Patent Office Opinions

 

In October 2005, the UK Patent Office (now called the UK Intellectual Property Office) introduced the ‘Patent Office Opinion’ as a fast and inexpensive way of getting a ruling on patent validity and infringement.
A patent proprietor or an exclusive licensee can, on certain limited grounds, request a Review of an Opinion if the Opinion is unfavourable.

Recently, the fiftieth request for a Patent Office Opinion was filed. For forty of those requests, Opinions have already been issued. Thirteen requests for Review have been filed and nine Reviews have been issued.

 

The uses of Opinions

The name, Patent Office Opinion, is apt. The Opinion is simply the view of a patent examiner within the UK Intellectual Property Office, and is not legally binding. If the Opinion states that the patent is invalid, the patent will still not be revoked. If the Opinion states the patent would be infringed, no injunction or damages will be awarded. Nevertheless, in certain circumstances, Patent Office Opinions can be valuable as a way of assessing the strengths and weakness of a case. For example:

(a) The Opinion may assist in arriving at a settlement prior to litigation. The parties involved may even agree with each other to be bound by the Opinion as a way of settling a dispute without resorting to full legal proceedings. In this way, the Patent Office Opinion offers a quick and inexpensive (though non-confidential) alternative to litigation - effectively an expert determination.

(b) A person may request a Patent Office Opinion to get an indicator of the strength of a case prior to issuing legal proceedings.

An important feature of the Patent Office Opinion procedure is that it is public, and third parties are allowed to file comments before the Opinion is issued; indeed, a requirement of filing a request for an Opinion is to identify any persons who the requester is aware of who may have an interest in the Opinion so that they may be advised. This can be useful. For example, prior to issuing legal proceedings it may be possible to get some knowledge of the evidence and arguments which are likely to be raised by the other party.

 

The limitations of the process

Patent Office Opinions can only address whether a particular act constitutes an infringement of a patent, and whether an invention claimed in a patent is new and inventive. Somewhat bizarrely, the patent examiner preparing the Opinion is not allowed to give a view on whether a claimed invention is excluded from patentability for other reasons (for example because it relates to a method of doing business). In addition, Patent Office Opinions may not address issues already considered in any other proceedings (e.g. may not consider solely prior publications which were considered during prosecution of the patent application). Interestingly, a Patent Office Opinion can assess whether a hypothetical act would infringe a patent.

The traditional view in UK patent proceedings is that expert evidence is required to establish who the relevant skilled person is and what such a skilled person knows (this requirement for expert evidence is one of the factors making patent proceedings before the UK Courts expensive). The filing of expert evidence is not required for a Patent Office Opinion. The patent examiner will take a view based on the filed documents, and the examiner’s own assessment of the skilled person from his experience of dealing with patent applications in the relevant technical field.

 

Outcomes – the desirability of representation

Two-thirds of the forty Opinions issued have been requested by the patent proprietor. Of these, roughly half of the requests have been filed without representation by a legal professional. Only once has an unrepresented patent proprietor been able to establish a positive Opinion on infringement. In contrast, over half the cases addressing infringement in which the patent proprietor has been represented by a legal professional have established a positive Opinion on infringement.

Of those Opinions issued which were requested by someone other than the patent proprietor, about half the requests were filed in the name of a legal professional (presumably acting as a straw man - see article on page 6) and the majority of the rest were filed with representation by a legal professional. Anecdotal evidence suggests that some requests for Patent Office Opinions on validity have been filed to corroborate a previous opinion by a legal professional.

A patent proprietor or an exclusive licensee may request a Review of an unfavourable Patent Office Opinion, but only on the grounds that it wrongly concluded that all or part of the patent was invalid or by virtue of an incorrect interpretation of the patent specification it wrongly concluded that a particular act did not or would not infringe the patent. Of the nine Reviews that have been issued, four decisions confirmed findings of non-infringement in Patent Office Opinions requested by non-represented patent proprietors and three overturned a finding of partial invalidity of one patent which was subject to three separate Patent Office Opinions. One of the remaining Review decisions confirmed a finding of non-infringement, while the other related purely to costs (it confirmed that in the Review procedure an unsuccessful applicant for Review may have to make a contribution to any other party’s costs).

A further Appeal to the Courts is possible after an unsuccessful Review application, and one such appeal has been filed. The eventual outcome of this appeal may result in changes to Opinion practice.

The results of Patent Office Opinions are public. For a private settlement to a dispute, various alternative options are available, e.g. mediation or arbitration. However, these will almost inevitably be more expensive than a Patent Office Opinion. Accordingly, for disputes with a relatively small amount of money at stake the Patent Office Opinion will still be an attractive option.

 

Comment:

The relatively large number of cases in which an unrepresented patent proprietor has failed to establish a case for infringement suggests that the claims drafted in those cases, probably without professional assistance, were inadequate to protect what the patent proprietor considered to be the invention.