A non-binding Opinion on the infringement or validity of a granted UK patent or a European patent designating the UK is obtainable from the UK Intellectual Property Office.
The Opinion service is a cost-effective way of establishing whether a patent is novel and inventive in light of evidence that was not considered by the Examiner during prosecution. Individuals or companies operating in a particular field of technology and wishing to retain their freedom to operate may strategically obtain an Opinion to reduce the risk of a competitor asserting their patent rights against them.
The Opinion service is particularly useful for entrepreneurs wishing to launch a new product but who are concerned about infringing a particular patent. On the one hand, an Opinion can give peace of mind that there is no infringement. On the other hand, an Opinion can signal to the entrepreneur that to proceed with the launch might lead to costly infringement proceedings. Although the Opinion is non-binding, the Examiner’s conclusion may carry some weight during negotiations with a competitor and could lead to a settlement. Of course, an Opinion can help the requester decide whether or not to proceed with full legal proceedings.
Anyone can request an Opinion from UKIPO and the request can even relate to patents that have expired or been surrendered. As a guideline, the Opinion can take up to 3 months to issue.
It should be noted that a copy of the application for an Opinion is forwarded to the patentee and any registered licensees and will expose the identity of the requester. However, requests may be filed on behalf of an individual or company by a patent attorney firm to prevent a delicate situation from occurring. All documents submitted as part of the request are treated by UKIPO as non-confidential and UKIPO will publicly advertise the request on the UKIPO website. Any person may then file observations on any issues raised by the request within 4 weeks of the date of advertisement. These observations are then sent to the all interested parties, who may file observations-in-reply within a 2 week period.
Patentees or exclusive licensees may request a review of an Opinion. The deadline for filing a review is 3 months from the date of issue of the Opinion. Again, the request for a review is published on the UKIPO website and anyone can file a statement in support of the application or a counter-statement contesting it. The outcome of the review process is that the Opinion is either maintained or set aside; a new Opinion is not issued.
Provisions exist for a right of appeal to the decision made on review, but only in limited circumstances.