Patent decision

BL number

O/360/14

Concerning rights in

EP(UK)1187632 B1

Hearing Officer

Dr L Cullen

Decision date

11 August 2014

Person(s) or Company(s) involved

Genentech Inc.

Provisions discussed

Section 29

Keywords

Surrender

Related Decisions

None

Summary

Genentech Inc, the proprietors of Patent Number EP(UK) 1 187 632 B1, entitled “Treatment with Anti-ErbB2 Antibodies”, granted on 3 December 2008, gave notice on 16 January 2014 of an offer to surrender this patent under Section 29 of the Act. At this time, the patent was also the subject of revocation proceedings in the Patents Court under Section 72 of the Act along with two other patents held by the same patent holder. The offer to surrender related to this patent EP(UK)1187632 B1 only and not to the other two patents involved in the revocation action.

The Hearing Officer found that, as an offer to surrender a patent under Section 29 of the Act must be advertised as laid down in Rule 75 of the Patents Rules 2007 and a period of 4 weeks must be allowed for any opposition to the offer to surrender to be received, a decision regarding the offer to surrender could only be made once these two events had been completed. In response to correspondence from the Comptroller, the patent holder provided a copy of a judgment issued in the Patents Court following a pre-trial review of the revocation action before Birss J on 30 January 2014 (see Hospira UK Limited v Genentech Inc. [2014] EWHC 208 (Ch))

On the basis of the information provided by the patent holder, including the above mentioned judgment, and a review of the relevant case law, the Hearing Officer concluded that the patent may properly be surrendered. The Hearing Officer considered that a number of factors were relevant to this decision which was in contrast to the more usual course of action, i.e. to stay the offer to surrender pending resolution of the related revocation proceedings in the court [see, for example, BL O/170/14 (OR) and BL O/475/02 (Dyson)].

In accordance with Section 29(3) of the Act, the Hearing Officer concluded that the patent will cease to have effect from the date when the notice of acceptance of the surrender is advertised in the Patents and Designs Journal.

Full decision O/360/14 65Kb