Brexit and the imminent launch of the European Unified Patent is likely to increase United Kingdom (UK) national patenting activity. It is worth reminding UK patent right holders of the recently enhanced UK Intellectual Property Office (UKIPO) opinions service which shows potential as a low cost alternative to court revocation proceedings.
The opinions service serves to encourage dispute resolution and early settlement as an alternative to expensive and lengthy court revocation proceedings by facilitating a quick and affordable assessment of validity and/or infringement of UK patent rights. For GBP 200, a senior examiner provides a reasoned opinion on the validity and/or infringement of a United Kingdom patent, a European patent designating Great Britain, or a UK supplementary protection certificate (SPC) based on new questions/evidence provided by the requester. Anyone can request an opinion including the patentee, licensee or a party considering the patent as a freedom to operate risk and wishing to clear the way. The entire proceedings are public and in writing, and the request can be made anonymously through an agent.
Since October 2014, UKIPO opinions extend to matters considered grounds for revocation, i.e., novelty, inventive step, non-patentable subject matter, insufficiency, added subject matter or extension of the scope of protection by amendment, validity of an SPC, as well as whether a particular act constitutes or would constitute an infringement of a SPC. Conveniently, a validity and infringement opinion in respect of the same patent and the same alleged infringing act can be made in a single request. However, for a validity opinion, the UKIPO will not consider issues that are deemed to have been previously sufficiently considered by a court, at the European Patent Office or the UKIPO.
An adverse opinion can be reviewed and third party comments can be submitted. Following a review, the patentee can appeal to the Patents Court (UK). In contrast, third parties can only challenge the opinion or the review outcome in court by seeking a declaration of non-infringement or seeking revocation of the patent.
Where found to be clearly invalid for lack of novelty or lack of an inventive step, the UKIPO can now revoke a patent of its own volition but not before the patentee has been given a chance to comment on the opinion and/or to seek to amendment of the patent to address any deficiency. Likewise, if a review is requested or an appeal made, the patent cannot be revoked before a decision is made or the appeal is determined. While the service is not guaranteed to result in patent revocation, it effectively forces the patentee to comment on any negative opinion issued thereby offering a useful means of determining the patentee’s best case at an early stage outside of court proceedings. In clear cut cases of invalidity, the service facilitates the removal of patent obstacles in the UK while avoiding the need to initiate court proceeding.