceedings ... were brought out of time," a hearing officer at the IPO said in the ruling. http://www.ipo.gov.uk/patent/p-decisionmaking/p-challenge/p-challenge-decision-results/o14911.pdf (8-page / 35KB PDF)

Rigcool Limited claim it owns the patent for a nozzle that can attach to hoses and is used by companies in the oil and gas industry. The patent is registered to its rival, Optima Solutions. Rigcool commenced court proceedings against Optima at the Court of Session in Scotland on 27 August 2010. Optima had registered the patent for the nozzle on 27 August 2008.

The Patents Act says a legal challenge to patent ownership cannot be brought to court after the patent granted has existed for two years.

"The court shall not ... determine a question whether a patent was granted to a person not entitled to be granted the patent if the proceedings ... were commenced after the end of the period of two years beginning with the date of the grant," the UK Patents Act says (97-page / 308KB PDF).

The CPC, though, says that the second anniversary of the granting of a patent is included within that two year period. Rigcool said that it should therefore be allowed to challenge the patent award.

"Legal proceedings ... may be instituted only within a period of not more than two years after the date on which the European Patent Bulletin mentions the grant of the European patent," the Community Patent Convention says.

The IPO hearing officer said that the CPC did include the second anniversary of a patent being granted within the deadline for a legal challenge but said that the UK law overruled it.

"If there is a difference in meaning between a 1977 Act provision and the corresponding provision of the CPC, one should not give direct effect to [a] ... CPC provision," the hearing officer at the IPO said.

The Patents Act says that it supersedes what is stated in the CPC.

"References in this Act to ... the Community Patent Convention ... are references to that convention ... replacing it," the Patents Act says.

"Consequently, as matters stand, the revocation action will have to be ruled inadmissible," the IPO ruling said.

The hearing officer did say that rules in the Patents Act allowing the IPO to "correct irregularities" could be imposed and invited Rigcool and Optima to submit evidence to determine whether it should allow a legal challenge to go ahead.