Articles and Publications
Patent Office Opinions and Reviews
10/Jan/2007
The basic concept behind intellectual property, commonly known as IP, is that of protecting the product of human intellect. Patents are the form of IP which provide protection for inventions.
In the UK, patents are subject to the Patents Act 1977 and a successfully registered patent grants the owner, the patentee, a monopoly right to exploit the patented technology for the duration of 20 years, subject to payment of renewal fees and not being invalidated. Once registered, a patent permits the inventor to stop third parties from using the invention, although the inventor is fully entitled to assign the patent or licence the technology to a third party.
However, in return for the Government granting him exclusive use of the invention, the inventor must not only show that the invention is new, represents an inventive step and is capable of industrial application, he must also disclose specific details of the invention for entry on a public register at the Patent Office. In other words, whilst the patentee receives the benefit of the invention, the price he pays is that the world at large can study it in detail in order to learn from it.
Given the fact that patents require such public disclosure of their workings, it is unsurprising that third parties will engage in activities that potentially infringe a patent. It is therefore inevitable that disputes will arise between a patentee and a potential infringer.
Under the PA 1977 the patentee had little recourse available to him other than ignoring the issue or instigating legal proceedings. However, the chances of succeeding at trial are often made doubly hard by the fact that the patentee will not only have to prove that the infringer is in fact infringing, but will more than likely have to resist a defence that the patent is invalid. Such proceedings are often expensive and time-consuming and, as with all litigation, there is no guarantee of success.
However, the Patents Act 2004 is attempting to improve the situation. Based on the fact that the most important disputes over patents tend to revolve around two key issues:
1. whether a particular product or process infringes a patent; or
2. whether a patent is invalid, because the invention is not new or is obvious,
the Act has introduced an alternative means to resolving a dispute which could avoid litigation.
Under the new procedure, anyone is able to request an ‘Opinion’ from the Patent Office on an issue of validity or infringement, including a solicitor or patent agent. Whilst this Opinion will not be binding, it is hoped that it will focus the parties on the key issues in dispute and allow them to test the strength of their arguments before going down the litigation route.
This new Opinion option costs only £200 and follows a relatively simple procedure. It provides an affordable and impartial assessment of the main contentious issues so that an educated decision can be made as to how to proceed, whether it be to negotiate a settlement, litigate or seek an amendment.
An opinion will be based on whatever material is provided by the party making the request, together with any material already on file. Upon such a request being made, certain individuals will be notified of it, including the patent holder, and the request will be advertised on the Patent Office’s website, though there is an option for the actual requester to be anonymous.
The Patent Office does have discretion not to give an Opinion where it believes the request to be frivolous or vexatious, or where it relates to matters sufficiently considered in any related proceedings. However, once an Opinion has been given, only the Patentee or exclusive Licensee can request a Review of the Opinion if they are not satisfied with the result (the cost of which is only £50). As with the Opinion itself, any Review is not legally binding.
Whilst on paper the new procedure appears to be a sensible investment for anyone considering litigation on this matter, to date it appears the service continues not to be widely used. This could be attributable to the fact the service has not been widely publicized and is perhaps not as well known as the Trade mark search and advisory service. However, it may prove to be a useful tool for those seeking to gain an indication on how successful their case may be before incurring the full costs of litigation
If you would like to speak to one of our specialist IP team about requesting an Opinion or about any IP matter, please call Lee & Priestley on 0845 129 2300.
In the UK, patents are subject to the Patents Act 1977 and a successfully registered patent grants the owner, the patentee, a monopoly right to exploit the patented technology for the duration of 20 years, subject to payment of renewal fees and not being invalidated. Once registered, a patent permits the inventor to stop third parties from using the invention, although the inventor is fully entitled to assign the patent or licence the technology to a third party.
However, in return for the Government granting him exclusive use of the invention, the inventor must not only show that the invention is new, represents an inventive step and is capable of industrial application, he must also disclose specific details of the invention for entry on a public register at the Patent Office. In other words, whilst the patentee receives the benefit of the invention, the price he pays is that the world at large can study it in detail in order to learn from it.
Given the fact that patents require such public disclosure of their workings, it is unsurprising that third parties will engage in activities that potentially infringe a patent. It is therefore inevitable that disputes will arise between a patentee and a potential infringer.
Under the PA 1977 the patentee had little recourse available to him other than ignoring the issue or instigating legal proceedings. However, the chances of succeeding at trial are often made doubly hard by the fact that the patentee will not only have to prove that the infringer is in fact infringing, but will more than likely have to resist a defence that the patent is invalid. Such proceedings are often expensive and time-consuming and, as with all litigation, there is no guarantee of success.
However, the Patents Act 2004 is attempting to improve the situation. Based on the fact that the most important disputes over patents tend to revolve around two key issues:
1. whether a particular product or process infringes a patent; or
2. whether a patent is invalid, because the invention is not new or is obvious,
the Act has introduced an alternative means to resolving a dispute which could avoid litigation.
Under the new procedure, anyone is able to request an ‘Opinion’ from the Patent Office on an issue of validity or infringement, including a solicitor or patent agent. Whilst this Opinion will not be binding, it is hoped that it will focus the parties on the key issues in dispute and allow them to test the strength of their arguments before going down the litigation route.
This new Opinion option costs only £200 and follows a relatively simple procedure. It provides an affordable and impartial assessment of the main contentious issues so that an educated decision can be made as to how to proceed, whether it be to negotiate a settlement, litigate or seek an amendment.
An opinion will be based on whatever material is provided by the party making the request, together with any material already on file. Upon such a request being made, certain individuals will be notified of it, including the patent holder, and the request will be advertised on the Patent Office’s website, though there is an option for the actual requester to be anonymous.
The Patent Office does have discretion not to give an Opinion where it believes the request to be frivolous or vexatious, or where it relates to matters sufficiently considered in any related proceedings. However, once an Opinion has been given, only the Patentee or exclusive Licensee can request a Review of the Opinion if they are not satisfied with the result (the cost of which is only £50). As with the Opinion itself, any Review is not legally binding.
Whilst on paper the new procedure appears to be a sensible investment for anyone considering litigation on this matter, to date it appears the service continues not to be widely used. This could be attributable to the fact the service has not been widely publicized and is perhaps not as well known as the Trade mark search and advisory service. However, it may prove to be a useful tool for those seeking to gain an indication on how successful their case may be before incurring the full costs of litigation
If you would like to speak to one of our specialist IP team about requesting an Opinion or about any IP matter, please call Lee & Priestley on 0845 129 2300.
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