What can you do if an Opinion has been issued which is detrimental to your patent rights? Under which circumstances is a request for Review by the UKIPO likely to result in a reversal of the Opinion?
Review of an Opinion issued by the UKIPO (BL O/417/20)
In December 2019 an Opinion was issued stating that a patent lacked novelty and an inventive step in view of a prior device. The Patentee requested a Review in the hope of having this Opinion set aside. The Hearing Officer carefully analysed the facts and issued a Decision in September 2020, explaining why the Opinion was going to be upheld.
At the UK Intellectual Property Office (IPO) it is possible to test the validity of a granted patent without starting full infringement proceedings. Anyone can file a request with the Office for an impartial Opinion on validity or infringement of a UK patent right. An Examiner will evaluate the arguments put forward by the requester and issue a non-binding Opinion within three months of the request.
The Opinion can be used to evaluate the likely success of revocation proceedings, or infringement proceedings. If the Opinion finds that the patent is clearly invalid, then the Office may start to revoke the patent themselves. Fortunately, the patentee is given an opportunity to apply for a Review of the Opinion, or to amend the patent to avoid revocation.
The Patentee, Alcolizer Pty Ltd, obtained a granted patent GB2562978B for a breath-testing device which assessed alcohol levels. The patent had a priority date of 13 May 2016 and was granted in September 2019.
The Requester, Dragerwerk AG & Co KGaA, filed a request for an Opinion as to whether the patent was valid. They argued that a testing device called the Alcofind AF-100S (hereinafter referred to as the AF-100S) was already made available to the public before the priority date of the patent and that this device disclosed all the features of the patent. Therefore, the patent was not novel or inventive.
For the assessment of novelty and inventive step the Requester provided a user manual for the AF-100S device, a sample of the device and YouTube videos of the device in use. In addition, the Requester provided an e-mail from the Korean manufacturer stating that sales of the device started in July 2015 (a year before the priority date of the patent).
The Patentee raised concerns about relying on the sample of the device provided by the Requester, as it was not proven that the sample corresponded with the device shown in other evidence (such as the manual and YouTube videos).
In reply the Requester submitted further videos which were published before the priority date. They also provided a screenshot of one of the videos, showing the interior of AF-100S, and the user manual in the background. Evaluating all the evidence, the Examiner found it was reasonable to conclude that the AF-100S was made available to the public before the priority date. The Examiner issued an Opinion in December 2019, deciding that the patent lacked novelty and an inventive step in view of the AF-100S device.
Review of the Opinion
The Patentee filed a request for Review, contesting the Opinion of the Examiner and arguing that there were errors in the assessment. The Opinion 17/19 was reviewed by a Hearing Officer and a Decision (BL O/417/20) was issued in September 2020.
The following concerns were raised by the Patentee in the request for Review regarding the availability to the public of the AF-100S device, including:
Evidence of the device being offered for sale before the priority date is not the same as the product being unconditionally available to the public before the date;
If the device had been sold before the priority date then it should have been possible to provide evidence of these sales by way of invoices and sales receipts;
Instead, the Requester had relied on statements made by anonymous parties in private emails exchanged several years after the priority date (in the email correspondence the Requester asks “When did you start selling?” and the manufacturer of AF-100S replies “We started to sell the AF100S since July 2015”);
There is no evidence of even a single specific sale, there are no advertisements;
Therefore, it cannot be concluded that the product was available to the public at this date.
The Hearing Officer thoroughly assessed the Examiner’s evaluation of the evidence and decided that there was no error of principle in finding prior public use. When forming the Opinion, the Examiner concluded that all the information provided to him by the Requester was consistent and he saw no reason to believe that the device defined by the specimen, photographs, and manual provided by the Requester had changed or been modified since the videos were published and since the product was available for sale. The Hearing Officer agreed that the Examiner had come to the correct conclusion on the basis of the information he was presented with.
The Patentee also mentioned that if the Opinion was not set aside by the Hearing Officer, then there was a real possibility of the patent being revoked. The Hearing Officer said that the patent would only be invalid if the evidence of sales held up to proper testing. The evidence of sales provided in the Request relies on email correspondence and online videos (of uncertain date). In revocation proceedings this evidence would be explored further.
The Hearing Officer concluded that the Examiner’s Opinion should be upheld. No cost orders were requested or made.
Requesting an Opinion from the UKIPO remains a quick and cost-effective way for third parties to test the validity of a UK patent (UK and EP(UK) patents), without having to go through full court proceedings.
As a Patentee it is possible to request a Review of an Opinion. However, any Reviews of an Opinion will be thorough and will consider whether the Examiner correctly assessed the evidence provided in the request.
The Opinion will only be set aside if the Hearing Officer decides that the Examiner made an error of principle or reached a conclusion that is clearly wrong.
Please contact Gail or your usual Kilburn & Strode advisor if you have any questions about filing a request for an Opinion.