Of Molecules & Medicine: Patent Office Opinions

By Rachel McGlue, Associate

The UK Intellectual Property Office’s (UK IPO’s) Opinions Service provides the ability to obtain the opinion of the patent office as to validity or infringement of a particular patent or supplementary protection certificate (SPC). This option provides a method of obtaining a non-binding but impartial opinion on whether any particular evidence affects the validity of a patent or SPC and/or whether a particular act might infringe that patent or SPC. Moreover, while the Opinion provided by the UK IPO is non-binding, the UK IPO has the ability to initiate revocation proceedings if the patent is considered to be “clearly invalid”.

With an official fee of only £200 and an average time between filing the request and issuance of the opinion of under 3 months, this service provides a cheap and quick method of obtaining an impartial opinion on validity and/or infringement.

Since the beginning of 2017, the UK IPO has initiated revocation proceedings for almost half of the patents that it found to contain any claims that lack novelty or inventive step. While most of these proceedings have resulted in the amendment of the patent claims, rather than the revocation of the patent in its entirety, it is clear that the UK IPO Opinions Service provides a cheap and quick method of getting a patent revoked.

Moreover, since (in contrast to the UK court system) there is no requirement to disclose the interested party when requesting the Opinion, it is possible to remain anonymous throughout the process.

In the last five years about 20 to 35 Opinions have been requested each year, many in the names of patent attorney firms. Despite this, it appears that only one request for an Opinion on an SPC (and its associated base patent) has ever been filed. This Opinion, requested in the name of the patent attorney firm Kilburn & Strode in May 2016, found many of the claims in the patent to be novel and inventive and, as the relevant SPC was based on one of the claims found to be inventive, also found that the SPC was valid.

Nevertheless, the UK IPO took the opportunity to initiate revocation proceedings, in view of the fact that some claims were not considered to be novel or inventive. This resulted in amendment of the patent claims.

Although it can be assumed that the finding by the Opinions service that the SPC was valid was not the outcome hoped for by the anonymous requester, it is probably that the impartial Opinion helped them to make commercial decisions.