The UK Intellectual Property Office (IPO) launched the Patent Opinions Service in 2005. An IPO opinion costs £200 (official fee) plus the cost of preparing the evidence and statement. An IPO opinion provides a quick and affordable assessment relating to whether a patent would be infringed or whether a patent is novel and inventive.
Until 1 October 2014 an IPO opinion was not “binding for any purposes” and, as a consequence, has to date not been as popular as might have been hoped. If an opinion considered that a patent was invalid, it was the responsibility of the third party to start revocation proceedings if desired. This can be a costly and lengthy process but was the only available avenue to effect revocation of a disputed patent prior to 1 October 2014.
From 1 October 2014, the Patent Opinions Service has been expanded to cover additional possible grounds of invalidity, such as whether the invention in question is capable of industrial application or whether the invention relates to matter excluded from patentability. More importantly perhaps, as a result of the Intellectual Property Act 2014, the IPO itself may now initiate the process of revoking a patent if an opinion (requested on or after 1 October 2014) indicates that the patent is not novel or inventive.
Theoretically, the IPO Patent Opinions Service would appear to provide a quick and inexpensive means of obtaining revocation of a troublesome patent. However, the Act also puts certain safeguards in place for patent proprietors, in particular:
- “The patent holder will have the opportunity to apply for a review of the opinion before any revocation action is commenced.
- The patent holder will have the opportunity to provide arguments or to amend his patent to try to overcome the problem and prevent revocation.
- If the patent is revoked, the patent holder will be able to appeal this decision to the courts.”
At the very least the change, which applies to all opinion requests filed on or after 1 October 2014, would appear to provide a greater incentive to use the Patent Opinions Service in view of the potential to cause significant problems for Competitors. However, it should be stressed that the IPO will only commence the process of revoking a patent in clear-cut cases, i.e. where the patented invention “clearly” lacks either novelty or an inventive step. In practice therefore, whether the additional power of revocation awarded to the Comptroller by the 2014 act will see much use will only become apparent in due course.