01 October 2005

Patent Office Advisory Opinions available from Monday

S.13 of the Patents Act 2004 comes into force today pursuant to art 2 of The Patents Act 2004 (Commencement No. 3 and Transitional Provisions) Order 2005. This section provides for advisory opinions by the Patent Office on whether a particular UK and European patent (UK) is valid and/or whether such patent has been infringed for £200.

This is the one big concession to SME and individual inventors in the 2004 Act. If you read the IPAC report mentioned in the previous post, you will see that IPAC recommended re-examination of patents after grant to reduce the cost and uncertainty of patent litigation for small business. Patent agent Richard Gallafent argued for re-examination at a special consultation at the Patent Office in August 2003 and the Patent Office - I seem to remember it was Sean Dennehey and Peter Hayward, but I may be mistaken - argued the case for some kind of ADR. Sir Robin Jacob, Fiona Clarke and several other practitioners and interest groups were in the audience, including me. Although I inclined towards Richard's argument I think the view of most others, including the judge's, was towards the Patent Office. What we have now is something that combines a little of both proposals though it seems to me that it leans closer to the Sean and Pete's offering than re-examination.

The Patent Office has now printed the form to be used (15/77) as well as some general guidance on the new section (s.74A in the consolidated Act), details on procedures, step-to-step guide on filing observations by email, FAQ and very much more which can be accessed from the "Patent Office Opinions and Reviews" page on the Patent Office website. I have already had two enquiries about this new procedure and I am looking forward to some firm instructions any day now.

As I said in my post here on 12 Sep 2005, Peter Hayward and Ian Lewis will give a talk on advisory opinions at BPP Law School in Leeds on 24 Nov 2005 which is absolutely free. Struan, Jean and any other Scots who may read this post, this new procedure applies as much as to Scotland as it does to the rest of the nation so we hope to see a few of your colleagues in Leeds on 24 Nov especially with the improvements to the A1 and A74 unless there is a similar presentation nearer home. Enquiries should be addressed to the law school and not to me. Click here for the email address and telephone number of the person you should contact.

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