PA 74 – Proceedings in which validity may be put in issue;

Question 1

what does S74 concern

Answer 1

proceedings in which validity may be put to issue

Question 2

during which proceedings can validity be put to issue

Answer 2

S74
(1) during proceedings under
a) S61 or 69 (as a defence for infringing rights in a patent / from publication)
b) s70A (in respect of an actionable threat)
c) S71 (declaration of non-infringement)
d) S72 (revocation)
e) S58 (disputed crown use)

(2) and NO others

Question 3

When can a determination be made in an invalidity proceedings where entitlement is put to issue

Answer 3

S74 (4)
(a) if it has been determined in entitlement proceedings in favour of the applicant; and
(b) entitlement proceedings commence on or before the second anniversary of grant (unless the proprietor knew they were not entitled)

Question 4

When can estoppel against proceedings in which validity questions may be put to issue occur

Answer 4

-where the same party has unsuccessfully challenged validity before, either wholly or in considering certain issues
- if an agreement not to challenge exists (other than a licence agreement)

Question 5

When will a stay of invalidity proceedings occur

Answer 5

if there is a parallel opposition proceeding at the EPO, although not if the opposition would take significantly longer as this would prevent swift access to possible revocation in the UK