Recent updates to the UK IPO’s Patent Office Opinions service - a powerful tool in patent disputes

09 November 2015

By Alex Rogers, Partner and Rachel McGlue, Trainee Patent Attorney

If you are looking for an impartial assessment of patent validity or infringement, one option is to ask the UK Intellectual Property Office (UK IPO) for a patent office opinion. The procedure is quick and very cheap. Furthermore, a recent change in the UK IPO’s opinion service means that a negative opinion on validity could result in revocation of the patent, as explained below. 

Requested by and on behalf of lone inventors, SMEs and large multinationals (Dyson is the most prolific requester), patent office opinions are issued very quickly by the UK IPO - in more than 80% of cases they have been issued within three months of the request. The official fee for requesting an opinion is also very low (£200). Since changes came into force last year, a patent office opinion can be requested on all aspects of the validity or infringement of a either a patent or a supplementary protection certificate (SPC).

Additionally, the UK IPO now has the ability to initiate revocation proceedings after issuing an opinion concluding that a patent is either not novel or does not involve an inventive step. However, there is a discretionary element here, and the law states it will only start revocation proceedings for those patents that it deems are “clearly invalid”. Up until this summer, no one quite knew how readily the UK IPO would start revocations proceedings and quite what it would consider to be “clearly invalid”. The picture is now becoming clearer. 

Since these changes came into force, 17 validity opinions have been requested. Of these, some requests were withdrawn, a few are still pending and some of the patents were found to be valid. However, six opinions have been issued stating that the patents are invalid. As the patent office must wait until the deadline for requesting a review of the opinion has passed before it is able to initiate revocation proceedings, only four could have been started. Revocation proceedings have been commenced in three of the four cases.

It appears from this small collection of cases that the UK IPO could well commence revocation proceedings for most patents in which it finds at least one claim lacking novelty or inventive step. In the case that was deemed inappropriate for revocation proceedings, the subject matter of claim one had been found to lack novelty over a Chinese utility model. It seems that there was enough doubt in the Examiner’s mind that it was “clearly invalid”, perhaps due to lack of confidence in the translation of the Chinese document. 

None of the three cases that have started revocation proceedings have reached a final decision yet - in each case, the patent proprietor is now able to comment and amend the claims to try to avoid revocation. However, if the patent proprietors cannot satisfy the UK IPO and submit claims that define novel and inventive subject matter, the patents will be revoked. The patent community is watching with interest to see what happens. 

In view of the fact that, unlike UK court proceedings, the real interested party need not be identified when requesting an opinion and the party that requests the opinion is not a party to any revocation proceedings that are commenced, the opinion service may provide a quick, low cost method of removing or narrowing the scope of a troubling patent.  

Rachel McGlue

Rachel McGlue

Patent Attorney

Our Expert
Alex Rogers
Alex Rogers
Location: Bristol (UK)

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