UK: UK Patent Office Opinions – Strategic Concerns

Last Updated: 10 January 2008
Article by Jeremy Harris

In a recent case, the English Patents Court gave judgment on the first appeal against an opinion of the Comptroller of Patents under the scheme for the provision of UK Patent Office opinions (the "Scheme"). While the rationale for the introduction of the Scheme seems sensible (and over 60 opinions have been issued so far) this case highlights that in many circumstances the advantages of using the Scheme will be limited and the decision of whether to request an opinion will require careful consideration.

The Scheme

The Scheme is set out in sections 74A&B of the Patents Act 1977 (the "Act") and was introduced to facilitate the settlement of patent disputes by providing a quick and cheap mechanism for parties to obtain an impartial assessment of the strength of their case and an indication of key infringement and validity issues. This is achieved by the UK Patent Office expressing a firm view rather than trying to assess the likelihood of infringement or validity in percentage terms.

Any person can request an opinion as to whether a particular act constitutes an infringement of a patent, or whether a patent is invalid because the invention in question is not new or does not involve an inventive step. Importantly, the opinions issued under the Scheme are non-binding.

However, a proprietor or exclusive licensee of a patent (but not anyone else) can, in prescribed circumstances, request a review of an opinion issued pursuant to the Scheme and an appeal against a decision made on review. The review and appeal procedure is embodied by sections 77H-K of the Patents Rules 1995 (the "Rules").

The Case

In this case, the applicant (DLP Limited) sought an opinion as to whether a third party's product infringed DLP's UK patent. The examiner (on behalf of the Comptroller) issued an opinion that the product did not infringe DLP's patent. DLP requested a review of the opinion and the hearing officer set aside certain parts of the original opinion, but upheld its overall conclusion. DLP was not satisfied with this outcome and therefore appealed the decision.

Before the Patents Court, three important issues fell to be determined:

  1. Was the hearing officer's review of the original opinion a decision against which a right of appeal lay?
  2. If so, did the non-binding nature of the opinion preclude the Court from hearing the appeal?
  3. If not, should the appeal be allowed?

In relation to the first issue, the Court held that it was clear from the wording of the Act and the Rules that an applicant should be able to appeal such decisions. As to the second issue, the Court found that it should not decline to hear appeals of this type, despite it being inherent in the Scheme that it could only lead to a non-binding opinion.

As to whether the appeal should be allowed, the Court held that an opinion should be overturned only if the examiner made an error of principle or reached a conclusion that was clearly wrong. Despite having some sympathy with criticisms of the opinion, the Court found that the examiner and hearing officer had directed themselves correctly in law and therefore the decision was correct. Accordingly, the appeal was dismissed.


This case shows that while the Patents Court may review the core reasoning behind an opinion, it will only overturn a decision if the examiner erred as a matter of principle, or if the opinion is clearly wrong. This is a high threshold and adds extra complexity to the strategic decision of whether to apply for an opinion.

For example, where the issue is not clear-cut and a patent owner/exclusive licensee does not receive the desired decision, they either have to incur the cost of a review and possibly an appeal (which are unlikely to be successful), or accept the opinion (which could be taken as an implicit acceptance that the decision is correct). Even if the patent owner/exclusive licensee was successful in the review or appeal, they may be no further forward in finding a resolution to the dispute as they would still only have a non-binding opinion and, in the absence of a settlement, would need to incur additional costs to take action against the infringer.


It is evident that the Scheme does have clear benefits in certain circumstances, for example, where a potential claimant is dissuaded from litigating on the basis of an opinion that the potential defendant has not infringed the patent in question, or where an opinion leads to a quick settlement of a dispute.

However, in many circumstances, the Scheme will not be the best course of action and patent owners may find themselves in the paradoxical position that, in order to satisfactorily resolve a dispute, it may be quicker and cheaper to commence Court proceedings rather than follow the procedure set out in the Scheme. This clearly contradicts the very basis for the introduction of the Scheme into UK law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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