Expansion of the Patents Opinion Service

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.

If you have any questions about this change in law or how it might affect you and your business, please contact either Alex Craig on 0191 211 7911 or Gill Hunter on 0191 211 7944.