Patents: Consultation on IPO Opinions
S.13 of the Patents Act 2004 inserted two new sections into the Patents Act 1977.
S.74A provides as follows:
"74 A Opinions as to validity or infringement
(1) The proprietor of a patent or any other person may request the comptroller to issue an opinion—
(a) as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b) as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied.
(2) Subsection (1) above applies even if the patent has expired or has been surrendered.
(3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
(a) in such circumstances as may be prescribed, or
(b) if for any reason he considers it inappropriate in all the circumstances to do so.
(4) An opinion under this section shall not be binding for any purposes.
(5) An opinion under this section shall be prepared by an examiner.
(6) In relation to a decision of the comptroller whether to issue an opinion under this section—
(a) for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
(b) no appeal shall lie at the instance of any other person."
S.74B provides for a review of an opinion issued under s.74A:
"74B Reviews of opinions under section 74A
(1) Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
(2) The rules may, in particular—
(a) prescribe the circumstances in which, and the period within which, an application may be made;
(b) provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(c) make provision under which, in prescribed circumstances, proceedings on a review are to be treated for prescribed purposes as if they were proceedings under section 61(1)(c) or (e), 71(1) or 72(1)(a) above;
(d) provide for there to be a right of appeal against a decision made on a review only in prescribed cases.”
The idea was dreamt up by Sean Dennehey and Peter Hayward during consultations on the proposed Patents bill in the Patent Office (as the IPO was then called) in 2003. Early proposals for the bill had suggested the removal of the words "by agreement with each other" from s.61 (3) of the Patents Act 1977 and the introduction of US style re-examination. The idea of removing the requirement of consent for the Comptroller to try patent infringement cases was quietly dropped after a howl of protest from vested interests in London but the "re-examination" proposal survived. At a meeting before Ron Marchant, Sir Robin Jacob, Fiona Clarke and other IP practitioners (including me) in August 2003, patent agent Richard Gallafent made the case for re-examination and Peter and Sean made the case for examiners' opinions. After we heard their presentations we debated the rival proposals. Sir Robin doused Richard Gallafent's presentation with gallons of cold water damning re-examination as nothing more than revocation by another name but he conceded that examiners' opinions "might just work". And so they were introduced into the Bill and eventually became law.
"74 A Opinions as to validity or infringement
(1) The proprietor of a patent or any other person may request the comptroller to issue an opinion—
(a) as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b) as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied.
(2) Subsection (1) above applies even if the patent has expired or has been surrendered.
(3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
(a) in such circumstances as may be prescribed, or
(b) if for any reason he considers it inappropriate in all the circumstances to do so.
(4) An opinion under this section shall not be binding for any purposes.
(5) An opinion under this section shall be prepared by an examiner.
(6) In relation to a decision of the comptroller whether to issue an opinion under this section—
(a) for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
(b) no appeal shall lie at the instance of any other person."
S.74B provides for a review of an opinion issued under s.74A:
"74B Reviews of opinions under section 74A
(1) Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
(2) The rules may, in particular—
(a) prescribe the circumstances in which, and the period within which, an application may be made;
(b) provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(c) make provision under which, in prescribed circumstances, proceedings on a review are to be treated for prescribed purposes as if they were proceedings under section 61(1)(c) or (e), 71(1) or 72(1)(a) above;
(d) provide for there to be a right of appeal against a decision made on a review only in prescribed cases.”
The idea was dreamt up by Sean Dennehey and Peter Hayward during consultations on the proposed Patents bill in the Patent Office (as the IPO was then called) in 2003. Early proposals for the bill had suggested the removal of the words "by agreement with each other" from s.61 (3) of the Patents Act 1977 and the introduction of US style re-examination. The idea of removing the requirement of consent for the Comptroller to try patent infringement cases was quietly dropped after a howl of protest from vested interests in London but the "re-examination" proposal survived. At a meeting before Ron Marchant, Sir Robin Jacob, Fiona Clarke and other IP practitioners (including me) in August 2003, patent agent Richard Gallafent made the case for re-examination and Peter and Sean made the case for examiners' opinions. After we heard their presentations we debated the rival proposals. Sir Robin doused Richard Gallafent's presentation with gallons of cold water damning re-examination as nothing more than revocation by another name but he conceded that examiners' opinions "might just work". And so they were introduced into the Bill and eventually became law.
After the 2004 Act was passed I gave a lot of publicity to examiners' opinions chairing a meeting at BPP Law School in Leeds which was attended by our MEP Diana Wallis and Michael Harrison who was then head honcho at the Chartered Institute of Patent Agents (see "IP Centre of Excellence: Patent Office Opinions" 26 Nov 2005) and I blogged about the first two cases one of which came from Leeds
"Patents: Opinions on Validity and Infringement" 14 Dec 2005).
One of the arguments that won the debate in August 2003 was that judges and hearing officers would award indemnity or off the scale costs against litigants who brought or continued proceedings after an adverse-opinion. I tested that in Wragg v Donnelly BL O/280/10 when I asked Mr Elbro for off-the scale costs on the grounds that the claimant had already had two opinions go against him. The hearing
officer refused my request at paragraph [57]:
"The purpose of the opinions service is to provide a way, short of full litigation, for parties to get an impartial view of the dispute between them. In many cases, this will be sufficient for the parties to be able to come to a resolution. But in those cases where it is not possible, a party should not be punished for wishing to have the matter fully explored in a way which is simply not possible under the opinions service, with its procedural restrictions such as lack of cross-examination."
The IPO is now reviewing the opinions service with a view to extending it (see Consultation on the Patent Opinion Service, IPO 12 June 2012). The proposals are as follows:
officer refused my request at paragraph [57]:
"The purpose of the opinions service is to provide a way, short of full litigation, for parties to get an impartial view of the dispute between them. In many cases, this will be sufficient for the parties to be able to come to a resolution. But in those cases where it is not possible, a party should not be punished for wishing to have the matter fully explored in a way which is simply not possible under the opinions service, with its procedural restrictions such as lack of cross-examination."
The IPO is now reviewing the opinions service with a view to extending it (see Consultation on the Patent Opinion Service, IPO 12 June 2012). The proposals are as follows:
- "First, we propose to expand the questions relating to validity that can be the subject of an opinion to align them more closely with the grounds upon which a person can request revocation of a patent.
- Second, we propose to expand the service to offer opinions as to whether a Supplementary Protection Certificate (“SPC”) is valid or is infringed.
- Third, we propose to give the IPO the power to initiate revocation action against a patent that an opinion concludes is invalid.
- Fourth we propose to implement the above proposals by amendment to the primary legislation to provide the IPO with a more general power to issue an opinion on the basis of questions set out in secondary legislation."
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