The UK Intellectual Property Office (UKIPO) has a procedure to provide independent, non-binding opinions on questions of validity and infringement of UK and EP(UK) patents or SPCs based on such patents. These opinions are provided quickly (typically within 3 months of being requested) and at relatively low cost.
Who can request an opinion?
Any person can request an opinion from the UKIPO on validity or infringement of a UK or EP(UK) patent, or UK SPC. The UKIPO will not provide opinions on Unitary Patents. Typically, opinions are requested by the patent holder, an exclusive licensee of the patent, or a person or company for whom the patent poses an infringement risk.
Mewburn Ellis LLP can request the opinion on your behalf. It is possible (if you wish) for you to remain anonymous during the opinion procedure.
What evidence and information must be provided?
When requesting an opinion, it is necessary to set out in full the evidence and arguments that support your position. This is important because the usefulness of the opinion will depend heavily on the evidence provided to the UKIPO Examiner. For example, if you are the patent holder and you want an opinion that a competing product infringes the patent, it is necessary to identify the patent, set out full relevant details of the alleged infringing product, explain why you think there is infringement, identify the persons who may have an interest in the procedure (e.g. the manufacturer of the alleged infringing product), and set out any relevant EPO, UKIPO or UK court proceedings that have considered the patent or patent application or are pending. Such proceedings may prevent an opinion being issued. We can help you with all of this.
With respect to validity, the UKIPO usually will not consider objections that have already been sufficiently considered in relation to the same patent or patent application at the EPO or the UKIPO.
On which grounds can a validity opinion be obtained?
A request for an opinion on validity can be based on any objection which would be a ground for revocation of the patent, i.e. novelty, inventive step, non-patentable subject matter, insufficiency, added subject matter or extension of the scope of protection.
Will the request and opinion be confidential?
No. The request will be published, as will the opinion. You can see previous requests and opinions published here. The patent proprietor and any registered licensees and sub-licensees are also notified of the request. If you want to obtain an opinion on any patent issue but do not want that opinion to be published, we can help you, either by providing an opinion for you ourselves, or by enlisting the help of a barrister.
Can we challenge an adverse opinion?
Only the patent proprietor or exclusive licensee has the right to apply for a review of the opinion. The circumstances where a review is permitted are (i) where the opinion concludes that the patent is invalid or partially invalid and (ii) where the opinion concludes that the patent is not infringed on the basis of a particular interpretation of the scope of protection. If the patent holder applies for a review, any person has the right to file observations on the issues in the case. The UKIPO may schedule a hearing to decide the outcome of the review.
After a review, the patent proprietor or exclusive licensee has a limited right of appeal to the Patents Court (part of the High Court), within a time limit set by the UKIPO.
Note that an unsuccessful challenge of an opinion by review, or review and appeal, may result in an award of legal costs against the person challenging the opinion.
The only options for third parties to challenge the substance of an opinion, or of a review, involve contentious proceedings, e.g. an application for a declaration of non-infringement or an application for revocation of the patent.
What is the effect of the opinion?
The UKIPO opinions are non-binding. In any subsequent litigation, no party is bound by the statements made during the opinion procedure, or by the opinion itself. UK patent litigation is much more detailed and thorough than a UKIPO opinion, and so it is possible that the outcome of such litigation would be different to the UKIPO opinion.
In some limited circumstances, if the outcome of the opinion is that the patent is clearly invalid due to lack of novelty or inventive step, the UKIPO may take action to revoke the patent. This can occur with a UK or EP(UK) patent. In this case, the patent holder will have a further opportunity to defend the patent, including the option to apply for amendment of the patent.
What is the cost?
The official fee for requesting an opinion from the UKIPO is low - £200 (as at January 2015). However, there are costs associated with putting together the documents for requesting the opinion, and monitoring the procedure. Costs will vary significantly depending on the complexity of the issues. Get in touch with your regular Mewburn contact for more information.
This information is simplified and must not be taken as a definitive statement of the law or practice.