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A non-binding opinion with a sting in the tail


Since 2005, the UK Intellectual Property Office (IPO) has provided a patent opinion service. For a £200 fee, anyone can request an opinion on whether a UK patent (including a European patent (UK)) is valid or whether a certain product or activity will infringe a UK patent. Although the opinion is non-binding, it has provided a useful tool for some in resolving disputes without resorting to litigation, or for negotiating licence agreements.

Up until 1st October 2014, if the opinion found that a patent was invalid through lack of novelty or inventive step, it was up to a third party to begin revocation proceedings. However, such proceedings can be costly and time consuming. However, as of 1st October, the IPO has been given extra powers to revoke patents. In particular, the IPO may revoke a patent, of its own initiative, for lack of novelty or inventive step (new Section 73(1A) – 1(C) of the UK Patents Act, as amended). This provision has been implemented as part of the Intellectual Property Act 2014.

Does this represent a useful opportunity for third parties to revoke a patent that does not require them to engage in full revocation proceedings?

Under the new provisions, it does appear that granted UK patents are at greater risk than they were before 1st October 2014. There is certainly the potential for third parties to cause headaches for patent holders at a relatively low cost. In addition to the low cost, there are also the added benefits that third parties are not liable for the patent holder’s costs should the opinion find in favour of the patentee; and that, unlike EPO Oppositions, opinions can be requested at any time (even if the patent has expired or has been surrendered).

The IPO has indicated that it will only revoke a patent in clear cut cases where the patented invention clearly lacks novelty or inventive step. This raises the question: how clear cut does it have to be? Indeed, the question of novelty is often more clear cut than inventive step. Does this mean that, in practice, the IPO will only have the confidence to revoke a patent based on novelty? I suspect that this will be the case and that the IPO will be very reluctant to revoke a patent based on an opinion concluding lack of inventive step.

Although the IPO may now revoke patents based on an opinion, a number of safeguards exist for the patent holder:

  • The patent holder will have the opportunity to apply for a review of the opinion before any revocation action is commenced.
  • In a review, the patent holder can challenge the opinion on the grounds that the IPO wrongly concluded that a patent was invalid. The review procedure usually involves a Hearing and will result in either the opinion being upheld or set aside. In practice, the hearing officer should only decide on an opinion was wrong if the examiner has made an error of principle or reached a conclusion that is clearly wrong. So, even if the hearing officer may not agree with the opinion, if there has been no error of principle, it is unlikely to be set aside. The review decision can be appealed to the court by the patent holder, if the opinion is upheld in whole or in part.
  • The patent holder will have the opportunity to provide arguments or to amend the patent to try and overcome the problem and prevent revocation.New Section 73(1C) states that the IPO should not exercise the power to revoke without giving the patent holder of a patent an opportunity to make any observations and to amend the specification. So, if the patent holder amends the patent and/or submits observations which satisfy the IPO that revocation is not necessary, it will not be revoked but will be upheld as amended.Is there anything to stop third parties requesting another opinion based on a patent that has been amended to avoid revocation? Under section 74A(3), the IPO can refuse to issue an opinion and the Manual of Patent Practice (74A.04) suggests this may occur if the request appears frivolous, vexatious or the question upon which an opinion is sought appears to have been sufficiently considered in any proceedings. So, if an amendment raises new issues it seems possible that a third party could request another opinion.
  • If a patent is revoked, the patent holder will be able to appeal this decision to the Courts.

Since 2005, the patent opinion service has not been used extensively. From the beginning of 2014 and up to the end of October, there have only been 20 opinion requests. I do, however, foresee an increase in uptake of the service from third parties (probably mostly SMEs) who are looking to unsettle competitors with patents.

On a related point, it is also now possible to request an opinion on validity of a UK patent, based on a wider range of grounds. Up until 1st October, the IPO only considered novelty and inventive step. The IPO may now consider the following grounds:

  • whether, or to what extent, an invention for which the patent has been granted is not a patentable invention (i.e. is the invention new, does it involve an inventive step, is it industrially applicable and does it fall into one of the categories excluded from patent protection);
  • whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
  • whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed; and
  • whether the protection conferred by the patent has been extended by an amendment which should not have been allowed

Nevertheless, novelty and inventive step are the only grounds on which the IPO can revoke the patent of its own initiative.

Furthermore, an opinion can now be requested on the infringement or validity of a Supplementary Protection Certificate (SPC). Before 1st October, the opinion service was restricted to patents.

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.

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