Unitary patents and the UKIPO opinion service – one step forwards, one step back?


On 10 June 2014, the UK government published draft legislation (in the form of a Statutory Instrument to be made under the authority of the Intellectual Property Act 2014) to give effect to the UPC Agreement (UPCA) and EU legislation on European Patents with unitary effect (“Unitary patents”).  The proposed changes include ensuring the application of sections 74A and 74B of the UK Patents Act 1977 to Unitary patents.  The result of this will be to allow anyone to apply for and obtain UKIPO opinions in relation to the infringement and/or validity, not only of GB and EP(UK) patents, but also Unitary patents.

The UKIPO opinion service is highly regarded and thought to be of particular benefit to SMEs.  Opinions are prepared by a Hearing Officer, usually within 3 months and at a cost of only £200.  Although non-binding, they provide an independent assessment of the main issues in dispute and therefore tend to be particularly useful to encourage settlement.  Of course, as they are non-binding, it remains open to the parties to litigate should they so wish.  Currently, for an opinion on validity, only novelty and inventive step are considered, but in October the service will be extended (also under the authority of the IP Act 2014) to cover other requirements for validity.

The inclusion of Unitary patents within the scope of the UKIPO opinion service should be considered similarly beneficial to SMEs, in particular when seeking a relatively quick, cheap, but well-informed independent view on patent validity or infringement prior to deciding whether to commence or defend proceedings and, in particular, when considering appropriate terms of settlement.

It will also be interesting to see whether there is any interest in parties obtaining such non-binding opinions (especially as they are available relatively quickly), with a view that they may be persuasive in either infringement or validity proceedings in the UPC (irrespective of division).  This is a tactic equivalent to that which has (imaginatively) been used in some EPO oppositions.  Of course there is always a danger in such an approach of getting the “wrong” answer (from the Applicant’s perspective) from the UKIPO.

Perhaps more controversially, a recent amendment to section 73 of the Patents Act 1977 (which is expected to come into force in October this year and also arises from the IP Act 2014) allows the Comptroller to revoke a patent where he has issued an opinion that it lacks novelty or inventive step (provided that the period in which the patentee can request a review of the opinion has expired or the decision on the review has been made).  Although it is envisaged that this additional power will only be exercised where it is indisputable that the patented invention lacks novelty or is obvious, it certainly seems as though it may give the provision more “bite”, not least because it seemingly allows an incredibly quick and cheap way to knock-out an obviously invalid patent.  Such a course of action will clearly be attractive to parties that lack the financial means to pursue High Court or IPEC litigation, but seek freedom to operate in an area covered by a weak patent.

Of course, this additional power will necessarily apply only to GB and EP(UK) Patents.  The new draft legislation does not seek to extend its scope to Unitary patents, since to do so would have been presumptuous and controversial given the pan-European effect of any such revocation and the lack of control of national courts over the Unitary patents register.  The only powers that the Comptroller has been given under the draft Statutory Instrument in respect of Unitary patents is to revoke patents of his own initiative in cases of double patenting.  In such cases presumably the Comptroller would first revoke the GB, and so would have no need to interfere with the Unitary patent register.

In summary, therefore, the extension of the opinion service to include Unitary patents can be seen as a positive step for SMEs, enabling them to obtain cheap authoritative and potentially influential independent opinions.  However, one result of the Unitary patent system is that the clearly identified objective of the recent changes to the UK legislation is not achieved.  This objective is to increase accessibility of patent dispute resolution and removing the barriers arising from invalid patents which prevent others from undertaking activities to which they are legitimately entitled, articulated as being particularly relevant to SMEs during the consultation launched in June 2012 by Baroness Wilcox.  The inability of the Comptroller to exercise a power to revoke a Unitary patent following an opinion will put the new right in a different category from GB and EP(UK) patents.  This power to revoke of his own initiative will simply not apply to Unitary patents, albeit for very good reasons.

The draft legislation is open for consultation for 12 weeks until 2 September.

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