Observations and observations in reply
Who can respond and when?
What should any response cover?
Requests for more information
Extensions of time periods
Confidentiality
1. Anyone can submit written observations for four weeks after the advertisement of the request appears on the website. This includes parties who have been notified directly.
2. Once the four week period is over, the requester then has two weeks to respond to all the observations with observations-in-reply. If someone other than the patent holder has filed observations, the patent holder can also respond to those observations, within the same two week period.
What should any response cover?
3. The written observations should be confined to the issues raised by the request. Thus observations filed at this stage are not allowed to broaden the scope of the opinion by raising unrelated new issues. If an opinion on such unrelated issues is required then a further, separate request for an opinion should be made.
4. Any observations should err on the side of keeping the opinion focused on the key issue or issues raised by the requester. The opinion process is intended to be quick and cheap. Consequently where an observer wishes to explore a different validity or infringement point then it will normally be necessary for him to file a request himself. Although each case will be different and will need to be assessed on its merits, the following examples may help in deciding what is and what is not allowable as an observation.
An infringement request asks whether process X infringes patent A. An observation that is confined to issues of claim construction in patent A will probably be taken into account. An observation that indicates that another process, Y, also infringes patent A will 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.
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.
5. If the patent holder (i.e. the patent proprietor and any exclusive licensee) wishes to file observations, he must do so at this stage and copy the observations to the requester. Anyone else who files observations must copy them to the requester and the patent holder. If observations have been filed then the requester has two weeks in which it can if it chooses file observations in reply. These must strictly be in reply to issues raised in the observations so again if new issues are raised, a further opinion would need to be requested if they are to be considered. (see Review decision BL O/053/08).
6. In almost all cases the examiner will be expected to base his opinion on the information available to him. However there may be rare occasions where it would be helpful for the examiner to seek further information from an observer or the requester before completing his opinion. The examiner will consider doing this only when there is insufficient information to come to an opinion (probably a very rare occurrence, given that a refusal to give an opinion is always possible) 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.
7. Any time period mentioned above is extendable at the comptroller's discretion under rule 108(1). But given the aims of the post-grant opinion procedure, the Office will in practice grant only very short extensions of only a few days, and only for very good reasons.
8. An extension of 3 weeks was granted for the filing of observations on opinion 08/06 when the only speaker of a relevant foreign language in the Agent's office was on holiday for 3 weeks - the volume of the foreign-language documents to be considered being some 130 pages. A request for an extension of 2 months to the period for filing observations was refused in opinion 22/06; it was decided that the papers to be considered were not unduly voluminous (25 pages of statement, 2 witness statements and 5 other documents).
Confidentiality (Rule 53)
9. The post-grant opinions procedure is removed from the scope of the confidentiality provisions so that any observations cannot be kept confidential.
10. Anyone can request a copy of observations or observations in reply by contacting the Office by Phone: +44 (0)1633 813686 or +44 (0)1633 814886, Fax: +44 (0)1633 814491 or by email at opinions@ipo.gov.uk
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