Free Seminar, "Patent Office Advisory Opinions", Leeds 24 Nov 2005
This will be my contribution to a rolling programme of talks to be organized by a group of practising and academic intellectual property lawyers, patent and trade mark agents, business people and others interested in intellectual property in the North of England. Other members of our group will arrange talks on technology transfer, freedom of information and branding over the coming academic and legal year.
The reason I have approached those speakers is that Mr Hayward will be in charge of advisory opinions and Mr Lewis works for one of the market leaders in intellectual property litigation and asset protection insurance. For those who know nothing about advisory opinions, they are an initiative to reduce the risk and cost of litigation by publishing the considered view of the Patent Office on whether a patent is valid and, if it is, whether it has been infringed. By way of introduction, the Patent Office had published a guidance note on the subject which may be downloaded from the Patent Office website. The statutory provisions which implement this scheme are to be found in s.13 of the Patents Act 2004. That section inserts new sections s.74A and s.74B into the 1977 Act. Draft rules for insertion into the Patent Rules 1995 have been published and a consultation on their implementation has recently closed. Mr Hayward spoke about the proposed rule changes at a meeting at the Patent Office organized by the IP Institute on 1 July 2005. We hope that he will be able to add to what he said in London in July since he should know the results of the consultation by then.
It might be expected that a favourable advisory would make it cheaper and easier for a patentee or indeed person threatened with patent infringement to obtain after-the-event insurance. At present, insurers require a very bullish opinion by counsel or solicitor advocate specializing in the field and charge premiums of 33% of the amount insured. I have asked Mr Lewis to consider whether a favourable opinion from the Patent Office will make any difference to the premium or acceptance of the risk. If he says that his company will still require counsel's opinions and a 33% premium before they will accept the risk much of the appeal of the scheme will disappear.