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IPO seeks new patent revocation powers as means for helping small businesses

The circumstances in which the Intellectual Property Office (IPO) can initiate proceedings to revoke a patent on the strength of a non-binding opinion it was asked to submit on the patentability of an invention should be expanded, it has said.

The IPO has opened a consultation (32-page / 957KB PDF) on proposals that would see it expand its Patent Opinions Service (POS). As part of the reforms the IPO said it should be given "the power to initiate revocation action against a patent that an opinion concludes is invalid."

To qualify for patent protection inventions must primarily be new, take an inventive step that is not obvious and be useful to industry. The IPO employs examiners to search through 'prior art' to check whether applications for patent protection are novel and who also examine whether they satisfy the inventive step requirements, amongst other assessments of patentability, before patents are approved and registered.

However, POS enables individuals or companies to request that the IPO issue opinions on questions relating to the validity of patents that have not previously been looked into by its examiners during scrutiny of patent applications. The opinions themselves are non-binding but the IPO said a review conducted in 2009 showed that the opinions were "helping to resolve a significant number of disputes."

However, the IPO said that there has been "a high desire" for it to expand the areas that it can look into when forming its opinions under POS. Currently the Patents Act limits the questions that individuals or companies can ask the IPO to answer in its non-binding opinions to whether a patent is or would be infringed and whether a patent is invalid because the invention is not novel or does not involve an inventive step.

The IPO has now proposed that POS be expanded to allow it to answer whether a patent is invalid because it is not capable of industrial application, because the patent specification " does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art" and whether "the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed."

It also wants to be able to answer whether "the protection conferred by the patent has been extended by an amendment which should not have been allowed," if it is asked to issue an opinion on it through POS.

Being able to answer more questions about validity in its non-binding opinions could help reduce the number of disputes that reach court, the IPO said.

"The legislation currently provides that opinions can only be issued on the question of whether a patent is invalid because the invention is not new or does not involve an inventive step," the IPO said in its consultation. "It is not possible for the IPO to issue opinions on questions relating to any of the other grounds on which the validity of a patent can be challenged."

"Where such questions have been raised in opinion requests, either as a stand-alone question or in combination with a question relating to, for example, novelty or inventive step, then the IPO has refused to answer them. In those circumstances, the opinion will not have provided the parties with all the answers that they asked and consequently may not have helped to fully resolve their dispute. To get those answers the parties would have to initiate litigation proceedings on those matters before the Court or the IPO with the resultant cost implications," it said.

The IPO said that of 180 opinions it has issued on patent validity it had found that 38 patents granted were at least in part invalid. It said though that only in seven cases had the patents subsequently been revoked. It wants to be given new powers in order to initiate revocation of patents that are deemed invalid following the issuance of an examiner's opinion under the POS system. It said it would help smaller businesses who may not be able to afford to challenge patents through the court system themselves.

"An opinion provides a relatively quick and risk free process for businesses to assess the relevance of any prior art not considered during the examination of the patent," the IPO said. "Where the opinion concludes, most likely after taking into account the views of the patent holder, that the patent is invalid then it would seem desirable to give the IPO the possibility of seeking the revocation of the patent."

"This will remove the burden of doing this from others, which may be especially beneficial to SMEs. It could also benefit other businesses who have an interest in the patent but who were not involved in the opinion process ... Linking possible revocation of a patent to the conclusions of opinions enables the issue to be tested first and ensures that the efforts of the IPO are channelled towards those patents that are potential sources of dispute," it said.

The IPO said that changes to the Patents Act could be made to implement its proposals.

In a separate call for evidence (20-page / 938KB PDF) the IPO is also asking for views on why its Mediation Service is currently under used. It said that better use of alternative dispute resolution mechanisms can help small businesses save time and money in avoiding going to court over a patent dispute.

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