Filing a request for revocation of a patent requires the payment of a fee and a request that will be heard before the Registrar of Patents’ tribunal. The Registrar will decide between the parties, i.e. between the patent owner and the party requesting the revocation of the patent, and will decide whether or not the patent will be revoked.
The decision of the Registrar of Patents can be appealed as of right by filing an application to the District Court, and the decision of the District Court can be appealed to the Supreme Court with leave.
Section 73B of the Patents Law states: “The Registrar may, at the request of any person who is not the owner of the patent, revoke a patent if he found that there is a ground on which the grant of the patent could have been opposed; the laws of prescription shall not apply to a request for revocation under this section.” (emphasis not in the original).
Who may file for revocation of a patent? “… any person…”
What are the grounds? “a ground on which the grant of the patent could have been opposed“
The reasons for which the grant of a patent can be opposed:
“There is a reason on account of which the Registrar would have been authorized to refuse the acceptance of the patent application”, i.e. the examiner erred and was not authorized to approve the grant of a patent, meaning the applicant did not meet the Patents Law and Regulations, according to the requesting party.
In other words, a request for revocation of a patent can be filed if it does not meet the conditions of the Patents Law. The Patents Law states in Section 3 what a patentable invention is, which an applicant must meet in addition to the other conditions of the law: “An invention, whether a product or a process in any field of technology, which is new, useful, can be applied industrially and involves an inventive step – is a patentable invention.” (emphasis not in the original).
“The invention is not patentable under Section 4(2)”, i.e. “4. An invention is considered to be new if it has not been published, whether in Israel or abroad, before the application date…” “(2) by way of exploitation or display, so that a person skilled in the art can carry it out according to the details that became known in this way.”
“The opponent, and not the applicant, is the owner of the invention.” In other words, someone else filed the invention when it is not his invention.
When can a request for revocation of a patent be filed? At any time: “… the laws of prescription shall not apply…”
A Race of Jurisdictions in a Request for Revocation of a Patent between the Registrar of Patents and the Court
In a request for revocation of a patent there is a kind of race of jurisdictions between the Registrar of Patents and the court, and therefore, for example, the manner and timing of sending a warning letter before a patent infringement claim are of great significance.
Section 74 of the Patents Law states: “Where a request for deletion under Chapter D or a request for revocation under Chapter D or under this Chapter was submitted to the Registrar while a proceeding for the infringement of that patent or its revocation is pending in court, the Registrar shall not hear it except with the permission of the court.” In other words, if an infringement claim has already been filed, the Registrar will not hear the request for revocation of the patent unless the court grants permission.
Moreover, the law states: “Where proceedings were opened in court for the infringement of a patent after a request for its revocation or deletion was submitted to the Registrar, the Registrar shall continue to hear the request, unless the court has given a different instruction in this matter.” In other words, if a person sends a warning letter before filing a patent infringement claim, and the alleged infringer files a request for revocation of the patent before the infringement claim is filed against him, the Registrar of Patents will hear the request for revocation of the patent unless the court has instructed otherwise.
However, it is important to remember that there is also a legal and financial risk for a party requesting the revocation of a patent who exploits the invention and files for revocation. If he does not succeed in the revocation request, there may be a cause of action against him also for damages caused by the revocation request, and the costs of the legal proceedings and the damages against him will increase.
Our firm handles proceedings of filing a request for revocation of a patent or defending against a request for revocation of a patent. In this proceeding, the Registrar of Patents will hear the case before the Registrar of Patents’ tribunal.
It is worth consulting with us regarding the legal strategy, in order to avoid taking actions that are not beneficial and are sometimes harmful.
The above information is partial and incomplete. An attorney and patent attorney should be consulted in each case individually. For more details, call +972-3-9711013.