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Intellectual Property Act – Patents Opinions Service

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Court (Small)The Intellectual Property Act 2014 received Royal Assent on 14 May 2014 and makes a number of changes to intellectual property (IP) law in the UK.  The provisions of the Intellectual Property Act start to come into force from 1 October 2014. In this post we take a look at the UKIPO’s Patents Opinions Service.

Current situation

The UK Intellectual Property Office launched its patents opinions service nearly 10 years ago to provide business with a mechanism for trying to resolve patent disputes without ending up in court. Under the current system an assessment, which costs only £200, can be requested on the validity or infringement of a patent. The opinion is non-binding but may help in resolving a dispute without taking the thermonuclear option of going to court.

In its current set up the IPO can only issue an opinion as to whether a patent is infringed or whether a patent is invalid on novelty or inventive step grounds (though both infringement and validity can be covered in a single opinion). If an opinion suggests the patent is invalid then it is up to the third party to start revocation proceedings.

What’s changing under the Intellectual Property Act

From 1 October 2014 however the patents opinion service is going to be expanded to cover a larger range of disputes and will also cover opinions on Supplementary Protection Certificates (SPCs). There will also be the possibility that the IPO can start the process of revoking a patent if the opinion suggests the patent is not valid.

So, from next month, non-binding opinions will be available on:

  • whether an act constitutes infringement of the patent
  • whether the patent is invalid on novelty/inventive step grounds
  • whether the invention can be industrially applied
  • whether the invention is either excluded from patent protection either on the grounds the subject matter is not regarded as an invention or the invention is contrary to public policy or morality
  • whether a particular act constitutes (or would constitute) an infringement of the patent
  • whether the patent specification is not clear or complete enough to allow a skilled person to reproduce the invention
  • whether the patent specification contains any added matter (either the matter extends beyond the matter disclosed in the application as filed or protection has been extended by an amendment that should not have been allowed)
  • whether a particular act constitutes or (if done) would constitute an infringement of an SPC
  • whether an SPC is valid

It will still be possible for a single opinion to cover both infringement and validity and all the above validity grounds may be covered in the request.

For opinions where the request was filed on or after 1 October 2014 and the opinion indicates a lack of novelty or inventive step the IPO will now be able to start revocation proceedings. This will, however, only happen in clear cut cases and the patent holder will always be able to get the opinion reviewed prior to any such proceedings commencing and will also be able to either argue or amend to overcome the problem and prevent revocation. For patents that are revoked under this process, the patent holder will need to appeal the decision to the courts.

Patents opinions service and the unitary patent

The UK is currently implementing the Unified Patents Court Agreement and the accompanying EU Regulations into UK law and recently held a consultation where an extension of the patents opinion service to unitary patents was mooted (see paragraphs 41 to 45 of the consultation document for details). At a recent workshop run by the IPO we understand that thoughts on this proposal were mixed patents with a concerned that such opinions might influence inexperienced judges in local divisions of the UPC . The UKIPO consultation is now closed and they are considering the responses received. We’ll provide an update on the patents opinions service and the unitary patent in due course.

Mark Richardson 23 September 2014


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