Scary Changes to UKIPO Patents Opinion Service.

Since 1 October 2014 the scope of the Intellectual Property Office (IPO) Patents Opinion Service has been extended. It is now possible to request a wider range of opinions on infringement and validity of a UK patent, a European patent (UK) or, for the first time, a Supplementary Protection Certificate (SPC).

An IPO opinion is still, in principle, non-binding but, controversially, where an opinion is issued indicating a clear case of lack of novelty or lack of an inventive step the IPO may, itself, start the process of revoking that patent.

A Patent Opinion may now be requested from the IPO as to whether:

  • an act is an infringement of the patent;
  • the patented invention is new and/or involves an inventive step;
  • the patented invention is capable of industrial application;
  • the patented invention relates to excluded matter (section 1(1)(d) of the Patents Act 1977)
  • the patent is sufficiently disclosed for it to be performed by a person skilled in the art
  • the patent contains added subject matter or the protection conferred by the patent has been extended by an amendment which should not have been allowed;
  • an act is an infringement of a Supplementary Protection Certificate (SPC); and
  • an SPC is valid.

A single opinion request can cover both infringement and validity of a patent or SPC, as long as the request relates to the same patent/SPC and to a single act of potential infringement. One request may cover any number of the grounds on which validity can be raised.

In those cases where the IPO starts the process of revoking the patent or SPC, there will be some safeguards for the patentee, including the options of applying for a review of the opinion before any revocation action is commenced, and providing arguments or amendments. If the patent is revoked, the patentee will be able to appeal this decision to the courts.

The changes to the IPO’s Patents Opinion service were one of a number of changes to IP in the UK enacted by the Intellectual Property Act 2014 (http://www.legislation.gov.uk/ukpga/2014/18/contents/enacted).

If you would like more information on this issue, please contact us.

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