The UKIPO Opinion Service

In our previous blogs on patent infringement and validity we have discussed situations where you may need an opinion on either validity or infringement of a patent.

In this blog we are going to look in more detail at the opinion service provided by the UKIPO.

How does the opinion service work?

A request for an opinion on validity of infringement can be filed at the Patent Office.  The request must be accompanied by a statement setting out all arguments as to why the patent is either invalid or infringed and any necessary supporting evidence.  The request will be advertised, and all interested parties will be notified and have 4 weeks from advertisement to file observations on the request.  Anyone may file observations, whether they have been notified of the request or not.  The requestor will then have 2 weeks to file observations in reply, if desired.  The UKIPO will then review all the arguments and evidence and issue an opinion. 

What to consider if you are thinking of requesting a UKIPO opinion?

A full argument supporting your case for infringement or invalidity is required when the request is filed.  Therefore, there will likely need to be a significant amount of preparation required in advance of the request being filed.  Although a requestor has the opportunity to file observations in reply, these are limited to the arguments in response to the points made by the other party.  It is important to ensure you have covered all points in the original submission, your patent attorney can assist you with this.

The opinion process is public and documents filed in opinion proceedings are not considered confidential. The filing of the request is advertised and the opinion is published on the UKIPO website.  You should consider whether you are happy for the full details of your request to be publicly available.

The other party will be notified of your request.  It is possible to get private opinions, for example, from your patent attorney or an IP barrister or Kings Counsel, which would not involve informing the other party.  You should discuss your general situation with your patent attorney and consider your objectives before filing a request for an opinion at the UKIPO.

What if you receive an opinion request?

The opinion process is very quick, and you should not delay in contacting your patent attorney and working with them to decide whether or not to file a response.  If you do decide to file a response, it may be necessary to carry out some significant analysis of documents you have not seen before and/or search for additional information of evidence.  Four weeks is not a lot of time to do this, and therefore you should not delay in taking action.

You do not have to file a response, but the process will continue without your input if you do not.

If you don’t agree with the opinion, what happens?

It is possible to request a review of the opinion, even if you have not responded to the request.  The review process is a full legal proceeding and the result at the end is either maintenance of the opinion or setting aside of the opinion.  The review must be requested within 3 months of the issue of the opinion and must be accompanied by a statement of grounds and supporting evidence setting out reasons why the opinion should be set aside.  There are some limits on what can be included in the request for review and the UKIPO may choose not to proceed with the review in some circumstances.  If they do proceed a copy of the request is sent to the requester of the opinion and they have the opportunity to file a response within 4 weeks.  A hearing will usually be appointed following exchange of submissions, though it may be possible to request a decision on the papers if all parties agree.  Again, the request for the review and the outcome of the review will both be advertised.  If the opinion is upheld on review, you may be asked to contribute to the legal costs of the other party involved in the review. There are very limited options for further appeal. 

What is the effect of an Opinion?

The opinion is non-binding, which means the Courts and Patent Office are not bound to follow the opinion.  However, if the UKIPO consider the patent invalid, they have the ability to start the process of revocation. 

Otherwise, an opinion, is just that, an opinion based upon the facts and submissions made to the UKIPO during the process.  Any further action, such as invalidation, infringement or post grant amendment must be taken separately by one of the parties.  The UKIPO opinion may or may not be followed in any subsequent proceedings and will depend heavily on the submissions made during the subsequent proceedings, which may not be identical to those made with the opinion request.

When you might consider a UKIPO opinion?

Some might consider the public nature of the UKIPO opinion service detrimental.  However, the cost is relatively low compared to seeking a private opinion, and it you are already in negotiation with the other party an independent opinion may help move those negotiations onwards.

The patent attorneys at Mathisen & Macara LLP are all experienced in assessing validity and infringement and can assist you in requesting an opinion or responding to an opinion request.  Please feel free to get in touch if you need further advice.