Drafting opinions
Before you start drafting the opinion
Scope of the opinion
Writing the opinion
Understanding the invention
How to treat omnibus claims
How to assess novelty
How to assess inventive step
How to assess infringement
Reaching an opinion
Allocated time for drafting opinions
Introduction
1.This section provides guidance to examiners on drafting opinions. It is not intended to be an exhaustive guide. Rather it seeks to highlight some of the issues that need to be considered.
Before you start drafting the opinion
2.It is important that you carefully consider all the material submitted before you start to think about drafting the opinion. If the observations or observations-in-reply raise issues outside of the scope of the request, then these cannot be considered (see for example the opening of opinion 02/06). Those outside issues can be the subject of a later request, if someone chooses. Where the boundaries of the request lie is for you to decide. The opinion should, when necessary, include a short passage stating that you are not going to consider such issues. A very simple example would be a request that asks for an opinion on a patent's validity with an observation that raises the issue of the patent's ownership and/or the issue of added matter in the granted patent.
3.In both opinion 02/06 and opinion 03/06 the requester presented new citations at the observations-in-reply stage. The general position is that if these documents are being used to show flaws in the observations then you may consider them; if they are being used to raise new argument or to further the request then you should not consider them. It is fundamental to the opinions process that the requester raises their best argument at the outset. This allows any observers an opportunity to comment on the entire argument. If argument is introduced at the observations-in-reply stage the observer will not be able to respond.
4.In opinion 08/06 the Office refused the observer's request that the opinion be extended to consider claims not mentioned in the requester's initial statement.
5.You should err on the side of keeping the opinion focused on the key issue or issues raised by the requester. The opinion process is quick and cheap and so there is no real hardship in an observer who wants to explore a different validity or infringement point being asked to file a request himself. The following examples may help in deciding what is and what is not allowable as an observation.
- - Example 1 - An infringement request asks whether process X infringes patent A. An observation that is confined to issues of claim construction in patent A probably should be taken into account. An observation that indicates that another process, Y, also infringes patent A should probably not be taken into account; instead a new request should be required if that alleged infringement is to be investigated. An observation that questions the validity of patent A is most likely not to be taken into account unless that question has a direct bearing on the infringement issue, for example by throwing light upon how a claim of patent A should be construed.
- - Example 2 - A validity request asks whether patent B lacks an inventive step. Asking for an opinion on validity should not open up a free-for-all for any observations going to the validity of the patent, for example questioning the novelty of patent B. If the observation(s), and any citation(s) within the observation(s), add to the argument in the request they should probably be taken into account. If the observation(s) are based on a completely independent argument they should probably not be taken into account.
Validity - Novelty and Inventive Step only
6.An opinion can only consider the validity of a patent in respect of novelty under section 1(1)(a) and/or inventive step under section 1(1)(b) - see section 74A(1)(b). Therefore consideration of a patent in respect of whether it relates to excluded matter, e.g. under sections 1(2), 1(3), 4, or 4A, or should otherwise be revoked is beyond the scope of opinion work.
7.The Office refused opinion 05/07 because once all of the request, the observations and the observations-in-reply had been considered it was clear that the issue at the heart of the request was one of excluded matter, notwithstanding that the request was presented in terms of inventive step. Again in opinion 22/06 the examiner declined to deal with matters arising under section 1(2).
8.If the request is revisiting pre-grant issues of novelty and obviousness then it may be appropriate to refuse the request. To help you assess this you'll have the GB casefile if the request relates to a GB patent. If the request relates to an EP(UK) patent you may find the electronic version of the pre-grant casefile on epoline, at the very least you will be able to find an EP search report. You should not however go looking for any other search reports.
9.If a request is asking for consideration of a document that was considered, either as the basis for an objection or as relevant but rejected, pre-grant then it is likely that the request should be rejected. But it's not that simple.
10.It is very important that you consider the contents of the casefile. The request may show the documents reported in the casefile in a new light. The request may bring to your attention information that would cause you to see previously raised novelty or inventive step objections in a new light. Or it may allow you to raise new questions of novelty and/or obviousness or to raise questions that were previously rejected. The key question to ask yourself is: "Is this opinion request going over the same old arguments, or is it making a new case?"
Seeking further observations
11.In almost all cases you will be expected to base your opinion on the information available to you. There may be rare occasions where it would be helpful for you to seek further information from an observer or the requester before completing your opinion. As a matter of practice you should consider doing this only when there is insufficient information to come to an opinion (probably a very rare occurrence, given that it is always possible to refuse to give an opinion) and there is a strong possibility that contacting the requester or observer will improve matters. This is consistent with how the Office deals with observations on patent applications under section 21 (see MoPP 21.13). However the examiner should always consult with the dedicated opinions DD before such a step is taken - as seeking clarification from (for example) an observer without giving the requester a chance to comment could be seen as unfair.
12.If you are aware that another examiner has better technical knowledge of the subject matter of the patent then if it is necessary you can seek their advice on any technical points. Of course that other examiner will be able to count the time spent on the opinion on ROTA.
13.Other than in the above situations, you should base your opinion on the material before you. You should not for example do any further searching of your own for relevant prior art.
Adopting the right style14.It is up to the examiner to decide what the opinion says. However a considerable body of opinions has now been issued. The style of opinions has clearly moved towards that used in hearing decisions as opposed to the less formal style usually adopted in pre-hearing reports. It is important nevertheless that Opinions are written so as to be understandable to the informed reader. They should be written straightforwardly, in the active sense and in the first person where possible. Don't use pompous, passive phrases such as "It now falls to be decided". Try to avoid using technical jargon or Latin tags unless there is no alternative.
15.A simple and straightforward approach is best when writing an opinion. Your expertise is technical rather than legal and so your primary interest should lie in the "technical" technicalities ( "does the alleged infringing act fall within the claim?", "is the claim novel?", "does the claim involve an inventive step?") of the request rather than the "legal" technicalities. Once the technical issues are settled their legal consequences are oftentimes relatively simply stated.
16.An opinion is both reasoned and structured. The template will give you a table to fill in with the various names, an opening stating that a request has been filed on such and such a date for an opinion in respect of the patent's validity (novelty, obviousness) and /or if it is infringed and a space to acknowledge any observations. At the end there is a standard closing passage that speaks of the patent holder's right to a review of the opinion and stating that the opinion is not based on fully-litigated proceedings. If the opinion goes in the patent holder's favour there is no right of review and you should delete the appropriate part of the closing passage.
17.What goes in between is up to you, but you must include passages that leave the reader in no doubt regarding "what factors I must consider in order to reach my opinion", "how I am going to approach my considering of those factors" and "what conclusions I draw from those considerations". You should address all the issues that arise in the request and any issues in the observations that lie within the scope of the request. Any authorities (RPCs etc) referred to should also, in general, be mentioned - though the mention may be in the form of "I have carefully considered". but I find no assistance from it in the present circumstances ". It is worthwhile simply setting out any undisputed or non-questionable matters at the start of your opinion, such as the publication date of a patent specification and whether that patent falls into the state of the art by virtue of section 2(2) or section 2(3).
18.By way of example, Opinions 01/05, 02/05 and 02/06 all open with a brief discussion of the technology of the patent. Note too the usefulness of patent figures in the opinions. These three opinions also deal with issues going beyond novelty, inventive step and infringement. For example both opinion 01/05 and opinion 02/05 discuss some aspects of the quality of the evidence produced in support of the request. Opinion 02/05 discusses issues of estoppel and staying proceedings before going on to consider substantive issues. In opinion 02/06 the examiner declines to deal with the issues of alleged insufficiency and amendments that allegedly should not have been allowed; the examiner also addresses the relevance of the prosecution history of an equivalent foreign patent.
19.You are working with granted claims that should, by definition, be clear and supported. However any difficulty in understanding the claims is to be resolved by the usual process of claim construction. It is crucial that you take every care with claim construction. The reviews of opinions 11/06, 14/06, 15/06, 16/06 and 17/06 show instances where the examiner has mis-construed the claims.
20. Section 125 of MoPP now contains a large section on claim construction. The standard principles of claim construction were set out by Lord Hoffmann in Kirin-Amgen and others v Hoescht Marion Roussel Limited and others [2005] RPC 9 (see paragraphs 32-52). You must put a purposive construction on the claim; interpret it in the light of the description and drawings as instructed by section 125(1); and take account of the Protocol to Article 69 of the EPC.
21.In simpler language you must decide what a person skilled in the art would have understood the patentee to have used the language of the claim to mean. Jacob J put it in a similar way in Beloit Technologies Inc and Another v Valmet Paper Machinery Inc and Another [1995] RPC 705 (see pages 720-721):
The basic rule is that the monopoly is to be found in the claim. That is the effect of Article 69. The claim is to be construed sensibly in context through the eyes of the skilled man. That is what I think in effect the Protocol says.
22.For the most part these claims are ignored in hearing decisions, except when they are all that is left. There is no good reason for departing from that practice for opinions.
23.This is a very familiar area to examiners. Extensive guidance is provided by section 2 of MoPP and by other well known reference works, such as Terrell and the CIPA Guide. Perhaps prior use will be less familiar and attention is drawn to MoPP 2.27 to 2.29.1 for guidance in this respect.
24.What will also be less familiar is how to structure an opinion when assessing novelty. It will generally be appropriate to state at the outset what is in dispute and what is not. This will provide a lead in to a more detailed discussion. For instance if the prior art is a patent document there will be no doubt about when it was published and whether or not it forms part of the state of the art, which might not be the case when prior use is described in a witness statement. With novelty the issues in dispute will be one or more of:is the disclosure part of the state of the art? is there an enabling disclosure? what is the extent of the implicit disclosure? does the disclosure destroy the novelty of the claim? what does the claim actually mean i.e. how should the claim be construed?
How to assess Inventive Step
25.This too is well known to examiners and extensive guidance is provided by section 3 of MoPP together with the references referred to above.
26.With inventive step the issues to be addressed will include:is the disclosure part of the state of the art under section 2(2)? what is the inventive concept i.e. how should the claim be construed, and how does what is claimed stand against what the patentee acknowledges as known? who is the person skilled in the art - this person will be unimaginative but will know for instance the common general knowledge in the art at the priority date of the invention? (N.B. common general knowledge is not to be confused with public knowledge; the latter includes everything however obscure which is public; the former is clearly much more restricted; patent specifications are, in general, public knowledge).
27.A too-often forgotten aspect of obviousness is the collocation. Special consideration is needed when an invention may be to a combination or a collocation - see SABAF SpA v MFI Furniture Centres Ltd [2005] RPC 10.
28.As with novelty, it important to structure the opinion so that it sets out all the steps of your thinking, and, if appropriate, to set out area(s) of dispute before jumping into the detail.
29.See section 60 of MoPP for guidance on infringement. Explanatory note f) for Form 17/77 has been drafted with a view to concentrating opinions work on primary infringement only. You may have to consider secondary infringement issues, but that should be rare.
30.By virtue of the wording of section 60(1) it is not a particular product or process that infringes a patent claim, but rather it is any of a range of actions related to that product or process that infringes, such as manufacture, import and sale or disposal. Consequently when writing your opinion it is probably best, and perhaps easier, if you state whether or not a particular product or process falls within or without the scope of the claim(s) in question before you pronounce on infringement.
31.There should be little or no need to consider complex legal issues such as exhaustion of rights or whether a ship using patented technology infringes that patent if it docks in the UK. If such issues do arise, you should feel free to seek advice.
32.A request can ask for an opinion on both validity and infringement. Often the question of validity can be taken separately from the question of infringement and so your opinion will be effectively in two parts.
33.An invalid patent cannot be infringed. Hence if you have decided that the patent is invalid then you might not need to go any further, except to say that the patent is invalid and so cannot be infringed. But it is much more likely that you would put a "However if I am wrong ... " passage into your opinion and then go on to consider infringement.
34.You don't have the opportunities to test evidence that a hearing would afford you. If, for example, you are presented with conflicting views on claim construction (as in opinion 10/06) you must work through the claim construction process for yourself and see where you land. You may end up agreeing with one side, or neither.
35.It is particularly important that you are not misled by the reasoning in a request or an observation. For example a request for an opinion on the presence of an inventive step in a patent is effectively unopposed if no observations are forthcoming. The examiner preparing the opinion will have to keep in mind all the alternative arguments that could be made, and would be made, if instead the case was the subject of an Inter-Partes hearing. In general you should treat requests and observations at face value and as genuine statements of a party's case, but remembering that the case is partial (in the sense of being one-sided) and it might involve some element of spin or gloss.
36.When drafting opinions you don't have the pre-grant luxury of being able to "run an objection up the flagpole and see how the Agent responds". You MUST come to a proper and fully-reasoned opinion if you can. There may however be different reasons why you can't come to an opinion.
37.The evidence filed in support of the request may not be detailed enough for you to come to an opinion. One course of action in this situation might be to refuse the request; but if you decide to go ahead you should state that the evidence is not good enough and explain why it's not good enough, opinion 20/06 is an example of this. Alternatively it may be good enough for you to come to a decision on inventive step but not on novelty. Again state what the true position is.
38.The evidence may be supremely detailed but you cannot reconcile a feature of the claim with that evidence with the certainty that you would like. The Kirin-Amgen claim construction procedure can be used to resolve difficulties in understanding a claim. Think also of using phrases such as "On balance ...". You will not give any party the benefit of the doubt. The standard of proof to be used in opinions is that which is used in post-grant work i.e. "the balance of probabilities". You must not use the pre-grant approach to inventive step for instance of "resolve doubt in favour of the applicant".
39.The opinion can only be as good as the written statements and observations themselves - and it may be necessary for the opinion to reflect the constraints imposed by those submissions. In the limit you can come to a conditional opinion, i.e. ... if what the requester or another party says is true then it follows that.... However there are considerable risks with this approach. The subtlety of this approach will be lost on those who just look at the outcome of the opinion. The headline will state only that the Office has issued an opinion saying that the patent is, for example, invalid. It follows that this approach, of coming to a conditional opinion, should be a last resort. There is always the option of refusing to give an opinion if the submissions are not good enough to allow you to issue a sensible opinion.
Allocated time for drafting opinions
40.The maximum time to issue an opinion is (for normally-proceeding cases) 3 months from the filing date of the request. The casefile, either as a paper file or a PECS dossier will arrive with you 2 weeks after the request is filed. This gives you the opportunity to become familiar with the patent and the request before any observations arrive with you.
41.There is a statutory period of 4 weeks from the publication of the request for any observations to be filed. Once that period ends there is a further 2 week period for either the requester or the patent proprietor to file any observations-in-reply. If there are observations and/or any observations-in-reply you will be able to assimilate them as they are passed to you.
Finally you will have some 2 weeks before the 3 month ceiling. In those 2 weeks you must finish the opinion and email it to the Inter-Partes Hearing Officer selected to scrutinize your work, remembering that they will need a few days to go through your work. Remember too that you may need a day or two for editing your opinion in response to that scrutiny.
42.If there are no observations or no observations-in-reply you can finish the opinion more quickly.
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