Opinions with Teeth

Avi Freeman | June 2016

Introduction

In October 2014 the UK Intellectual Property Act (the 2014 Act) came into force.  Its role, as stated by the UK Intellectual Property Office (“UKIPO”) itself was to “modernise IP law to help UK businesses better protect their IP rights”.   Amongst its provisions were changes to designs legislation, details of establishment of the Unified Patent Court and an expansion of the UKIPO Opinion service.  This article will focus only on the last of these.

UKIPO opinions can be a useful tool on the commercial landscape as they provide parties the opportunity at relatively low cost to obtain an opinion from the UKIPO as to the validity (or infringement) of a UK patent.  They are low cost, with an official fee of only £200.  They can be useful, say, during commercial licence negotiations as a tool to extract more favorable license terms for a licensee or licensor.

A perceived weakness is that the law states explicitly that the opinions are non-binding.  In other words even if the UKIPO concludes that a patent is, say, not novel, it would previously have done nothing with this.  A party may have tried to use an opinion in subsequent invalidation proceedings but in and of itself there would be no direct legal consequence.  The new law has changed this and patentees and the world at large needs to know this.

The New Law

The 2014 Act introduced the ability for the UKIPO following a finding of lack of novelty or inventive step to start, of its own volition, revocation proceedings.  Previously the right to revoke of its own volition extended only to very limited circumstances such as where there was double patenting between a nationally granted GB patent and the GB part of a granted EP patent.

Thus, the 2014 Act has created the potential for situations where supposedly non-binding opinions may end up being quite a bind on the proprietor.  Put simply, the opinions now have teeth.

The law enables the UKIPO of its own volition to start the process of revoking a patent if an opinion considers it to be invalid.  It is worth noting that this only applies in a limited set of circumstances and if the process is started, the patent holder does have the opportunity to apply for a review of the opinion and/or provide arguments or amend the patent to try to overcome the problem and prevent revocation.   Furthermore, if none of this works and the patent is revoked, the proprietor can appeal the decision to the courts.

It seems to be working….

Fujifilm Corporation

The UKIPO has had the power to revoke in this scenario since October 2014, but, it has taken until February 2016 for them to exercise this discretion for the first time.  Fujifilm Corporation’s GB granted patent deriving from EP1837182, entitled “Ink washing liquid and cleaning method”, has been revoked following the issue of a negative opinion on validity,  and the lack of any response from the Proprietor in respect of that opinion and the Official Letters that were issued subsequently.

In March 2015, Acredian IP – presumably acting on instructions from a third party who wished to remain anonymous – requested an opinion on validity in respect of Fujifilm Corporation’s GB(EP) patent.

The patent Proprietor was given several opportunities to contest the opinion and/or amend the patent and did not make any submissions.  The UK Manual of Patent Practice sets out that if the Proprietor fails to respond to the invitation to contest the opinion and/or amend the patent, they will be offered a hearing.  It seems that if the Proprietor remains unresponsive at this stage then the patent will be revoked.  The patent was revoked.

Jemella Limited

There has been one other case so far in which revocation by the UKIPO following a negative opinion has been threatened and a Decision has issued, namely GB2487996.  The proprietor in this case is Jemella Limited and the patent relates to a Hair Dryer.  The revocation was filed by Dyson Intellectual Property Department.

In that case the Proprietor contested the UKIPO opinion and actively defended their patent throughout the proceedings.  In response to the opinion on invalidity, a response was filed on behalf of the proprietor pointing out supposed errors in the reasoning that led to the conclusion of invalidity.  In view of the Proprietor’s arguments the UKIPO decided there was no need to revoke the patent. 

In a brief and unreasoned decision of 18 December 2015, the UKIPO stated simply that the proprietor contested the earlier view expressed in the opinion (that the patent was lacking in novelty and inventive step) and so as a consequence no order for revocation is made.  It does not provide any indication as to level of consideration given by the UKIPO or its analysis of the observations of the proprietor.  It is therefore hard from this to draw any conclusions as to the UKIPO’s overall willingness or unwillingness to revoke of its own volition. 

Lessons

The lessons are clear.  UKIPO Opinions have teeth and a party that finds itself at the wrong end of an adverse decision in respect of one of its own patents cannot afford to rely on the non-binding nature of the opinions.  If you want the patent to survive you need to respond and defend it. 

It is interesting to note also that although three documents were relied upon by Acredian IP to back up their request that the patent be considered invalid, only one of these was considered by the UKIPO.  This was a document that had not been considered by the European Patent Office (EPO) during examination of the European application (although it had been cited and considered in the corresponding application in the United States).   In contrast, the other two documents were cited during prosecution of the European application, and the UKIPO did not consider these documents, despite assertions by Acredian IP that they were insufficiently considered by the EPO.

It seems the UKIPO is likely to be reluctant to reconsider documents which have already been considered by the Examiner during the application procedure - particularly if these were considered previously with reference to novelty and/or inventive step.

In terms of practical lessons to be learned from this case, for patent Proprietors it seems that contesting a negative opinion is crucial to avoiding revocation.  If you have missed all opportunities to contest the UKIPO opinion then it is possible to Appeal to the Patents Court in respect of the Decision to revoke the patent, but the deadline for doing so is short – 28 days from the date of the decision – and it would be expensive.

On the flip side, requesting an opinion on validity could offer an effective route to knocking out a GB patent, which is likely to be considerably cheaper than revocation proceedings and could be pursued anonymously.  The chances of success are likely to be improved if prior art documents can be found which were not considered by the EPO. 

Conclusions

A clear indication from the various cases is that a request for a UKIPO opinion based on good prior art is a strong tool against a weak patent.  The strength, in part, comes from the ability to have the case heard in a quick and low-cost forum with the potential for revocation of the patent to ensue.

The cost of patent litigation in the UK has always been perceived as a bar to making use of the patents courts.  Litigators in the UK quite rightly point out that although the cost might be high, the quality of decisions is too.  The revitalised IPEC is going strong and presents a useful option in appropriate cases.  However, the newly strengthened opinions service offers the lowest cost way to knock out a bad patent and companies and technologists in the UK should take note.