Of Molecules & Medicine: Patent Office Opinions

• Published date: 11 September 2020
• Subject Matter: Intellectual Property, Patent
• Law Firm: Haseltine Lake Kempner LLP
• Author: Ms Rachel McGlue

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...