The basic features of the service
The UK Patent Office (now known as the UK Intellectual Property Office) introduced its opinions service on 01 October 2005.
The service allows any person (including the proprietor) to request the Patent Office to issue an opinion in respect of a granted patent regarding:
i) Whether a particular act constitutes, or (if done) would constitute, an infringement of the patent; and/or
ii) Whether, or to what extent, the invention in question is not patentable.
No issues other than the questions of infringement and validity can be raised in a request for an opinion.
A patent examiner comes to his opinion on the basis of the papers submitted with the request for opinion and any papers submitted in reply to the request. There are no evidence rounds, no disclosure and no hearing.
Therefore, in contrast with litigation, the process is streamlined with a Patent Office Opinion being issued about three months after the request is made. It is also cheap � the UK Patent Office charges a flat fee of �200 for the process. The low cost is designed to encourage small businesses, which might not be able to enter into full-blown litigation, to further engage with the patent system.
However, it should be noted that Patent Office Opinions are not binding for any purposes.
Therefore, due to the limited number of issues that can be raised and their non-binding nature, the Patent Office Opinions service should not be thought of as a straight alternative to litigation.
It is also worth noting that there is only limited recourse to appeal (review) a Patent Office Opinion. If the Opinion is detrimental to the patent proprietor, he may request that it be reviewed. The review will concentrate solely on whether the examiner has erred in his interpretation of the patent and the papers submitted by the parties.
On the other hand, if the Opinion is detrimental to the non-proprietor, there is no possibility of requesting a review, it being felt that the non-proprietor has sufficient statutory alternatives, e.g. to seek revocation of the patent or to apply for a declaration of non-infringement, through which to seek recourse.
Finally, it should be noted that costs may be awarded in respect of any review proceedings.
The key points of this article may be summarised as:
- A Patent Office Opinion may be requested by any person in respect of validity and/or infringement of a patent
- The process is relatively quick; a patent examiner will issue an opinion based on the papers submitted about three months after the request was made
- A Patent Office Opinion is not binding
- The Patent Office Opinions service does not represent a straight alternative to litigation
- If an Opinion is detrimental to the patent proprietor, he may request that it be reviewed
The information provided in this article is, of course, of a general nature and should not be considered as legal advice; if you have any specific questions, please contact Jon Broughton at HLBBshaw in Epping, Essex, UK. E-mail: firstname.lastname@example.org. Visit the website at www.hlbbshaw.com.
The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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