Ean is a Partner in our Electronics & Software team, based in our Manchester office. He has a particular interest in telecoms, having spent the first few years in the profession working in-house for Nokia. He regularly handles subject matter ranging from RADAR systems, signal processing and digital systems to pipe couplings, medical devices and production equipment.
Ean jointly heads our Education sector team and works for a range of clients, including Universities (in the UK and abroad), global corporations and SMEs, operating in and around the Manchester area. He particularly enjoys working with up and coming companies, including spin-outs, helping them to identify and protect their intellectual property. He has experience of hearings before the UK and European Patent Office and frequently advises clients on contentious issues where their rights may be infringed or where they are accused of infringing the rights of others.
Before entering the patent profession, Ean spent several years working as a design engineer for Marconi and Motorola. This real-life commercial experience was invaluable and gives Ean an insight into some of the challenges faced by clients.
Ean was also mentioned in Managing Intellectual Property’s IP Stars guide in 2017 and described as a “problem solver” by a client.
Currently, the validity of a European patent can be attacked in a number of ways. For instance, during the EPO procedure, 3rd party observations at the EPO can be filed, and after grant, there is a 9-month opposition period. Outside the EPO, after grant, actions for revocation and declarations of non-infringement can be brought in the courts.
Additionally, in the UK, the UK Patent Office is able to revoke the EP(UK) validation and can also issue non-binding opinions regarding validity and infringement under Sections 74A.
Some of these options will be affected by the UPC
The EU patent package does not affect the pre-grant procedures, so 3rd party observations will continue to be an option. Also, the opposition period will continue. This means parties looking to revoke a competitor’s patent can still do it centrally at the EPO, irrespective as to whether the competitor opts for UP or classically validates with or without an opt-out.
Where competitors opt for a Unitary Patent, or classically validate without an opt-out, within the first 9-months, there is a choice between revoking the patent in opposition proceedings and revoking the patent at the UPC. Given the UPC fees for revocation will be around £15,600 (€20,000), EPO oppositions will be the lower cost option.
It is therefore likely that EPO oppositions will become a more important forum and competitor watches can be set-up to alert you to the opposition period.
The option on courts will be determined by the patentee. If UP is requested, the patent will only be able to be revoked at the UPC. If the patent has been classically validated, the patent will need to be revoked through the UPC unless the patentee has opted-out.
If the classical validation has been opted-out, the current national procedures will apply.
The UKIPO opinion service is used by parties as a quick, low cost, but high quality independent view of a dispute. The service can be used to obtain opinions on validity and infringement of UK and EP(UK) classical validations.
The current draft legislation to implement the EU patent package in the UK maintains the opinion service and will therefore allow anyone to request a validity and infringement opinion against any granted European Patent irrespective of the validation option. That is, the opinion service will be available for Unitary Patents as well as classical UK validations whether or not they have been opted-out.
Although the opinions are non-binding and do not therefore have to be followed by subsequent tribunals, parties may choose to request an opinion, as they do now, to add weight or pressure to the other side before issuing proceedings. Notwithstanding the danger of getting the wrong answer, the Opinion service is likely to continue to be of benefit to parties after the UPC enters force.
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