Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Brewdog in Doghouse
In a recent UK opposition decision.  Brewdog have been denied trade mark registration for BREWD...
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Recent News

UK Ratifies Unified Patent Court (UPC) Agreement
The United Kingdom's Intellectual Property Minister Sam Gyimah announced on World IP day, 26 April 2018, the ratification by the UK of the Unified Patent Court (UPC) Agreement. The UPC agreement also ...
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UK ready for the Unified Patent Court
On 8 February 2018, the final legislation needed for the UK to be ready for the Unified Patent Court was passed.  The Queen and her Privy Councillors signed off the Order which is available here ...
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Brexit to have no effect on UKs dealings with the EPO
Brexit will have no consequence on the UK in connection with the European Patent Office (EPO), either for applicants or for Patent Attorneys in the UK, as confirmed by the EPO. In its notice dated 25...
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Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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Once a patent has been granted it can usually only be challenged through formal litigation in the Courts or at the Intellectual Property Office, which is expensive, time consuming and stressful.  In addition, attacking a competitor’s patent can result in a counter-claim for infringement.  These issues create significant commercial obstacles to challenging what might be considered an invalid patent.

UKIPO LogoSome years ago the UK Intellectual Property Office (IPO) began to offer an Opinion Service, in which a requester could question the validity of someone else’s patent or could ask for an indication of potential infringement.  The IPO Opinion is not binding, though it can give a useful indication as to how a patent will fare in litigation proceedings.  An Opinion can be requested anonymously.

A change in law, which became effective on 1 October 2014, gives the Comptroller of the IPO the power to revoke a patent on his own initiative if an IPO Opinion concludes that the patent is clearly invalid.  This is potentially a very powerful tool for challenging competitors’ patents, which is much cheaper that formal litigation and which also benefits from the option of anonymity.

We set out below some basic guidance on the Opinion Service.  The guidance focuses only on requests for an Opinion on the validity of a patent.  Should you be interested in finding more about an Opinion on a potential infringement, please contact us.  We are always happy to discuss the detail of any case.

The Procedure for an Opinion

A request for an Opinion on the validity of a patent, specifically on whether the protected invention is new and inventive, entails submitting to the IPO a formal statement setting out why the requester believes the patent is invalid.  The IPO will not normally review the examination which lead to the grant of the patent, so it is necessary therefore to cite new disclosures or provide new arguments which have not previously been considered.  The new disclosures may be written publications or public uses of the invention occurring before the filing date of the patent.

As we mentioned above, the request does not need to be filed by an “interested party” and we will typically filed it in the firm’s name (Williams Powell) so as to keep our client anonymous.  Doing so makes it very difficult if not impossible to counter-attack by suing for infringement.

The IPO fee is modest, at £200, and our professional fees for preparing the statement will generally range between £2,000 to £4,000 depending on the nature of the earlier disclosures to be cited and the quality of the evidence of those disclosures.

The IPO will send a copy of the request to the patent proprietor, who will be given an opportunity to respond, although this is not compulsory.  In our experience, until the law change, it was more frequent for the patent proprietor not to respond than to do so, we expect to give it the chance of arguing that it had not put its case for the validity of the patent so the Opinion could not necessarily be seen as fair.  This, though, might change given the change in the law.

The IPO will then issue its opinion, in practice within three months of the filing of the request.  It is important to bear in mind that the IPO is not obliged to review all of the evidence and also has the right to refuse to review an opinion, typically if it finds that the request does not add anything to what was already examined.  We will, though, guide you through the requirements and have had all our requests admitted for consideration.

Review Procedure for Patent Proprietors

If the patent proprietor decides that the Opinion reached the wrong conclusion, it may challenge it by applying for  a review of the Opinion, which will be heard again at the IPO.  The original requester can take part in the review, for example by filing counter arguments.  A notable difference between the review procedure and the original Opinion request is that the losing party may be required to pay the other side’s legal costs, although these are likely to be only a fraction of the costs actually incurred.

Comptroller’s Power to Revoke the Patent

Although the non-binding Opinion can be very useful in assessing the risks of being held to infringe a valid patent, the change in patent law on 1 October 2014 adds a new dimension.  If the Opinion concludes that the patent is undeniably invalid because it lacks novelty or is clearly obvious, the Comptroller has the right to revoke it of his own initiative.

Therefore, from a relatively simple and cheap procedure requesting a non-binding Opinion on the validity of a competitor’s patent it is possible to achieve revocation of the patent, and all without revealing one’s identity.  This can be a very powerful commercial tool.

Appeals Against the Comptroller’s Decision to Revoke

The patent proprietor has the right to appeal the Comptroller’s decision to the High Court.  However, the original requester of the Opinion is not a party to the appeal so even if the patent proprietor is successful, which would allow the patent proprietor to recover its legal costs for the appeal, these would be payable by the IPO and not the original requester.  Inevitably, the IPO has made clear that the Comptroller will use this new power only for clearly invalid patents.