PA 74A and 74B Opinions by Patent Office; PR 92-100

Question 1

What does S74A concern

Answer 1

Opinions as to validity or infringement

Question 2

What can a proprietor of a patent or anyone else request an opinion on

Answer 2

S74A(1), R93(6)
a) whether a particular act is or would be an infringement of the patent
b) whether or to what extent the patent is not novelty or inventive
c) whether the patent is an enabling disclosure
d) whether the patent contains added matter
e) whether a claim in a granted patent has be broadened
f) g) whether a SPC is invalid

Question 3

Does a patent have to be in force for an opinion on validity or infringement to be requested

Answer 3

S74A(2)
Opinions can be requested for in force patents, or expired or surrendered patents

Question 4

When will an opinion on validity/infringement not be given

Answer 4

S74A(3)
An opinion WON’T be given if
a) circumstances are excluded by the rules
b) the Comptroller thinks the request inappropriate

Question 5

What would make a request for an opinion on validity/infringement inappropriate

Answer 5

If it is frivolous or vexatious, or dealt with in other proceedings

Question 6

Are opinions by the Comptroller on validity/infringement binding or non-binding

Answer 6

S74A(4)
Opinions are completely NON-BINDING

seen as a valuable expert opinion based on evidence avaliable and no more than that by the court

Question 7

Who is entitled to a hearing or an appeal on an opinion on validity/infringement

Answer 7

S74A(6)
When deciding to issue an opinion,
a) only the person requesting is entitled to a hearing, if the opinion goes against the requester’s interests, and
b) only if the person requesting it can appeal the opinion

Question 8

How does a person request an opinion on validity or infringement at the UKIPO, and what must they include when making the request

Answer 8

R93
(1) A request must be made on FORM 17 (and FEE) and must be accompanied by a copy and a statement setting out fully—

(a) the question upon which an opinion is sought;
(b) the requester’s submissions on that question; and
(c) any matters of fact which are requested to be taken into account.

(2) The statement must be accompanied by—

(a) the name and address of any persons, of whom the requester is aware, having an interest in that question; and
(b) particulars of any relevant proceedings of which the requester is aware which relate to the patent in suit and which may be relevant to that question.

(4) The statement shall be accompanied by a copy of any evidence or other document (except a document which has been published by the comptroller or is kept at the Patent Office) which is referred to in the statement.

Question 9

When will the Comptroller not give an opinion on validity or infringement when requested

Answer 9

R94
(1) if
(a) the request is frivolous or vexatious OR
(b) the question appears to have been sufficiently considered in any relevant proceedings

Question 10

Can you withdraw a request for an opinion on validity or infringement

Answer 10

Yes - and the Comptroller will not give an opinion when notice is given in writing R94(2)

Question 11

What happens if the Comptroller refuses a request for an opinion on validity or infringement

Answer 11

R94(3)
He shall notify the requester accordingly

Question 12

Which parties must the Comptroller inform when an opinion on validity or infringement is requested

Answer 12

R95
(1) (except where one of the following is the requester)
a) the patent holder
b) any holder of a licence or sub-license which has been registered under R47
c) any person who has made a request under R54 (requests to be notified of an event) or R93 (request for an opinion on validity or infringement)
d) any person specified in the application as having an interest in the question

(2) any other person who the Comptroller thinks is likely to have an interest in the question

Question 13

What does the Comptroller do once a request for an opinion on validity or infringement is made

Answer 13

R95
(3) send a copy of the form and statement filed to each party notified, along with any other document filed wich the Comptroller sees fit
(4) advertise a request in any manner he sees fit (i.e note it in the register)

Question 14

What happens when a request for an opinion on validity or infringement is withdrawn or refused

Answer 14

R95
(5) if before notifications have been made, the patentee is still told

Question 15

Can anyone make observations for a response to a request for an opinion on validity or infringement

Answer 15

R96 (1)-(3) (7)
ANYONE may file observations on any issue raised by the request WITHIN FOUR WEEKS of advertisement on the register

Question 16

Can anyone reply to observations made regarding a request for an opinion on validity or infringement

Answer 16

R96 (4)(5)
The recipients of the observations may make relevant observations WITHIN TWO WEEKS after the four week advertisement period (i.e. the requester or the patentee)

Question 17

How is an opinion on validity or infringement made

Answer 17

R97(1)
The Comptroller refers the request to an examiner for the preparation of an opinion

Question 18

Who is informed of the result of an opinion on validity or infringement

Answer 18

R97(2)
The issues opinion is sent to
a) the requester
b) the patentee
c) any other person who filed observations under R96(1)

Question 19

What does S74B concern

Answer 19

reviews of opinions under R74A

Question 20

Who can request a review of an opinion on validity or infringement

Answer 20

S74B(1)
Patentees or exclusive licensees

Question 21

What is the time limit for requesting a review of an opinion on validity or infringement

Answer 21

S74B(2) R98(1)
THREE MONTHS from the date of the issuance of the opinion

Question 22

When can a request for a review of an opinion on validity or infringement not be brought

Answer 22

S74B(2)b) R98(2)
they may not be brought or continued where other proceedings have been decided in other relevant proceedings

Question 23

How should a review of an opinion on validity or infringement be brought

Answer 23

R98(3)(4)
using FORM 2 (+ FEE), with a statement setting out grounds, and containing a statement on any other relevant proceedings

Question 24

On what grounds can a petition for a review of an opinion on validity or infringement be brought

Answer 24

R98(5)
ONLY
a) that the opinion wrongly concluded that the patent was invalid (wholly or partially)
b) that, by reason of its interpretation of the specification of the patent in suit, the opinion wrongly concluded that a particular act did not or would not constitute an infringement of the patent.

Question 25

When can you appeal a review of an opinion on validity or infringement be brought

Answer 25

S74B(2)d) R100(3)
Only for those parts of an opinion not set aside by the review

Question 26

What is the time limit to file a support or counter-statement for a petition for review of an opinion -

Answer 26

R99(3)
Any person may do so (filing in duplicate) and will become a party to proceedings
(4)
deadline is later of
a) FOUR WEEKS after the application is advertised
b) TWO MONTHS from the date on which the opinion on validity or infringement is issued.

Question 27

What are the possible outcomes for reviews of opinions on validity or infringment

Answer 27

R100 (1)
either
a) the opinion is set aside in whole or in part OR
b) not set aside the opinion
i.e. no new opinion is issued

Question 28

Does a decision of an outcome of a review of an opinion on validity or infringement prevent any further actions

Answer 28

R100(2)
NO - any party has the right to still raise issues on validity or infringement (i.e. with the court)