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23 October, 2014

Recent changes to UK practice have introduced a new, low-cost opportunity for third parties potentially to seek revocation of competitors’ UK and European(UK) patents using the UK Intellectual Property Office’s (UKIPO) opinions service and to obtain non-binding opinions on the validity and infringement of designs.  In this bulletin, we set out a brief overview of the opinions service offered by the UKIPO and how it may be useful to patent and designs owners as well as third parties.

Patent opinions

Validity
Any party may request an opinion on the validity of a UK patent or a European(UK) patent.  If desired, the request may be filed on behalf of the party wishing to obtain the opinion without naming that party (i.e. filed by a straw man to protect the identity of the party ultimately behind the request).

The opinion is restricted only to the novelty and inventive step of the patent.

A request for an opinion must be filed with a written statement setting out any arguments and evidence relating to the novelty and/or inventive step of the patent.  For example, an earlier published document may be submitted as evidence and arguments may be put forward to question the novelty and/or inventive step of the patent in view of that document.  An official fee (currently £200) must also be paid to the UKIPO for the service.

A validity opinion will normally be issued by the UKIPO within three months of the request and should provide a reasoned and firm view in answer to the question set out in the request.  Thus, the opinion should clearly indicate if the patent is considered to be valid or invalid.

The opinion is non-binding, but with recent changes to UK patent law, brought about by the Intellectual Property Bill, the UKIPO now has the power to revoke a patent for which an opinion of invalidity has been issued.

In practice, it is now extremely unlikely that a patent owner, faced with the prospect of revocation, will request a validity opinion on their own patent.  However, the patent validity opinion service offered by the UKIPO now represents a low-cost and potentially very powerful option for third parties seeking revocation of a competitor’s patent.

Infringement
As with validity opinions, any party may request an opinion on infringement of a UK patent or a European patent (UK).  If desired, the request may be filed on behalf of the party wishing to obtain the opinion without naming that party (i.e. filed by a straw man in order to protect the identity of the party ultimately behind the request).

A request for an opinion on infringement should be filed with a description of the potentially infringing product or process.  An official fee (currently £200) must also be paid to the UKIPO for the service.

An opinion on infringement will normally be issued by the UKIPO within three months of the request and should set out a reasoned and firm view.  Thus, the opinion should clearly indicate if the product or process is considered to infringe the patent, or if it is considered not to infringe the patent.

The opinion is non-binding and is intended to provide parties with some low-cost, impartial guidance on infringement issues, without committing them to a subsequent course of action.  The opinion may be a useful tool in negotiations and may help parties to resolve actual or potential disputes, or help to guide parties in deciding what further action they may wish to take (e.g. initiating court proceedings for infringement, ceasing to perform a potentially infringing act etc).

The patent infringement opinion service offered by the UKIPO may therefore be attractive to patent holders and potential patent infringers alike.

Design opinions

The UKIPO will also be introducing an opinions service for designs validity and designs infringement.  This service is likely to have many similarities with the patent opinion services and will apply to both registered and unregistered designs.

The designs validity opinions and infringement opinions will be non-binding and it is hoped that the service will assist in helping parties to avoid or resolve disputes concerns designs, or help to guide parties in deciding what further action they may wish to take.

A date has not yet been set for implementation of the designs opinion services and it is thought that they may not be available until late 2015.

For further information, please contact Philip Horler or your usual Boult Wade Tennant adviser.