80.—(1) Subject to the provisions of this Act, the Registrar may, on the application of any person, by order revoke a patent for an invention on (but only on) any of the following grounds:
(a)
the invention is not a patentable invention;
(b)
the patent was granted to a person who was not entitled to be granted that patent;
(c)
the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art;
(d)
the matter disclosed in the specification of the patent extends beyond that disclosed —
(i)
in the application for the patent, as filed; or
(ii)
where the patent was granted on a new application filed under section 20(3) or 47(4) or section 116(6) of the Patents Act (Cap. 221, 1995 Ed.), or in accordance with section 26(11), in —
(A)
the earlier application made under this Act;
(B)
the application made under the United Kingdom Patents Act 1977; or
(C)
the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office,
as the case may be, from which the filing date and the right of priority has been derived, as filed;
[2/2007 wef 01/04/2007]
(e)
an amendment or a correction has been made to the specification of —
(i)
the patent; or
(ii)
the application for the patent,
which should not have been allowed;
(f)
the patent was obtained —
(i)
fraudulently;
(ii)
on any misrepresentation; or
(iii)
on any non-disclosure or inaccurate disclosure of any prescribed material information, whether or not the person under a duty to provide the information knew or ought reasonably to have known of such information or the inaccuracy;
(g)
the patent is one of 2 or more patents for the same invention having the same priority date and filed by the same party or his successor in title.
[19/2004]
(2) On the application of any person for an order to revoke a patent on any of the grounds specified in subsection (1)(a), (c), (d) and (e), the Registrar may, subject to subsection (3), cause the patent to be re-examined by an Examiner so as to determine whether the patent should be revoked on any of those grounds and require the applicant to pay the prescribed re-examination fee.
(3) The Registrar shall not cause a patent to be re-examined under subsection (2) where, within the prescribed period, the applicant for the revocation of the patent fails to give such security for the costs or expenses of the proceedings as the Registrar may specify; in which case, the application for revocation shall be treated as having been abandoned.
(4) An application for the revocation of a patent on the ground mentioned in subsection (1)(b) —
(a)
may only be made by a person found by the court in an action for a declaration or found by the court or the Registrar on a reference under section 47, to be entitled to be granted that patent or to be granted a patent for part of the matter comprised in the specification of the patent sought to be revoked; and
(b)
may not be made if that action was commenced or that reference was made after the end of the period of 2 years beginning with the date of the grant of the patent sought to be revoked, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.
(5) An order under this section may be —
(a)
an order for the unconditional revocation of the patent; or
(b)
where one of the grounds mentioned in subsection (1) has been established, but only so as to invalidate the patent to a limited extent, an order that the patent should be revoked unless within a specified time the specification is amended under section 83 to the satisfaction of the Registrar.
(6) A decision of the Registrar or on appeal from the Registrar shall not estop any party to any civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds referred to in subsection (1), whether or not any of the issues involved were decided in the decision.
(7) An order under this section revoking a patent shall have effect from the date of the grant of the patent.
(8) Where an applicant for the revocation of a patent discontinues or withdraws his application, he shall pay such costs or expenses of the proceedings as the Registrar may determine.
(9) An application for an order to revoke a patent shall be —
(a)
made in the prescribed form and filed at the Registry in the prescribed manner; and
(b)
accompanied by the prescribed fee.
(10) Section 92 shall not apply in relation to the decision of the Registrar to cause a patent to be re-examined under this section.
[UK Patents 1977, s. 72]
Registrar’s power to revoke patents
81. If it appears to the Registrar that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 14(3), 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 observation 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 84.
[UK Patents 1977, s. 73]
Proceedings in which validity of patent may be put in issue
82.—(1) Subject to this section, the validity of a patent may be put in issue —
(a)
by way of defence, in proceedings for infringement of the patent under section 67 or proceedings under section 76 for infringement of rights conferred by the publication of an application;
(b)
in proceedings under section 77;
(c)
in proceedings in which a declaration in relation to the patent is sought under section 78;
(d)
in proceedings before the Registrar under section 80 for the revocation of the patent; or
(e)
in proceedings under section 56 or 58.
(2) The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.
(3) The only grounds on which the validity of a patent may be put in issue (whether in proceedings for revocation under section 80 or otherwise) are the grounds on which the patent may be revoked under that section.
(4) No determination shall be made in any proceedings mentioned in subsection (1) on the validity of a patent which any person puts in issue on the ground mentioned in section 80(1)(b) unless —
(a)
it has been determined in entitlement proceedings commenced by that person or in the proceedings in which the validity of the patent is in issue that the patent should have been granted to him and not some other person; and
(b)
except where it has been so determined in entitlement proceedings, the proceedings in which the validity of the patent is in issue are commenced before the end of the period of 2 years beginning with the date of the grant of the patent or it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.
(5) Where the validity of a patent is put in issue by way of defence or counterclaim, the court or the Registrar shall, if it or he thinks it just to do so, give the defendant an opportunity to comply with the condition in subsection (4)(a).
(6) In subsection (4), “entitlement proceedings”, in relation to a patent, means a reference under section 47(1) on the ground that the patent was granted to a person not entitled to it or proceedings for a declaration that it was so granted.
(7) Where proceedings with respect to a patent are pending in the court under any provision of this Act mentioned in subsection (1), no proceedings may be instituted without the leave of the court before the Registrar with respect to that patent under section 67(3), 76, 78 or 80.
(8) It is hereby declared that for the purposes of this Act the validity of a patent is not put in issue merely because the Registrar is considering its validity in order to decide whether to revoke it under section 81.
