The devil makes work for idle hands. Whilst contemplating lunch at my desk, I found myself drawn to the UK Intellectual Property Office (UKIPO) opinion service website to see whether anything new or interesting had been fought over recently.
To my surprise, I see that during the first half of 2023, only five requests for opinions had been requested, one of which was withdrawn, and the other four had no decision issued at the time of writing. This is compared with 28 opinions issued during 2022. What has happened to my lunchtime light relief?
What opinions are available?
I’m getting ahead of myself – first, to clarify what I’m writing about. The UKIPO offers a service which provides opinions on either the validity of granted UK or European patents validated in the UK, or on infringement thereof based on a purported activity.
The requesting party submits patents form 17, pays their fee of £200GBP, and sets out the relevant evidence to support their position. This must be forwarded to pertinent parties, usually the proprietor, licensee, or potential infringer. The other party is then able to make observations in response, and a UKIPO hearing officer issues.
In simple terms, this is a form of alternative dispute resolution. It’s not dissimilar to mediation, in the sense that the opinion is non-binding on the parties. However, the one card the UKIPO hold is that, as the issuing body for UK patents, they do have the power to revoke a clearly invalid patent. Equally, an opinion on possible infringement may encourage the parties to settle rather than litigate any dispute.
Advantageously, the cost of a UKIPO opinion is negligible compared with the cost of an IPEC or High Court action, and therefore this seems like a no-brainer; why wouldn’t you want to make use of this route when you were in a patent dispute?
What are the drawbacks?
There are several drawbacks with the UKIPO opinion service. First and foremost, it’s non-binding. Even if you obtain a decision in your favour, there’s no guarantee that your opponent will settle in your favour. Litigation remains an option, and indeed may even seem a favourable option to an opponent who feels hard-done-by.
Secondly, the procedure is public. Many parties may prefer not to air any ‘dirty laundry’ in this manner, when discussions may be had without prejudice in writing. For instance, a proprietor may prefer not to open themselves to a validity attack, and a potential infringer may prefer not to have the accusation of infringement made on the public record.
That said, these are the same problems that have always been present in the opinion service. This doesn’t explain why there has been a significant drop off in requests this year specifically.
I went delving through the data to see if I could extract any useful trends. The UKIPO have, hosted on their own website, opinion decisions dating back to 2014, and I’ve investigated the results.
Between 2014 and 2022, there have been 215 opinions issued by the UKIPO, making an average of around 24 per year. This breaks down as being 138 validity opinions issued, and 77 infringement opinions issued.
This stands to reason. Given the UKIPO has the power to revoke an invalid patent, there is a tangible remedy for a successful opponent of a patent. Of the 138 validity opinions, 131 were opponent-instigated.
There have been fewer infringement requests, and overall, the spread of instigation is much less noticeable: 39 opponent-initiated; 40 proprietor-initiated.
What is interesting is how the numbers break down from there. There is a slight trend towards the proprietor obtaining the negative decision; 97 of the cases have been won by the proprietor, compared with 118 by the opponent.
It is also noticeable that there is a marginal trend towards the instigating party winning, which is more pronounced for infringement opinions.
What can we learn?
What’s interesting to note is that there does not seem to be any particular lean towards maintaining a granted patent. You might expect that a hearing officer might naturally be biased towards backing the Examiner who allowed the patent in the first place, but that isn’t borne out in the statistics.
What is clear is that you there’s no guarantee you will get the result you are seeking. The instigator is almost as likely to lose as win. That presents risks to people looking to make use of the opinion service, and may therefore explain why requests for opinions are so low this year. Yes, it’s cheap to apply, but it’s also cheap to defend; litigants may gain a greater pressure on a defendant by initiating full court proceedings. The public nature of a decision against you also plays into this.
This seems to point to one conclusion – you should only use the opinion service, if you have the deck stacked in your favour. So, what circumstances should you look to use the service?
As the proprietor
I see very little value in the proprietor seeking a validity opinion. The risk lies completely with them; a positive decision changes little, whereas a negative position loses all advantage held by having a granted patent. The only circumstances in which I can see value is where perhaps a licensee is attempting to breach terms of an otherwise cast-iron patent, and the proprietor wants a cheap way of demonstrating validity. This is still fraught with risk, however.
Should the proprietor seek an infringement position? There seems more value in theory here, since it may force an infringing party to settle a dispute cheaply. However, the statistics show that the opponent has a reasonable chance of defending in these circumstances, so the proprietor takes a big gamble that the hearing officer might adjudicate the ‘wrong’ way, thereby publicly undermining the proprietor’s position. I would only really recommend taking this route if: a) the evidence of infringement is clear and unambiguous; or b) the opinion represents a last chance to try and bring an infringer to the table, where litigation is just not feasible. In option b), the proprietor is basically gambling, and few commercially sound decisions are made in that context.
As the opponent
The value of the opinion service seems mostly to lie with the opponent. There is a cheap validity attack available, which may remove a troublesome patent from play. If the patent is a European patent, that may give the proprietor some serious second thoughts before attempting to enforce in mainland Europe as well.
Given that the proprietor still needs to demonstrate infringement on the opponent’s part, a validity attack may therefore represent a ‘free throw’ for the opponent. The opponent probably has the strongest hand here if they have an arguable invalidity position, but a relatively strong non-infringement position. Yes, the statistics show an almost 50/50 split between proprietor win and opponent win in validity opinions, but those odds may be good enough for the opponent to try and eliminate a potential threat. As ever, finding the most destructive prior art possible in advance of submitting a request for an opinion is crucial to the likelihood of victory in this scenario.
Even with that in mind, I would probably only be advising the opponent validity attack strategy where the opponent was already working from a position of strength. In the absence of a non-infringement defence, it is entirely possible that an opponent could dig themselves a bigger hole, and become easily entrapped by the proprietor who may have a clear declaration of validity.
To my mind, the most viable use case for the opinion service comes from the opponent-instigated infringement opinion. I wouldn’t recommend this where there is a weak or arguable infringement defence, since the opponent becomes greatly disadvantaged if they lose. What does make sense is where an aggressive proprietor is threatening litigation on very spurious grounds. Yes, the UK has provisions to instigate proceedings for unjustified threats of legal action, but in the proprietor is attempting to strongarm the opponent into accepting an unjust settlement, then the opinion service may actually offer a neat mechanism of defence. In these circumstances, the public nature of the opinion service actually works in the opponent’s favour, as, providing the case is won, it should put an end to the proprietor’s bullying tactics.
To summarise, the opinion service is not completely toothless. There are circumstances in which you may have a comparatively cheap route to obtaining a favourable decision. However, the weight of evidence remains crucial; if you do not have this you are effectively playing the lottery with the UKIPO.