UK IPO opinion service – the basics
It’s over ten years now since the United Kingdom Intellectual Property Office (UK IPO) launched its opinions service. Patent Office statistics reveal that recent years have seen a rise in the use of the service. Anyone can make an opinion request for a minimal official fee, and the UK IPO will respond with an opinion from a Senior Patent Examiner on validity and/or infringement of a patent within three months. The opinion procedure relies solely on written submissions (no hearings are involved). Whilst legally non-binding, the results are considered authoritative – and indeed the service is, according to the UK IPO, being used increasingly as a quick and economic way to help settle disputes. A recent survey by the UK IPO suggested that about half of requestors believe their opinion had actively helped resolve their dispute.
If your own patent right is the subject of an opinion requested by a third party, then you will be given the opportunity to comment on the case put forward. Also, the opinion is open to a review procedure.
Nevertheless, since 2014, the head of the UK IPO, the Comptroller, has had the power under Section 73 1(A) of the Patents Act, to revoke a patent following an opinion, even if that Patent is no longer in force. This will happen, however, only if it is found that the patent in question is 'clearly invalid' – any doubt will mean that proceedings under Section 73 1(A) will not be in initiated. Also, the rights holder will be given an opportunity to amend their patent to avoid revocation.
So whilst the opinions service is in practice proving to be a very cost-effective and fast alternative to 'flight or fight' in patent disputes, the ramifications that the patent in question will be revoked, even without a direct request for revocation, must always be considered. There is now a growing frequency of cases in which the Comptroller has used the power to revoke clearly invalid patents.