Introduction
Introduction to opinions and reviews
How does the opinions procedure work?
How long does the opinion procedure take?
What does the procedure cost?
Legislation
Case Law
Introduction to opinions and reviews
1. The opinion service allows anyone to ask the IPO for an opinion on an issue of validity or infringement of a granted patent. The procedure is designed to give parties who are involved in a dispute access to an impartial and affordable authoritative assessment of the main issues in contention. An opinion is not binding but rather is designed to help parties focus on the key issues in a dispute and test the strength of their arguments, without committing them to a subsequent course of action. It is intended to help them to resolve actual or potential disputes over validity or infringement before positions become too entrenched.
2. Anyone is able to request an opinion on any UK patent, or any European patent which designates the UK. A patent holder may therefore request an opinion on his own patent, or may find that someone else has requested an opinion on a matter connected with his patent (in which case he will have the chance to comment fully). A third party may request an opinion on any patent without having to declare an interest. However, it is important to note that no-one is compelled to use or be involved in the procedures.
How does the opinions procedure work?
3. The procedure is intended to be relatively quick and simple, and is based on the exchange of written observations on the matter in dispute. The person who asks for an opinion must file a written statement setting out the facts that he wishes to be considered. If he seeks an opinion on validity, he may need to include the relevant prior art document(s) which (in his view) raise questions over the novelty or obviousness of the invention. If he seeks an opinion on infringement, his statement must describe the product or process in question. But the person seeking the opinion must make a new case (see Refusal or withdrawal). In other words, he cannot go over old ground, by raising the same arguments that have been sufficiently considered in a previous opinion or during the processing of the patent application, or matters that have been determined in full-blown legal proceedings. So the Office has the power to refuse to give an opinion in such circumstances, in order to stop parties (and particularly patent holders) from being dragged unwillingly into repeated or vexatious opinions requests.
4. When a request is filed, the Office notifies various interested parties (such as licensees and the patent holder - if he hasn't made the request himself). The request is also advertised on the Office website. Anyone may make observations on the request within 4 weeks of the advertisement appearing, and the requester and patent holder have a further 2 weeks in which to make any observations in reply. Any observations from the patent holder or anyone else have to be submitted in writing.
5. A senior patent examiner then considers all the submissions and issues a written opinion on the matter in dispute. This is sent to the interested parties and made available on the website.
6. Usually, that is the end of the procedure, and it is entirely up to the parties concerned to decide how they want to proceed in the light of the opinion. The parties may find that the opinion forms a basis for negotiation and settlement. Or it may have clarified the real issues in dispute and so - although litigation commences - the opinion reduces the cost and time of that litigation.
7. In most cases, the way to challenge an opinion will be to launch separate legal proceedings either in the courts or at the Office. (If they are launched at the Office, the whole issue will be looked at afresh by a hearing officer who was not involved with the original opinion - so neither party's position will be prejudiced). Thus, for example, if a third party disagrees with an opinion which states that the patent is valid, he is free to launch proceedings to revoke the patent. And if a third party disagrees with an opinion which states that the patent is infringed, he is free to launch proceedings seeking a declaration of non-infringement. However, in certain limited circumstances the patent holder may be left with an adverse opinion and have no way of challenging that opinion if he believes it to be wrong. So in limited circumstances, a review of the opinion is available. No other parties are compelled to join those review proceedings, although they may do so if they wish.
How long does the opinion procedure take?
8. An opinion is usually issued no more than 3 months after a request is made.
9. The present fee for obtaining an opinion is £200, to be paid by the person requesting the opinion. Others who receive the opinion (such as those who file observations) do not have to pay anything.
10. The Opinions process is governed by legislation in The Patents Act 1977 (as amended) and The Patents Rules 2007. The relevant provisions are set out in Annex 1 of this manual.
11. A list of Office Decisions and Judgments of the Patents Court relating to Opinions can be found in Annex 2 to this manual. Full details of the Office Decisions can be found on the Office's website. Court judgments can be found at http://www.bailii.org/.
Corrections and suggestions
We welcome corrections to the information contained in this Manual, and also suggestions for improvement and information on broken or missing links. They should be addressed to the Editor:
Jim Calvert
The UK Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
Email via: jim.calvert@ipo.gov.uk
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