The UK Intellectual Property Office (IPO) currently provides a Patent Opinion Service that allows users to request an impartial opinion on whether a patent is valid (specifically whether it is new or inventive) or whether a certain product or activity will infringe a patent. The official fee for requesting an opinion is a mere £200. Typically within three months of requesting an opinion, a senior examiner issues a non-binding opinion. The purpose of the Patent Opinion Service is to provide a useful tool in resolving disputes without litigation, negotiating the terms of a licence, or in deciding whether full legal proceedings may be successful. Although an opinion is non-binding, it may be persuasive.
To give an indication of how widely this service is used, 37 opinions were requested in 2012.
Proposed Changes To The Patent Opinion Service
In response to the Hargreaves review of Intellectual Property (IP) and growth published in May 2011, the UK Government has announced an Intellectual Property Bill which aims to modernise the IP system. The bill is currently progressing through Parliament. At the end of July, it left the House of Lords after three months of scrutiny. It will progress to the next stage (passage through the House of Commons) after the summer recess.
One of the provisions of the bill is to change the Patent Opinion Service.
Currently, if an opinion finds that a patent is invalid, it is the responsibility of a third party to start revocation proceedings, if necessary. This can be a costly and lengthy process. It is proposed that in very clear-cut cases, the IPO would be able to start the process of revoking a patent on behalf of the third party if an opinion shows a patent is not new and inventive. In response, the patent holder will be given the opportunity to provide arguments as to why the patent is new and inventive, or amend the claims to try to satisfy these requirements. The IPO envisages benefit to SMEs who may not have the financial capacity to bring a revocation action against a patent that is clearly invalid.
Currently, opinions as to the validity may only be requested in relation to novelty and inventive step. It is proposed to provide the IPO with the freedom to expand the Patent Opinion Service so that the IPO can give non-binding opinions on a wider range of issues concerning patent validity and not just novelty and inventive step. The questions on which Opinions on patent validity are sought may be more closely aligned with those grounds on which a patent can be revoked. These may include novelty, inventive step, industrial applicability, subject matter that it is excluded from patentability (e.g. certain methods of doing business, computer programs etc.), lack of enabling disclosure, the subject-matter of the patent extending beyond the content of the originally-filed application and unallowable post-grant extension of protection of a patent. An expanded service may thus allow a more complete assessment of validity, potentially adding to its attractiveness as a means for alternative dispute resolution.
It is also proposed that opinions may be requested on the validity or infringement of a Supplementary Protection Certificate (SPC) that has been granted on a patent. An SPC is a form of IP that extends the protection of a patented active ingredient or combination of active ingredients present in a pharmaceutical or plant protection product, after expiry of the patent.
The IP Bill also includes provisions for changing UK design law. One of these proposed changes is to provide a “Design Opinion Service” to provide a low cost, non-binding and impartial view on potential design disputes, such as infringement of a design or even ownership of a design right. The service would thus be analogous to the Patent Opinion Service.
Design law is often considered to be complex and confusing and so opinions issued by the IPO may provide clarity for businesses (in particular, it is envisaged, for small business) in alternative dispute resolution.
For more detail on the passage of the IP Bill, please click here.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.