Watch out for the patent that never was!

The IPKat's friend Jenny Sunderland (Wragge & Co LLP) has written to him with a truly amazing proposition: "Question: When does a patent that does not exist exist? Answer: when the European Patent Office says it does". She explains:

"I have a client with a distinctly fishy problem. It has been sued in the UK with respect to a EP (UK) patent that shouldn't exist. The facts are quite interesting and have far-reaching consequences.

The patentee filed a Request for Grant that did not designate GB and which also contained express wording that GB should not be designated. At some point during prosecution the applicant and the EPO began working on the assumption that GB was in fact designated and an EP (UK) patent was duly granted.

This GB designation issue has been raised with both the EPO Examining Division and the Opposition Division (as part of ongoing opposition proceedings). The Opposition Division acknowledged that a mistake had been made and said that "they regretted any adverse effect that might result for our client or more generally for the public". They passed the issue on to the Examining Division.

The Examining Division were less willing to admit the mistake. They said first that the mistake should have been clarified with the applicant: as it wasn't, there was no explicit withdrawal of designation. Secondly, they said that even if there was an explicit withdrawal of designation, the EPO would be bound by a principle of good faith and cannot correct the decision to grant to the disadvantage of the patentee.

Under the current law and guidelines of the EPO the lack of GB designation means (a) that there is no need for future withdrawal because (b) the UK patent never came into existence and (c) it cannot be revived whether by principle of good faith or otherwise. The EPO also claims that the actions to rectify this mistake are inadmissible; the matter is between the EPO and the patentee. So then how is a party to UK litigation and opposition proceedings to correct a clerical error made in the EPO during prosecution that will potentially cost it many millions of pounds?

I would be grateful for your view and the views of the IPKat readers on this one".

The IPKat wonders whether a British court would grant the equitable remedy of injunctive relief to restrain the doing of an act which is unlawful only on the basis of an error which the alleged infringer had no locus standi to seek to correct. Merpel notes that sometimes kittens are created accidentally and when their owners don't intend to have them, but that doesn't help here ...