In October 2014 the scope of the UK IPO's opinion
service was expanded to give it more "teeth". The UK IPO
is now able to initiate revocation proceedings of its own motion if
a patent is found to be "clearly invalid" and the range
of issues that can be considered in an opinion has been expanded.
This article reflects on the first 18 months of the expanded
service and why it is now being embraced by companies in the
chemical and life sciences sector.
The possibility of being able to clear the way and have a
competitor's patent revoked following a negative opinion on
patentability without having to go through full court proceedings
is a key attraction of the revised service.
Since October 2014, seven final opinions have found a patent to
be invalid and eight have found a patent novel and inventive. Of
the seven instances in which a patent was found invalid, the IPO
has launched revocation proceedings in four instances,
demonstrating that there is a readiness to exercise its power to
revoke "clearly invalid" patents.
The sample size is too small to draw any firm conclusions about
what constitutes a sufficiently clear finding of invalidity to meet
the "clearly invalid" and "clear- cut" test. In
three out of the four cases in which the patent was found to lack
novelty, revocation proceedings were launched suggesting that a
finding of lack of novelty is likely, but not certain, to result in
a revocation action.
Following Opinion 5/15 in which the patent was found
novel but lacking in inventive step, revocation proceedings were
commenced showing that lack of inventive step alone can meet the
"clearly invalid" requirement. However, following Opinion 7/15 and 10/15, in which it was found that patents lack
an inventive step over a single document, revocation actions were
not commenced after the patentee took action to respond to the
findings in the Opinions.
The decision not to launch revocation proceedings following Opinion 7/15 indicates that lack of inventive
step alone may only result in revocation proceedings in exceptional
circumstances. In that case, it was concluded in the Opinion that
an independent claim to a method of making a product with a coating
lacked novelty. After the Opinion was issued, the patent was
limited to claims that specified the substrate on which a coating
is applied, which had been found novel but lacking an inventive
step. Somewhat surprisingly, given the Examiner had found that
"there is nothing inventive in specifying a substrate",
the UK IPO did not then commence revocation proceedings on the
grounds that the revised claims are no longer "clearly
Once a revocation action has been launched by the IPO there are
indications that it will see the matter through. In the revocation
action following Opinion 25/14 the IPO is continuing to insist
that the patent is invalid despite the patentee arguing for the
patent to be maintained.
If a request for an opinion is withdrawn before the opinion is
issued, the UK IPO will continue to issue the opinion or initiate
revocation proceedings. Accordingly, the filing of a request for an
opinion might be a way of bringing a reluctant patentee to the
As well as providing an assessment of the validity of a patent,
opinions can be sought on Supplementary Protection Certificates
(SPCs). In Opinion 9&10/16 the validity of a
Supplementary Protection Certificate (SPC) directed toa patented
medicinal product was considered. While the main claims of the
Patent were found invalid, dependent claims covering the product on
which marketing authorisation had been granted were found valid and
so the SPC was also found to be valid.
A downside of the opinions service is that a third party who
requests an opinion on validity is not a party to subsequent
revocation action and cannot contest adecision by the IPO not to
initiate revocation proceedings. However, as illustrated in Opinion 12/14 there is no barrier to the
requester launching revocation action at any point, regardless of
the outcome of the opinion, and a UK IPO Opinion may help settle
disputes at an earlystage.
To conclude, while revocation of a patent following a finding
ofinvalidity in an IPO Opinion is far from guaranteed, the
requesting of an Opinion is a viable alternative to court
proceedings as a first step in challenging the validity of a
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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