A sting in the tail of new UKIPO opinions service

The UK IP Act 2014 has brought about some important reforms (for further details please see "The IP Bill good for business?" and "The IP Act – a false economy?"). One feature is the expanded UK Intellectual Property Office (UKIPO) opinions service, which began functioning in its new form on October 1 2014.

The service allows any third party to ask the UKIPO for a written opinion on the infringement and/or validity of a granted patent. A third party can file prior art, arguments and evidence ofinvalidity when requesting the opinion, and the patentee can respond before the opinion is drawn up.

The service had previously been restricted in two ways. First, opinions were offered on only three issues:

• infringement;
• novelty; and
• inventive step.

Second, opinions were non-binding, so had limited impact.

There are two main changes to the service.

• 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 infringement, 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 a supplementary product certificate (SPC).
• New power to revoke – although opinions will still be non-binding, 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 counterarguments 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), can be requested anonymously (through a third party) and should carry no risk of a costs order against the requester.

The changes are expected 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 intellectual property 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 in, for example, 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 (which 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 European Patent Office (EPO) opposition proceedings, or after the EPO opposition period has expired. A response from the patentee would be due within a few weeks of 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 start revocation proceedings only in “clear-cut cases”, although this philosophy did not precipitate in the eventual legislation. It is uncertain how negative an opinion will 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 start the process only 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 will be bound to those two issues for the rest of the revocation proceedings or whether other negative parts of the opinion can 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 legislation 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 that 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.