Non-Binding Opinions Of The UK-IPO

Since October 2005, an application can be made to the United Kingdom Intellectual Property Office (UK-IPO) seeking a non-binding opinion on certain issues of validity and infringement. Although these UK-IPO opinions are non-binding, the cost of obtaining one is low and the opinions can offer businesses of all sizes a useful, inexpensive tool for resolving patent disputes.

The recent decision in DLP Limited's Patent (16 November 2007, [2007] EWHC 2669 (Pat)) was the first time the High Court had been asked to review one of these UK-IPO opinions. In his decision, Mr Justice Kitchin confirmed that it is appropriate for the High Court to hear appeals from patent proprietors unsatisfied with an opinion from the UK-IPO, but that the High Court can only influence in limited circumstances.

Background

Parties that wish to resolve patent disputes whilst avoiding the cost and time of formal litigation can apply to the UK-IPO under Section 74A of the Patents Act 1977 for a nonbinding decision as to whether:

a particular act constitutes infringement of a UK or EP (UK) patent, or

the invention claimed is notpatentable.

The resulting opinion, although non-binding, may prove useful in discussions aimed at avoiding formal litigation. As the application fee is only £200 (approximately US$400), it is a highly cost-effective way of pre-empting expensive litigation proceedings.

The procedure has generally been well-received. Since its introduction, 57 requests for an opinion have been filed and 45 opinions issued.

Review and Appeal

If the proprietor of the patent (or an exclusive licensee) is not satisfied with the UK-IPO's opinion, he can apply under Section 74B of the Patents Act to have the opinion reviewed by a Hearing Officer for a fee of £50. The Hearing Officer may set aside all or part of the opinion, or allow the original opinion to stand. Of the 45 opinions issued by the UK-IPO, there have been 13 requests for review by a Hearing Officer.

If the proprietor of the patent remains dissatisfied with any element of the opinion that has been upheld following the Hearing Officer's review, the proprietor may apply to the High Court for a further review of the opinion.

An appeal to the High Court can only be filed if the proprietor of the patent considers that:

the opinion wrongly concludes that the patent is wholly or partly invalid, or

as a result of an incorrect interpretation of the specification of the patent, the opinion wrongly concludes that a...