Background
The UK Intellectual Property Office’s Opinions Service was set up to provide non-binding opinions on the validity of UK or EU patents, or their infringement. This article will look at reforms to the Service, which widened its powers.
The Opinions Service
In order to obtain an opinion, the requesting party must submit a written statement outlining its arguments on validity or infringement and enclose any supporting documentation. The statement may either be provided by the applicant or anonymously (through use of a third party). Within three weeks of the application being submitted, the patent owner has the option of filing a response, and an opinion will usually be provided within three months of application. With a price tag of only £200, this represents a low cost way for parties to get a view on their legal position prior to launching a product or submitting their own patent application. A further incentive to test the water using the Opinions Service is that, unlike court proceedings, there is no prospect of costs being awarded against the applicant.
2014 Update
Prior to the recent reforms, the Service would only consider the first two criteria for validity (novelty and inventive step). However, on 1 October 2014 this service was extended, enabling the Service to consider the other grounds of validity. It can also now consider whether a patent should be revoked for failure to disclose. Another extension of the Service’s powers is that it is now able to provide opinions on Supplementary Protection Certificates. An SPC is a unique type of IP right which effectively extends the life of a patent over pharmaceutical or plant protection products. It has also been suggested that the Service will be able to issue similar opinions on the validity and infringement of registered and unregistered designs, although an implementation date has yet to be set for this reform.
Perhaps the most significant change is that the UK IPO has been given the power to begin revocation proceedings in respect of a patent which was deemed invalid by the Opinions Service. However before revocation proceedings are commenced, all routes of appeal must have been exhausted in respect of the opinion.
Commentary
As a result of these reforms, it is likely that applications for an Opinion will become much more hotly contested. It is hard to image that a patent owner would decline to submit its arguments and risk revocation. In this way, an application allows the requesting party to put pressure on patent owners. This could be useful, for example, prior to licence negotiations. It may also provide the applicant with useful information about the patent (if the owner submits arguments of its own) which could be useful in preparation for litigation. Lastly, parties may seek an opinion in the hope that the IPO will then commence revocation proceedings, allowing the party to launch a competing product.
However, the new powers may cause the Opinions Service a few teething problems. For example, the question of whether an application sufficiently discloses the invention can be a highly complex one, involving the need for expert evidence. It is therefore unclear whether the written proposals submitted to the service will be enough to enable a decision to be made. If they have doubts, parties may decide to choose a different forum to determine the question. In addition, the IPO only has power to start revocations proceedings if the patent shows lack of novelty or inventive step. However the legislation is silent as to whether the IPO can consider other criteria for validity once the proceedings have commenced. Lastly, it is unclear whether revocation proceedings would be commenced at all if the case was complex, or whether the matter will need to be straightforward (or even undefended) before this new power will be used.