An update on the revamped UK IPO Opinion Service
21 June 2016
With the implementation of the Intellectual Property Act 2014, the UK Intellectual Property Office (UK IPO) received increased powers with respect to its Opinion Service. Thirty months later, we have delved into the cases that have been heard to look at the effect the revamp has had. It serves as a timely reminder of a useful tool that all IP users should consider as part of their toolkit.
The UK IPO’s Opinion Service allows anyone to ask the UK IPO to give an opinion on the validity and/or infringement of a granted UK patent. It is important to note that the opinion the UK IPO provides is not legally binding but it can provide a useful, impartial assessment of validity and/or infringement.
When requesting an opinion, the requester must file a written statement setting out in full the facts that they wish to be considered, including copies of any relevant prior art documents. The UK IPO will give then provide an opinion based on the facts in front of them, including any response and counter-response from the parties involved.
With its newly acquired powers, the UK IPO will now consider the full range of grounds for invalidity of a UK patent, rather than just novelty and inventive step. The additional grounds are post-grant claim broadening, insufficiency, excluded subject matter and added subject matter. Additionally, if the UK IPO considers that a patent is invalid, it now has the power to start revocation proceedings of its own accord, if it believes revocation to be in the public interest.
The Opinion Service is designed to be quick and affordable for all parties. The majority of the opinions published since the enactment of the Intellectual Property Act 2014 have been issued within three months of the request. Moreover, the official fee for obtaining an opinion is just £200. Furthermore, the UK IPO normally conducts the proceedings on the papers to reduce advocacy costs, with hearings only being granted on rare occasions.
Since the Act came into force on 1 October 2014, 47 requests for opinions have been filed. Whilst the numbers of requests being filed soon after the new changes came into effect did not dramatically increase, two years on we are seeing what we believe is a dramatic increase as the advantages of the Opinion Service become more widely known. In the four months of 2016 for which data is available, 15 requests have been filed. This is rapidly approaching the 19 requests that were filed in the whole of 2015.
Delving deeper into the numbers, of the 47 requests since 1 October 2014, 36 have so far been published. Of these 36, there have been 15 requests to consider the infringement of a patent, 19 requests to consider the validity of a patent and two requests to consider both infringement and validity.
If we consider those opinions relating to validity, of the 19 patents considered, eight were found to be valid, 10 were found to be at least partially invalid and in one case the request for an opinion was refused as no new questions were raised in the request. In the 10 patents found to be invalid, at least the independent claims of each patent were found to be invalid.
With any opinion, it is possible to request a review, which is in effect an appeal against the opinion. The UK IPO may only commence revocation proceedings once the deadline for requesting a review has passed. Looking at the 10 patents found to be invalid by the UK IPO, in six cases the deadline for requesting a review has passed. In five out of the six cases, the UK IPO has initiated revocation proceedings of its own volition. Therefore, it appears the UK IPO is making good use of its new powers and will seek revocation of most patents it finds to be invalid.
If we turn back to the requests to consider infringement, of the 15 requests, one was withdrawn by the applicant, 10 requests found no infringement of the patents in question and four of the requests found at least some of the claims of the patent to be infringed.
Finally, looking at the requests to provide an opinion on both infringement and validity, it is difficult to draw any conclusions with such a small data set. One of the requests was refused by the UK IPO as it believed it inappropriate to issue an opinion as a UK court (the Intellectual Property Enterprise Court) had already found the patent invalid. In the second case, the UK IPO found the patent valid, yet was unable to come to a clear view on infringement. This was due largely to a lack of evidence provided on the alleged infringing product, which limited the Examiner’s ability to come to a conclusion.
In summary, the Opinion Service is shaping up to become a useful, cost-effective tool for anyone considering the validity and/or infringement of a UK patent. In particular, the Opinion Service appears to be a useful tool for contesting the validity of a third-party’s UK patent rights. If the opinion leads to a finding of invalidity, the UK IPO often commences revocation proceedings. Conversely, the opinions published so far demonstrate the need for mounting a robust defence against any opinion requested against your UK patents, as failure to do so may lead to a loss of your rights.
Dr Jon Hauser
Electronics, Computing & Physics group
If you would like more information on the Opinion Service, please get in touch with your usual Withers & Rogers contact.
© Withers & Rogers LLP, June 2016