The UK’s IP Act from 2014 has brought about some important reforms, as summarised in our notes here and here. One feature is the expanded UKIPO Opinions Service, which began functioning in its new form on 1st October 2014.
The opinions service allows any third party to ask the UKIPO for a written opinion on infringement and/or validity of a granted patent. A third party can file prior art, arguments, and evidence for invalidity when requesting the opinion, and the patentee can respond before the opinion is drawn up.
The service had previously been restricted in two ways. Firstly, opinions were only offered on three issues: (i) infringement; (ii) novelty; and (iii) inventive step. Secondly, opinions were non-binding, so had limited impact.
There are two main changes.
Broadened scope of the issues
It is now possible to ask for an opinion on all aspects of validity that can be raised in full revocation proceedings, including novelty, inventive step, excluded subject matter, insufficiency, added matter, and impermissible claim broadening after grant (new Rule 93(6)).
Notably, the UKIPO can also now provide an opinion on the validity of an SPC (supplementary product certificate).
New power to revoke
Opinions will still be non-binding. However, if the opinion indicates lack of novelty or inventive step, the UKIPO now has the power to initiate revocation proceedings automatically of its own accord. In such proceedings, the patentee has the opportunity to file evidence, amendments and counter-arguments to save the patent from revocation.
The new risk associated with a negative opinion means that the stakes are higher for a patentee once an opinion has been requested. For example, patentees would now be well advised to respond to an opinion request, in order to reduce the risk of a negative opinion that could result in revocation proceedings.
New opportunities for third parties
UKIPO opinions are relatively cheap (official fee £200, around 320USD), can be requested anonymously (through a third party), and should carry no risk of a costs order against the requester.
We expect the changes to entice more third parties to request UKIPO opinions on patents they are interested in attacking. Some reasons for requesting UKIPO opinions are set out below.
- An opinion request may be able to clear invalid IP before launch of a product. A third party may now be able to revoke a manifestly invalid patent via a procedure that is simpler and cheaper than full revocation proceedings, particularly if the patentee is not interested in the patent and does not respond to the opinion request or resist revocation.
- The opinions service can also be used in the traditional way, but now with a wider range of issues. For instance, opinions on SPCs are now possible. A non-binding opinion may be useful to probe the issues before launching a court action against the patent or SPC. The consequent opinion might also be useful, e.g. in settlement or licensing negotiations.
- There are also potential strategic uses, predominantly because an opinion request on an important patent is likely to grab the attention of the patentee (who now faces the risk of revocation proceedings if the opinion is negative on novelty or inventive step). The opinions service may therefore work as a tool to flush out arguments and evidence from the patentee. Strategically, this may be useful at various stages, for example, in advance of UK Court proceedings or EPO opposition proceedings, or after the EPO opposition period has expired. A response from the patentee would be due within a few weeks from filing the request for an opinion, and a copy would be sent to the requester.
Complications and uncertainties
There are some areas of uncertainty in the new process.
One issue is that the UKIPO has said in a consultation summary that it will only start revocation proceedings in “clear-cut cases”, although this philosophy did not precipitate in the eventual legislation. It is uncertain “how negative” an opinion would need to be for the Office to flex its new muscles and start revocation proceedings after a negative opinion is given.
A further question arises on the scope of revocation proceedings under new Sections 73(1A) (1C). The UKIPO can only start the process if an opinion shows lack of novelty or inventive step, but once revocation proceedings have started, it is unclear from the legislation as to whether the UKIPO would be bound to only those two issues for the rest of the revocation proceedings, or whether other negative parts of the opinion could come into play and eventually lead to the downfall of the patent. For instance, if the opinion found added subject matter and insufficiency (in addition to lack of novelty), there does not seem to be a bar in the legalisation to those issues being pressed by the UKIPO in revocation proceedings later.
It has also been suggested that there may be potential for abuse of the new system as a cheap nuisance tactic against patentees. For example, a third party may be able to burden a patentee by filing multiple anonymous opinion requests across a patent portfolio.
In summary, the new opinions service presents interesting new opportunities for third parties who wish to probe the validity of UK patents without filing a revocation action. Patentees should be aware of the new risks and the greater need to engage with an opinion request filed on a UK patent.