Understanding IP Application Opposition: Timelines, Criteria, and Remedies
This article provides an insight into why the Intellectual Property Office (“IPO”) may oppose an Intellectual Property (“IP”) application, and the potential remedies to deal with opposition. For an in-depth explanation of what IP is, please refer to our article on the basics of protecting your IP here.
Opposition refers to when a third party opposes the registration of your patent or trademark. To gain an insight into why the IPO may oppose an application, it is helpful to develop a rough understanding of the timeline of an application to register a trademark or patent.
Trademark application timeline
Click here for a more detailed timeline.
Patent application timeline
Click here for a more detailed timeline.
Opposition
Trademarks
A trademark application may be opposed on two grounds: absolute grounds and relative grounds.
Absolute grounds
Absolute grounds for opposition occur when the trademark is generic for the good and/or services its use is intended for. This means the mark should not be isolated to one owner but should be accessible to all within the line of trade its use is intended for.
An example of this is the repetitive high-pitched sound of a fire alarm. A mark like that should not have grounds to be owned by an individual, as it is specific to the line of trade. It is also hard to replace with something else. Anyone can oppose the trademark application on absolute grounds.
Relative grounds
Relative grounds for opposition are used when an earlier trademark/right conflicts with the applicant’s mark/right. In essence, this means that a mark/right that is fundamentally similar or identical already exists.
An example of this is Nike’s slogan, Just Do It. If this slogan was used for another company, it would lead to confusion in the market as well as various other problems. In contrast to absolute grounds, only the proprietor of an earlier trademark may oppose.
Click here to check out the statute’s definition and explanation on both Absolute and Relative grounds of opposition.
Patents
To challenge the validity of a patent, one can request an opinion from the IPO and/or file an opposition in court to invalidate or revoke a patent:
Invalidation - removes the patent from the registrar.
Revocation - the patent is revoked from the date of the application being requested. Revocation means that the patent will be void and treated as never having existed.
The difference between the two is that invalidation occurs retroactively, whilst revocation occurs before it gets to that point
An application may be revoked or invalidated based on the following grounds:
Non-patentability;
Non-entitlement;
Insufficiency;
Added matter; and
Unallowable post-grant extension.
It is also possible to oppose a patent through dispute resolution methods, but this will incur additional time and cost. The opposition to a patent can only take place post-granting of the application.
Grounds
Non-patentability
The invention is not patentable due to it not being inventive. A patent has to be something novel and different to previous inventions. It ensures patents are not awarded to existing patent applications that have just been tweaked for improvement.
Non-entitlement
The patent was granted to a person by mistake who was not initially entitled to it. This may occur when the person that applied for the patent is not actually the inventor, or the patent right was not correctly acquired by the patent applicant from the inventor. This prohibits wrongful ownership.
Insufficiency
The patent specification covered within the application is not cohesive and does not disclose the invention clearly. The intention is that the patent ought to be understood by a skilled person within the line of trade it is made for.
Added matter
The patent application exceeds the contents of the originally filed application. This ensures that the patent is legal both in its proceedings and when it is in use.
Unallowable post-grant extension
The patent was incorrectly given a protection extension period by an amendment that should not have been allowed.
Remedies for opposition
Remedies may include legal proceedings against the IPO or third-party opposition. Due to courts being inundated with cases, it is always prudent to consider Alternative Dispute Resolution (ADR) methods. For an in-depth explanation of ADR, check our article here.
IPO’s patent dispute resolution hearing
There are two forms of hearings to be aware of: an ex parte hearing, for a dispute between yourself and the IPO; and an inter parte hearing, for a dispute between yourself and a third party. Find out more here - IPO's patent dispute hearings.
Mediation
This addresses issues without the need for court. This is done through talking and negotiating with the opposition with the help of an independent mediator. The IPO offers a mediation service, helping resolve disputes about patent infringement, patent licensing and entitlement. Find out more here - IPO's mediation service.
IPO’s patent opinions
You can ask the IPO for an opinion about a dispute with someone else on the validity of your patent. This is a relatively low-cost way of a potential resolution to the dispute. Find out more here - post-grant opposition of patents.
Author: Aminoor Masoom -
Author: Aminoor Masoom -
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DISCLAIMER
This article has been written by law students for the sole purpose of providing informative insight. The information in this article is intended for educational purposes only and does not constitute legal advice, nor should the information be used for the purpose of advising clients. You should seek independent legal advice before relying on any of the information provided in this article.
Sources
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(Hgf.com, 2022) <https://www.hgf.com/wp-content/uploads/2021/01/Opposing-a-TM-in-the-UK.pdf> accessed 10 September 2022
(Assets.publishing.service.gov.uk, 2022) <https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/1083588/Trade-Marks-Timeline.pdf> accessed 10 September 2022
(Assets.publishing.service.gov.uk, 2022) <https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/1083860/Patents-Timeline.pdf> accessed 10 September 2022
'Entitlement - Albright-IP' (Albright-IP, 2022) <https://www.albright-ip.co.uk/patents/entitlement/> accessed 10 September 2022
Gov U (2022) <https://www.legislation.gov.uk/ukpga/1994/26/section/5> accessed 10 September 2022
'Guidance: Standard Opposition Proceedings Before The Trade Marks Tribunal' (GOV.UK, 2022) <https://www.gov.uk/government/publications/trade-marks-standard-opposition/guidance-standard-opposition-proceedings-before-the-trade-marks-tribunal> accessed 10 September 2022
'Post-Grant Opposition Of Patents | Nibusinessinfo.Co.Uk' (Nibusinessinfo.co.uk, 2022) <https://www.nibusinessinfo.co.uk/content/post-grant-opposition-patents> accessed 10 September 2022
'Resolving Patent Disputes | Nibusinessinfo.Co.Uk' (Nibusinessinfo.co.uk, 2022) <https://www.nibusinessinfo.co.uk/content/resolving-patent-disputes> accessed 10 September 2022
'Patent Disputes Resolution: Hearings' (GOV.UK, 2022) <https://www.gov.uk/guidance/patent-disputes-resolution-hearings> accessed 22 September 2022
'Post-Grant Opposition Of Patents | Nibusinessinfo.Co.Uk' (Nibusinessinfo.co.uk, 2022) <https://www.nibusinessinfo.co.uk/content/post-grant-opposition-patents> accessed 22 September 2022
