Two Years of Patent Office Opinions

Issue 2008 | Thursday, January 24th, 2008

By Nicholas Braddon, HLBBshaw Ltd

More than two years have passed since the UK Patent Office launched its Opinions service. Here, we take a brief look at the basics of the service before analysing certain aspects of its performance to-date and some of the opportunities that it may provide.

What is the Opinions service?

The Patent Office’s Opinions service, which was launched on 01 October 2005, was conceived in order to provide a quick (the process is designed to take no more than three months) and inexpensive (there is a flat fee of £200) means for engaging with the patents system in the UK1. In particular, it was targeted at small and medium sized enterprises which might not have the appetite or resources for full-blown patent litigation.

The service allows the patent proprietor or any other person 2 to request the Patent Office to issue an opinion in respect of a granted British patent regarding:

· whether a particular act constitutes, or (if done) would constitute, an infringement of the patent; and/or

· whether, or to what extent, the invention in question is not patentable.

One potential benefit of the service is that it can enable innovative businesses to have an early sight of the value of their own patent rights and those of their competitors and to be in a position to make timely and well informed business decisions accordingly3.

Patent Office Opinions are produced by specially trained patent examiners and are intended to represent an independent and respected view as to the strength of a patent. The Opinion is formulated on the papers with no evidence rounds, no disclosure and no hearing. Therefore, the “value” of an Opinion is clearly dependent on the quality of the submissions put in front of the examiner by the requester and any other parties who choose to make observations on the request.

Additional points to note regarding Patent Office Opinions include:

· A Patent Office Opinion is not binding for any purpose4

· A Patent Office Opinion does not create any estoppel

· The process does not provide for any confidentiality of documents

· An agent may request an Opinion on behalf of an interested party without revealing the identity of that party5

The Opinions service also allows for the patent proprietor to request a review of an Opinion6. A review must be filed within three months of the issue of an Opinion. The only grounds available7 are:

· that the Opinion wrongly concluded that the patent in suit was invalid, or was invalid to a limited extent; or

· that, by reason of its interpretation of the specification of the patent in suit, the opinion wrongly concluded that a particular act did not or would not constitute an infringement of the patent.

Following a review the Opinion may be set aside in whole or in part or it may be held that no reason has been shown for the Opinion to be set aside8.

On the other hand, if the Opinion is detrimental to the non-proprietor, there is no possibility of requesting a review, it being felt that the non-proprietor has sufficient statutory alternatives, e.g. to seek revocation of the patent or to apply for a declaration of non-infringement, through which to seek recourse.

It should also be noted that costs may be awarded in respect of any review proceedings.

Finally, there is also a limited right of appeal against a decision on review9. No permission is required, but an appeal lies only against a decision which upholds an Opinion either wholly or in part. Consequently, it is a right afforded only to a patent proprietor.

Has it caught on?

Now that we have an understanding of the rationale behind the service and the basic mechanics of the process, we will investigate what use has been made of it to date.

In the period from the introduction of the service to the end of 2007, 61 requests for an Opinion had been made. Four requests were made in 2005; 30 in 2006; and 27 in 2007. Chart 1 shows the number of requests received by the Patent Office each quarter since the service was launched. The data show that there has not been a continual increase in the number of requests being filed, and if it is not too early to be talking about such a trend, the number of requests per year would appear to have “settled” at close to 30 for the time being.

During the period under review, the Patent Office issued 49 Opinions, all but two of which were produced within the benchmark period of three months from the date of the request.

The number of Opinions issued by the Patent Office each quarter since the introduction of the service is also shown on Chart 1

Chart 1

Bearing in mind the rationale behind the introduction of the service, it is clearly encouraging that the Patent Office has met its three-month benchmark in the vast majority of cases.

In order to carry on building our picture of the use that has been made of the service, it may be illuminating to analyse the identity of the various parties who have requested an Opinion.

Chart 2 shows a breakdown of the identity of the requesters for Patent Office Opinions to the end of 2007.

Of the 61 requests, 31 were made by the registered proprietor of the patent.

In 24 instances, the request was filed in the name of the registered proprietor with no mention in the publicly available date of the involvement of an agent or attorney.

In a notable minority (14) of cases, the request was made in the name of a legal services firm or attorney without revealing the identity of the client.

It should be noted however that these data reflect the information available regarding the names of the initial requester only. In some instances, the details of the requester as set out in the issued Opinion do not mention any contribution from a legal services firm or attorney, but input of such a firm or attorney on behalf of the requester is noted in the issued Opinion when the observation rounds are being discussed. Therefore, it would appear as though legal representatives are involved in the filing of requests for an Opinion in a greater proportion of cases than might be suggested by Chart 2.

Chart 2

As noted above, one of the features of the service is that the patent proprietor or any other person may request an Opinion. This would appear to place no limitation on who may request an Opinion.

Similarly, the Patents Act provides that “any person” may apply for the revocation of a patent10. In a decision11, the Patent Office provided a limitation pertaining to how the term “any person” should be interpreted. In that decision it was held that an unincorporated association was not entitled to apply for revocation of a patent in its own name in the light of general case law to the effect that an unincorporated association could not bring proceedings.

While a Patent Office Opinion should not be considered equivalent to litigated proceedings, it would nonetheless seem to follow that the same limitation would apply to the persons entitled to make a request for an Opinion.

The next question we may wish to answer is what proportion of requests concerned the validity or a patent and what proportion were concerned with potential infringement.

Of the Opinions issued during the period under discussion, 23 considered the question of validity while 36 considered infringement. In 11 cases, both issues were considered.

Of the 23 Opinions regarding validity, the patent in question was held to be valid in 14 instances and invalid in 5, while on 5 occasions, the Patent Office declined to offer an Opinion.

Of the 36 Opinions regarding infringement, there was a finding of infringement on 17 occasions.

Further, during the period under discussion, 13 requests for review had been made with the Patent Office having completed 10 reviews. Seven of the completed reviews found no fault with the Opinion. In three instances, the review set aside at least some of the Opinion, although it is notable that these three Opinions related to a single patent. One request for review was withdrawn though there was still issued a related decision on costs. At the time of writing, two requests for review were pending.

At the time of writing, two appeals from a review had been filed. The court has recently issued its first judgment on such an appeal12).

On an initial point the court held that it should not decline to exercise the jurisdiction conferred on it by legislation, because: (i) the appeal was not of a type with which it should refuse to deal on the basis that the procedure could only result in the production of non-binding opinions or decisions; and (ii) there were real-life, as opposed to purely academic or hypothetical, issues to be decided.

The Judge concluded that a review should only decide that an Opinion was wrong if it contained an error or principle or came to a conclusion that was clearly incorrect. As a consequence, on appeal the court should only reverse the review if the review did not recognise such an error or incorrect conclusion in the Opinion. Thus, it is not the function of the court to express its view on the question that was the subject of the original request.

With this in mind, the court dismissed the appeal as the Opinion and review were both directed correctly in law, were not plainly wrong and represented entirely reasonable views for their authors to have taken.

Opportunities

We conclude our discussion by looking at a number of opportunities which the Opinions service may provide for businesses and their advisors.

First, being in possession of a favourable Opinion may help strengthen a party’s position in licence or other commercial negotiations. Conversely, of course, the opposite scenario may also hold true.

As if to further emphasize that despite its being non-binding, an Opinion may be by no means inconsequential (particularly if formed on the basis of thorough, well-reasoned submissions), it is currently understood that the Patent Office is keenly awaiting one of its Opinions being endorsed in litigation. In particular, it is reportedly hoping that the Court takes a robust view of the responsibilities of the losing party in bearing unnecessary costs incurred as a result of choosing not to follow the Opinion13.

Thus, an Opinion may influence the outcome or conduct of litigation.

As a further example, the existence of a detrimental Opinion (irrespective of how imperfect were the submissions on which it was based) in relation to a patent may deter another party from doing business with the patentee or may sour existing business relationships.

We end with two final points which may be worth considering. Firstly, in effect the Opinions service can provide a relatively cheap means for a party to obtain a declaration of non-infringement.

Secondly, the service provides a good value forum for testing the strength of a patent, e.g. in light of newly uncovered prior art. This function may have utility even beyond the UK, e.g. an Opinion as to the strength of a British member or a patent family may be applicable to, and help to inform decision making in respect of, its equivalents in other jurisdictions.

Nicholas Braddon (nick.braddon@hlbbshaw.com) is a graduate of Cambridge University where he gained a BA and MSc in Natural Sciences, specializing in Materials Science and Metallurgy. Prior to joining HLBBshaw as a Technology Specialist, he worked for a metal market-focused economic research company, writing independent analytical reports on global steel markets

  1. Page 98, CIPA Journal February 2006, Volume 35, No. 2 [↩]
  2. Section 74A(1), UK Patents Act 1977 [↩]
  3. Page 98, CIPA Journal February 2006, Volume 35, No. 2 [↩]
  4. Section 74A(4), UK Patents Act 1977 [↩]
  5. Rule 93(3), Patents Rules 2007 [↩]
  6. Rule 98(1), Patents Rules 2007 [↩]
  7. Rule 98(5), Patents Rules 2007 [↩]
  8. Rule 100(1), Patents Rules 2007 [↩]
  9. Rule 100(3), Patents Rules 2007 [↩]
  10. Section 72(1), Patents Act 1977 [↩]
  11. BL O/066/05 [↩]
  12. DLP’s Application [2007] EWHC 2669 (Pat [↩]
  13. Page 609, CIPA Journal November 2007, Volume 36, No. 11 [↩]

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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