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When the UK Intellectual Property Act (IPA) entered into force on the 1st October 2014, its major focus was the updating of UK Design laws, in particular those relating to the ownership of designs, moving from the situation where the commissioner of a design was the automatic owner, to where the author or creator of the design is the owner. One of the more overlooked provisions in the IPA related to the extension of the Patents Opinion service.
To give a bit of background, the Patent Opinion service has been available since 2005, however, it has had limited success, primarily because the opinion provided is non-binding. This meant that even if the IPO was of the opinion that the patent in question was lacking in novelty or inventive step it would not automatically take steps to begin revocation of the patent; if a 3rd party wished to invalidate the patent following receipt of such an opinion, they would have had to have begun revocation proceedings separately, at a substantial cost.
However, on the 1st November 2014 the IPA entered the following into Section 73 of the UK Patents act:
73. (1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.
(1B) The power under subsection (1A) may not be exercised before—
- (a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or
- (b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).
(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.
Therefore from the 1st October 2014, if the UKIPO is of the opinion that a patent lacks novelty and/or inventive step, it may of its own volition revoke the patent. However no revocation action can be considered until either, the period for requesting a review of the opinion (which is 3 months from the date of issuance of the opinion) has expired and no review has been requested or, where a review has been requested, until after a decision has been made on the review. Following this the UKIPO will issue a letter, notifying the proprietor of its intention to revoke the patent and giving an opportunity to propose amendments or submit comments, the proprietor has 2 months in which to do this, however this period is extendable by a further 2 months upon request. If the examiner is not satisfied that following the amendments/comments that the objections are overcome then the patent will be revoked and a letter will be issued giving a reasoned decision as to the revocation. Due to the significant costs involved in pursuing a revocation action, this extension of the patent opinion service could be highly beneficial for those seeking a cheaper route to invalidation, particularly as the current cost of an opinion is £200.
On the 13th of October 2014, an opinion regarding the validity of patent no. GB2497956 was requested from the UKIPO on the basis that a number of the claims lacked novelty and/or inventive step over a number of prior art documents. Subsequently Opinion 25/14 issued in February 2015 which found that the patent in question was indeed lacking in novelty and inventive step in light of the submitted prior art documents, the proprietor requested no review of said opinion. On the 7th August 2015, the UKIPO issued a letter notifying the proprietor of their intention to revoke the patent under 73 (1A). This letter set a 2 month period in which to respond, however, this has since been extended by a further 2 months and therefore we eagerly await a decision in December or early January.
If the IPO exercises its right and revokes GB2497956 then this will be the first example of this to occur since the introduction of S73 (1A). If this does happen we will have to wait and see how popular the opinion service becomes, no longer it appears will patent proprietors be able to ignore an unfavourable patent opinion and it remains to be seen how much standing the UKIPO will put in amendments or comments filed in response to an S73 (1A) notification. For patent proprietors subject to such an opinion the importance of requesting reviews of such opinions may become a necessary step to avoid revocation. For 3rd parties seeking revocation the opinion service has become a significantly more enticing prospect at a very low cost, the threat of an opinion which may find a lack of novelty or inventive step would be useful in any negotiations with a patent proprietor.
From a legal perspective, the fact that a patent may be revoked based on a supposedly non-binding opinion would appear to be a perversion of the non-binding opinion concept, however it will be interesting to see in the next few years how often the UKIPO exercises these new powers.