Plans for expanded patent opinions service outlined by IPO

Out-Law News | 03 Jun 2014 | 4:59 pm | 2 min. read

The Intellectual Property Office (IPO) has published its plans for using a new power to revoke patents that it has provided an official opinion about.

Since 2005 individuals and businesses have been able to request that the IPO issue opinions on the validity of patents that have not previously been looked into by its examiners during scrutiny of patent applications.

The IPO has said that its patent opinions service (POS) can help businesses resolve disputes before they go to court or "help the parties to better focus their cases and thus save time and money" where going to court is otherwise "unavoidable".

However, the IPO has had only limited powers to begin the process of revoking patents, meaning that it has often been left to businesses to challenge the validity of rivals' patents even with a supportive POS opinion.

The recently enacted Intellectual Property Act gave the IPO a new power to begin the process of revoking patents where a POS opinion has identified a lack of novelty or sufficient invention in the patented technology.

The IPO has now said that it intends to exercise these powers "in clear-cut cases where the patented invention clearly lacks novelty or an inventive step". It said patent holders would be able to apply for a review of the opinion it provides under its POS, "amend his patent before any revocation takes place" and challenge a revocation decision by the IPO before the courts.

The proposals are contained in a new consultation the IPO has launched (18-page / 286KB PDF) which also includes draft plans to widen the scope of the POS.

Under the proposals, businesses would be able to ask for the POS to assess whether "a particular act constitutes, or (if done) would constitute, an infringement of the patent" at issue.

In addition, they could ask for an opinion on whether or to what extent an invention protected by a patent is "not a patentable invention". The POS will also be able to provide a view on "whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art".

Among the other issues the POS will be able to be asked to opine on whether supplementary protection certificates for medicinal or plant protection products are invalid.

There are certain cases in which the POS will continue to be able to refuse to issue opinions, the IPO said.

"The existing provision that the Comptroller should not issue an opinion if the question upon which the opinion is sought appears to him to have been sufficiently considered in any relevant proceedings is unaltered," the IPO said in its consultation paper. "The existing legislation also provides that an opinion request can be refused if for any reason the Comptroller considers it inappropriate in all the circumstances to issue an opinion."

"Whilst each opinion request needs to be considered on its merits, this power has been used on a number of occasions to ensure that patent holders are not required to answer again questions that were sufficiently considered during the examination of the patent. We would expect this practice to apply also to the new grounds on which an opinion can be requested," it said.

The IPO's consultation closes on 4 July.