Requesting an opinion Who can request an opinion?
Filing a request
Statements
Filing a request electronically
Amending or clarifying the request and/or the written statement
Register entries
Notification and advertisement of the request
Confidentiality
Requesting an opinion (Section 74A & Rule 93)
1. Anyone is allowed to ask the comptroller for a non-binding opinion on an issue of patent validity relating to novelty and obviousness or infringement.
2. A request for an opinion can only be made in respect of a granted UK patent or European patent (UK). The patent does not need to be still in force.
3. If an opinion is sought in respect of more than one patent or more than one infringer, then a separate request must be made for each patent or infringer. A single request can however cover both infringement and validity of a patent.
4. Anyone can request an opinion. The requester does not need to declare an interest. Also a request can be filed on behalf of a third party without naming the third party.
5. A request is made by filing a Form 17/77 together with the appropriate fee (presently £200). The request must disclose any relevant UK or EPO proceedings (underway or completed) of which the requester is aware. The request must also identify any known interested parties (e.g. parties with whom the requester or their client is negotiating or in dispute) in order that those parties can be notified of the request.
6. A written statement must be filed with the Form 17/77. This statement will set out fully the question to be considered in the opinion, arguments or submissions on that question, and include the facts to be taken into account. It may be necessary to include relevant prior art, a description of the product or process, relevant drawings, formulae etc. A witness statement or other evidence may be filed (e.g. in relation to prior use) and all material will be required in duplicate. There is no restriction on the form of the evidence.
7. Where a statement refers to samples then these samples should be filed with the request. If only one set of samples is available then the requester should if possible file photographs in duplicate of the samples together with the samples themselves. A copy of these photographs will be sent to any interested party.
Filing a request electronically
8. At present there is no facility for filing a request for an opinion electronically although observations and observations in reply can be sent by email (see Observations and observations in reply).
Amending or clarifying the request and/or the written statement
9. It is usually a simple matter to correct an error on Form 17/77, for example if the "validity" box has been filled rather than the "infringement" box. Amending the statement may be more difficult. In both opinion 1/05 and opinion 05/07 the requester was allowed to amend his written statement so as to remove clear errors in the statement. For example, in opinion 05/07 it was immediately clear that the wrong claims had been recited in the statement. However some requests to amend the statement have been refused. The requester was refused permission to amend "infringes" to "meets the terms of" in opinion 08/07, a case in which the examiner was being asked if the patent holders own device "infringed" the claims of the patent.
10. It is important to remember that any observer must be able to comment upon any such amendment or clarification of the request and/or the written statement. It is unlikely that any amendment will be allowed once the period for observations is under way. In the case of opinion 05/07 the error (wrong claims) was fundamental and so the period for observations was re-started and the other party informed of the amendment.
Register entries (Rule 44)
11. As soon as a request is filed a Register entry is made indicating that an opinion in relation to validity or infringement has been requested on a particular date. An entry will also be made on refusal or withdrawal of a request, or on issue of an opinion.
Notification and advertisement of the request (Rule 95)
12. If the request proceeds, the Office will send copies of the written statement to interested parties. If appropriate it will also send them copies of any other material submitted - evidence or prior art documents for example. The interested parties will include (if they are not the requester) the patent holder (i.e. the proprietor and any exclusive licensee), licensees shown on the Register, any parties mentioned in the request, anyone who has set up a relevant caveat under rule 54 and anyone else that the Office considers is likely to have an interest.
13. Notification of the filing of a request will also be advertised on the Office's website so that anyone who has not already been copied the request may request a copy and if it so chooses file observations. The Patents and Designs Journal includes a standard notice every week directing anyone interested in opinion requests to the website.
Confidentiality (Rule 53)
14. The post-grant opinions procedure is removed from the scope of the confidentiality provisions so that the request, statement and any attachments filed with the statement cannot be kept confidential.
15. Anyone can request a copy of an opinion request 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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