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New ‘Patent Power’ Given to UK Intellectual Property Office

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The UK Intellectual Property Office (UKIPO) Patent Opinions Service has been in place since 2005 to offer opinions on the validity of patents, and whether any patent infringes UK and EP(UK) patents. Opinions cost £200 and are non-binding in nature, but can assist in dispute resolution prior to litigation. But where litigation is unavoidable, opinions from the Patent Opinions Service can still be useful in helping parties in their case.

However, as of 1 October 2014, the UKIPO has had the power to revoke a patent of its own initiative, if the Patent Opinions Service finds it is not new and/or inventive, where previously it would be up to a third party to begin revocation proceedings, which can be costly and time consuming.

The UKIPO will only use this new power in clear-cut cases for lack of novelty or inventive step (as per Section 73(1A) of the UK Patents Act, as amended), and additional safeguards have been implemented for the patent holder.

Firstly, prior to the commencement of any revocation action, the patent holder can apply for a review of the opinion. Secondly, arguments can be made by a patent-holder, or an amendment can be made to the patent to attempt to overcome the problem found in the opinion, which would stop the revocation. And thirdly, if the patent is revoked, the patent holder can appeal to the courts and recover their costs if successful. This is a benefit for third parties, as they will not be liable for the patent holder's cost should the opinion find in favour of the patent holder, whereas prior to October 1 they would have been liable had they began revocation proceedings themselves.

Due to the relatively inexpensive cost of an opinion from the UKIPO Patent Opinions Service, the new power may be a quick and cost-effective way for a party who wishes to invalidate a patent. Although the new power is not good news for patent holders as it seems UK patents are at greater risk than they were prior to the changes, knowing that the power will only be used where the patent is considered to be clearly invalid by the UKIPO should give comfort.

That being said, it remains to be seen exactly how clear-cut it has to be before the UKIPO will take such action. Often the question of novelty is more clear cut that the inventive cut, which may make it difficult for the UKIPO to revoke a patent following an opinion which concluded the patent had lack of inventive step.

Finally, another new power of the UKIPO Patent Opinions Service is that they can now issue opinions on the infringement or validity of a Supplementary Protection Certificate (SPC), which they could not prior to October 1.

Contact us - Patent Intellectual Property Disputes in UK

Although intellectual property litigation is conducted in specialist courts across the UK and Europe, enforcing an intellectual property right or defending an action for IP infringement doesn't need to be prohibitively expensive. To see how we can help you, click here to contact us today or call 0800 160 1298.

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