UKIPO Patent Opinion Service

Since 2005 the UK Intellectual Property Office (UKIPO) has offered a service which enables interested parties to obtain an informal opinion on an existing patent. This opinion can be sought on whether the actions of another party might infringe an existing patent or whether the validity of an existing patent could be challenged on the basis of lack of novelty or inventive step.

The opinion service can be particularly useful for those considering investing in technology research and development. The lost time and cost of investing in R&D which cannot then be exploited due to an existing "blocking" patent, in addition to the time and costs involved in patent litigation, can be considerable.

The opinion service, costing £200, is considerably cheaper and it is normally issued within three months, much faster than recourse to the courts. Although it is non-binding, an opinion from the UKIPO can be a very useful tool in terms of assessing whether the path is clear for R&D, or for assessing the strength of an existing patent and whether challenging it is a worthwhile exercise.

Embley Wave Patent

An example of a sector in which obtaining such an opinion could be beneficial before proceeding with costly R&D of products or systems, is the renewable energy sector.

The UKIPO recently issued an opinion relating to Embley Energy Limited's (Embley) patent relating to SPERBOY, a floating wave energy converter. A request was made by a third party, perhaps a competitor seeking an opinion on the validity of Embley's patent.

To be valid, a patent must describe an invention which is both new and inventive. The UKIPO was asked to determine whether the invention was 'new' based on documents published prior to the patent being granted, which the third party claimed contained descriptions of the invention. The UKIPO also had to determine whether any features of the SPERBOY that were not described in the documents produced would have been obvious to a person working in the field at the time.

In it's opinion, the UKIPO stated that the main claim of the patent was invalid, as the system for optimisation of turbine speed was effectively the same as that described in a document produced relating to another wave energy converter produced as part of a project known as OSPREY (Ocean Swell Powered Renewable Energy).

However, other parts of the patent were stated to be valid as they had not been mentioned in the documents produced, for example, the description of the optimisation of rotor speed based on 'calculation' of airflow. This was not viewed as an obvious development from the 'prediction' of airflow in the OSPREY design.

While the UKIPO's opinion is not legally binding, the indication that significant parts of Embley's patent could be invalid may lead to competitors challenging Embley's patent or taking the risk of infringing the patent on the basis that Embley might have little recourse against them should a court come to the same conclusion as the UKIPO.

Commentary

Although it has generally been the situation that a patent should be applied for as quickly as possible after new technology is developed on the basis that patents are granted on a 'first come, first served' basis, the Embley case shows that care should be taken to establish that what is being patented is genuinely a new invention and not simply a reflection of the current 'state of the art.'

While Embley's patent remains in force, the UKIPO's view that the majority of its claims are invalid means that Embley may have difficulty enforcing the patent in the courts against competitors producing similar technology.

Given the rapid growth of the renewable energy sector and the increasing number of patents being sought to cover methods of generating renewable energy, it is likely that further opinions will be sought from the UKIPO regarding the strength of existing patents before competing companies embark on research or develop new systems or methods of generating energy from renewable sources.

Companies who are in the business of developing new technologies in this sector should bear in mind what is available in the particular market in which they operate, and carry out comprehensive checks before spending money on R&D. This will help to ensure that their own patents are sufficiently strong to resist challenge, and will allow them to exploit their new technologies and protect their investment.