On 1 October 2014, the date the Intellectual Property Act 2014 came into force, the UK Intellectual Property Office’s (IPO) patents opinion service was expanded to cover a wider range of areas for which an opinion can be sought. An outline of the patent opinion service before and after 1 October 2014 is given below.
Prior to 1 October
Opinions could only be sought on whether a patent was infringed or whether a patent was invalid on novelty or inventive step grounds.
If the opinion issued suggested that a patent was invalid, it was up to the third party to start revocation proceedings if they chose to do so.
Post 1 October
The expansion of the opinions service means that an opinion can now be sought on:
- whether an act does or would infringe a patent;
- whether the invention can be industrially applied;
- whether the invention is excluded from patent protection on the grounds the subject matter is:
- not regarded as being an invention; or
- the invention is contrary to public policy or morality;
- whether a patent is invalid on novelty or inventive step grounds;
- whether the patent specification contains any added matter;
- whether the patent specification is so unclear or incomplete that a skilled person would be unable to reproduce the invention;
- whether a “Supplementary Protection Certificate” is valid; and
- whether an act does or would infringe a Supplementary Protection Certificate.
Whilst opinions remain non-binding, the new law now allows for the IPO to start revocation proceedings itself when the opinion suggests that a patent is invalid.