UK Patent Office Opinions – A Useful Tool?

November 17, 2011

The UK Patent Office provides a procedure by which an opinion can be obtained from a Patent Office Examiner in relation to a granted British patent. This can be in relation to validity of the patent or infringement of the patent. The opinion is not binding, but the expectation is that in appropriate circumstances, it may assist in resolving disputes.

Here are some of the key issues:

What is the procedure?

Briefly, once a UK patent has been granted, whether obtained from a national or European patent application, the owner or anyone else can request an opinion from the UK Patent Office. The opinion can relate to the validity of the patent, or whether something infringes (or doesn't infringe) the patent. The person requesting the opinion must give full details of what it is that is thought to affect the validity of the patent, or full details of what is thought to infringe (or not infringe). The procedure is quite concise. Once the request has been made, there is a brief period for responses and then a period for the Examiner to form his opinion. The opinion is usually issued within three months of the request being made.

Who can use the procedure?

Anyone can make a request for an opinion on a granted patent. Thus, the patent owner can make a request (perhaps to assess if something infringes the patent), or someone else can make a request (perhaps to assess if something makes the patent invalid). It is possible for Swindell and Pearson Ltd to make an application without identifying our client, which might be useful when our client is not the patent owner, but is concerned that they may be infringing the patent and therefore wants to remain anonymous.

When can the procedure be used?

A patent must have been granted for the UK.

How does the procedure operate?

The procedure is very streamlined. The initial request must set out clearly the question on which an opinion is sought, any matters of fact which need to be taken into account to decide on the question, and any arguments which the person making the request might wish the examiner to consider. There follows a four-week period in which anyone else can make observations about the request (in writing, to the Patent Office). A further two weeks is allowed for the person making the request and for the patent owner (if different) to reply to all of this. The examiner then has six weeks to complete the opinion, which is published by the Patent Office. In order to keep the procedure streamlined, and avoid the Patent Office becoming bogged down in requests, they are allowed to decline to deal with a request which goes over old ground which has been considered previously.

Why would anyone use the procedure?

A good question, particularly as the opinion is not binding in any way, is restricted to the questions of validity and infringement, and does not have the strength of a Court decision. In particular, the examiner cannot order someone to stop infringing the patent, even if the examiner's opinion is that infringement is taking place. Only a Court can issue an injunction of this nature. However, the whole of the procedure takes place on the public record and we have seen examples of this influencing the behaviour of the parties involved, to the benefit of our clients. For example, a patent owner could request an opinion about something which he believes to be an infringement, if there is some doubt. If the independent opinion of the Patent Office disagrees, he may wish to reconsider before starting formal action in the court. Conversely, if someone is concerned that their new product might infringe the patent, they could obtain an independent opinion about this before launching the product. If the independent opinion indicates that there is indeed an infringement risk, he may wish to reconsider before launching the product. A further possibility arises if someone is at risk from a patent, but believes that it may not be valid. They can test the arguments, on the public record, through the opinion procedure. If the opinion confirms that the patent is not valid, this is likely to affect the confidence of the patent owner in relation to formal infringement action in the court.

How can Swindell and Pearson Ltd help with this?

We can advise clients about infringement of their patents, or infringement risks arising from patents of others. We can also advise about the validity of patents in the light of prior public disclosures of relevant information. Taking all of this into account, together with the commercial aims of the client, we can advise about various strategies in which a formal Patent Office Opinion could play a part. Finally, of course, if the client needs to go through the Opinion process, we have experience of doing this.

How much will this cost?

Always a difficult question, of course! The cost mainly arises from the need to prepare carefully before seeking an opinion. This is because the case needs to be put clearly to the examiner, with all of the supporting facts and arguments. You only get one chance to do this, so it needs to be done carefully. So it isn't a trivial piece of work, but provides an opportunity to obtain an independent (and public) opinion on a patent much more quickly and cheaply than would be possible through the court system. That makes it a useful part of the armoury, when deciding on a strategy to meet the clients commercial needs. Please contact Michael Skinner for more details [email protected] or your usual contact at Swindell & Pearson Ltd.

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.