Intellectual Property Act 2014: The New Law on Opinions











As I indicated in How the Intellectual Property Act 2014 changes British Patent Law JD Supra 21 June 2014 s.16 of the Intellectual Property Act 2014 amends s.74A and s.74B of the Patents Act 1977 and inserts three new subsections into s.73. The upshot as explained in paragraph 4 and paragraph 5 of the IPO's guide Expansion of the Patent Opinions Service: business guidance is that the range of questions upon which an examiner's opinion can be obtained has been expanded and the Comptroller now has power to revoke patents which are found to be invalid.

Where to find the Law
The Patents Act 1977 has now been amended by art 3 and the Schedule to The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 (SI 2014 No 2330) (see Jane Lambert The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 6 Sept 2014) and corresponding changes to the Patent Rules 2007 have been made by rule 9 and rule 10 of The Patents (Amendment) (No. 2) Rules 2014 (SI 2014 No 2401). The most convenient place to find the amended legislation are the unofficial consolidations of the Patents Act 1977 and the Patents Rules 2007. There is also an updated Opinions manual which incorporates all those legislative changes.

Questions upon which an Opinion can be sought
The previous legislation provided for opinions on "whether a particular act constitutes, or (if done) would constitute, an infringement of the patent" and "whether, or to what extent, the invention in question is not patentable" because of anticipation or obviousness. The new s.74A (1) provides:
"The proprietor of a patent or any other person may request the comptroller to issue an opinion on a prescribed matter in relation to the patent."
Rule 93 (5) of the Patent Rules 2007 as amended provides:
"The prescribed matters for the purposes of section 74A(1) are as follows—
(a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention;
(c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a new application, in the earlier application as filed;
(e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;
(f) whether a supplementary protection certificate is invalid under Article 15 of the Medicinal Products Regulation; and
(g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation."
The other provisions of s.74A remain unchanged and the only change to s.74B in the repeal of paragraph (c) of subsection (2).

Power to revoke Invalid Patents
The new subsections that have been inserted into s.73 are as follows:
"(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.
(1B) The power under subsection (1A) may not be exercised before—
(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or
(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).
(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76."
Practice and Procedure
The practice and procedure for obtaining an opinion is largely unchanged and is set out in full in the Opinions Manual. 

Designs
S.11 of the 2014 Act inserted a new s.28A into the Registered Designs Act 1949 and a new s.249A into the Copyright Designs and Patents Act 1988 which provides for examiners' opinion on registered designs and unregistered design right issues.  I have discussed those amendments in How the Intellectual Property Act 2014 changes British Registered Design Law 19 June 2014 and How the Intellectual Property Act 2014 will change British Unregistered Design Right Law 11 June 2014 JD Supra. Although the 1949 and 1988 Acts have been amended the amendments are not yet in force. According to paragraph 5 (4) of the IPO's Business guidance on changes to the law on designs  the intention is to launch an opinion service for designs in 2015.

Importance of the Opinion Service
One of the reasons why this country appears to punch below its weight in the number of European patent applications is the cost of enforcement is perceived as prohibitive. That is no longer true with the capping of costs in the Intellectual Property Enterprise Court but the perception remains.  The Opinions Service may be one way to change that perception.

Further Information
Should you wish to discuss this new legislation or patents law in general call me on 020 7404 5252 during normal office hours or message me through my contact form.

Further Reading

Intellectual Property Office
20 June 2014
Jane Lambert
14 June 2012
Jane Lambert
16 Jan 2006
Jane Lambert
14 Dec 2005
Jane Lambert
9 Dec 2005

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