United Kingdom: A matter of opinion

March 23, 2017

The UKIPO has long provided the means for any third party to obtain an independent opinion on questions of validity and infringement in relation to granted UK and EP(UK) patents. More recently this service has been extended, for example by allowing additional grounds of invalidity to be raised, leading to a surge in its popularity among clients operating in the UK.

Any person may request the UKIPO to provide an opinion on validity or infringement of a UK or EP(UK) patent. However, opinions are typically requested by a patent holder, an exclusive licensee of the patent or a third party for whom a patent poses an infringement risk.

When filing any request for an opinion, it is essential to set out the evidence and arguments that support your position. For example, when arguing for invalidity, any request for an opinion should include detailed reasoning in relation to each ground of invalidity raised while highlighting relevant prior art documents. Alternatively, when arguing for an opinion of infringement, it is important to set out the facts relating to any potentially infringing products and acts.

While any opinion issued is non-binding, the position of the UKIPO may assist in formulating an overall commercial strategy surrounding the patent right in question, and strengthen a position in mediation. Additionally, the opinion system offers a further advantage in that a finding of patent claim invalidity may cause the UKIPO to begin the process of revocation in the UK. This process is only undertaken on patents the UKIPO deem to be clearly invalid.

The UKIPO may begin revocation proceedings in relation to both UK and EP(UK) patents. In the case of EP(UK) patents, such revocation proceedings will only affect the UK and will not be Europe wide.

Overall, the opinions service offered by the UKIPO is a useful commercial tool, offering a means of obtaining an independent opinion as to any aspect of patent validity or infringement. Additionally, in the clearest cases of invalidity, the UKIPO opinion service is an attractive option where rapid, cost-effective revocation of a competitor's patent is desired.