Litigation Manual (online version)

Chapter 29: Section 74A Requests for opinions

Sections (29.01 to 29.42) last updated: March 2016

Introduction

29.01

This section is concerned with requests for opinions made under section 74A of the Patents Act 1977. A request can be made for a non binding opinion relating to infringement or validity of a granted patent or a Supplementary Protection Certificate under section 74A(1). The request can be made by any person and the detailed provisions are set out in The Patents Rules 2007 Part 8, section 74A of the Manual of Patent Practice and the Opinions Service Manual. An opinion is usually issued no more than 3 months after a request is made.

Making a request

29.02

For requests for an opinion under section 74A the requester should file Patents Form 17 together with a £200 fee. If the opinion is requested in respect of more than one patent or Supplementary Protection Certificate (SPC), then a separate Patents Form 17 will be required for each patent/SPC number. It is possible to request an opinion where a patent has expired or has been surrendered.

Delivery of requests

29.03

Requests should be delivered in paper format to the office accompanied by the relevant fee.

29.04

Where a request is filed by email, no action should be taken until the original documentation with fee receipt is received.

Initial actions

A3 duties - initial actions

29.05

On receipt of a request for an opinion the A3 should:

  • arrange for the Form 17 and supporting documentation to be forwarded to the electronic dossier. If the case is not electronic the A3 should, in the case of a GB patent, request the file from NMP and refer the case to Index and Scanning using the “Request for Index & Scanning” sheet. If the request for opinion relates to an EP case where an existing EP paper case already exists, this is requested from NMP and scanned onto the dossier along with the request to Index and Scanning section. If no paper file exists, a BDOC can be imported from espacenet using:

    http://worldwide.espacenet.com/singleLineSearch?locale=en_EP

    The document is then imported onto the dossier along with the request for opinion.

    If the request relates to a Supplementary Protection Certificate, the SPC file will be retrieved from the SPC section and the front cover of the file will be marked to show that an opinion request has been filed. The dossier for the patent upon which the SPC is based will be used for the purposes of the opinion request. Patents Form 17 will be sent to Index and Scanning section along with supporting documentation for scanning to the relevant EP or GB dossier

A3 duties - Formalities checks

29.06

Upon receipt the A3 carries out formalities checks to ensure that the relevant patent rule has been complied with (rule 93).

The request for an opinion is checked by the A3 to ensure:

  • the correct fee (currently £200) has been received
  • the patent or SPC number quoted on Form 17 corresponds with that referred to in supporting documents. If the request relates to an EP patent (or an EP patent forms the basis of an SPC request), Optics is to be checked to ensure that the EP patent designates GB
  • the Supplementary Protection Certificate has not expired (SPC’s are granted for up to 5 years duration, the SPC file should therefore be checked to ensure the SPC has not expired)
  • requester contact details are clearly stated
  • form 17 proprietor details quoted are as shown on OPTICS register
  • supporting documents should be checked and clearly specify the grounds for the request
  • current address for service is provided in the UK, an EEA state or the Channel Islands
  • documents referred to in the supporting statement have been submitted
  • form 17 has been signed
  • all documents have been filed in duplicate (including Patents Form 17), one set to be retained in Litigation section
  • identify whether any documents filed are copyright protected
  • for Infringement requests, details of potential infringers have been included eg. contact details etc
  • check pre-grant part of the dossier/SPC file for any caveat that may be filed and require action. If caveat filed, notify the caveat section/SPC section

Formalities not complied with

Fee not paid

29.07

If the fee (currently £200) has not been paid the A3 will contact Finance to check whether the fee has still not been received and then contact the requester by telephone or letter to advise that the request cannot proceed until payment is made and receipt confirmed. An appropriate minute should be made on PDAX.

Patents form 17 not signed

29.08

Where the Patents Form 17 is not signed but an accompanying letter has been signed, this can be accepted. However, if there is no accompanying letter the Form should be returned for signature or a signed copy requested. An appropriate minute should be imported into dossier.

Patents form 17 details incomplete/incorrect

29.09

Should any details on the Form 17 be incorrect, the A3 should telephone the requester and explain the nature of the query. Form details can be corrected with the consent of the requester using the Enhance function in PDAX.

Copies of documents

29.10

Copies of any documents referred to in the request, but not supplied, should be obtained. If any of the documents referred to are not available in the Office, the applicant should be asked to supply copies in accordance with rule 93(4) of the Patent Rules 2007, before the request can proceed.

29.11

Where the requester has referred to and supplied documents with the request which appear to be potentially copyright protected, the documents should be assessed to ascertain their status. Should they be deemed to be copyright protected, they should be marked as NOPI on the dossier. It should be noted that generally websites requiring subscription for access will be considered copyright protected. Copies of the copyrighted documents provided by the requester are sent to the interested parties, however they will not appear on IPSUM. The copyright proforma sheet will be prepared highlighting the relevant links or documents which will be available on IPSUM.

Referring the request

29.12

The A3 refers the request for an opinion to the Senior Opinions examiner/SPC examiner and should also advise of any previous opinion issued in respect of the patent/SPC in question.

The Senior Opinions examiner/SPC examiner will advise whether the opinion request is in order to proceed and will identify the opinions examiner and mentor allocated to deal with the request.

Formalities complied with - request proceeding

Additional actions - A3 duties

29.13

Once all formalities have been complied with, the A3 will undertake the following additional actions:

  • ensure that any physical exhibit(s) filed with the opinion request are entered onto the PDAX dossier, annotating the Opinion Request as “A physical exhibit held in 1R31”. The exhibit(s) should also be recorded on Litigation section using the Opinion exhibits log book
  • access the Opinions database to request a new opinion record. The database will automatically generate the new case number and the A3 will enter the examiner’s and Mentor’s names
  • enter the relevant details of each party by selecting the relevant role from the drop down menu. Parties to include all licensees listed on the Patent register and any caveatees (as detailed on the front cover of the dossier)
  • print out the Litigation Opinion card from the Opinions database
  • collate the initial opinions advert and save in Opinions Administration on SharePoint. The advert should be sent to Webmaster for uploading to the Opinions webpage
  • access OPTICS and enter opinion request using REG ENT

For a request relating to a patent:

Request for an opinion under section 74A filed on…(date)….

For a request relating to a SPC:

Request for an opinion under section 74A in respect of SPC/XXXX/XXX filed on…(date)….

  • access the dossier and ensure all relevant redaction has been applied in order to appear on IPSUM. It should be noted that documents will appear on IPSUM provided:

    Correct document codes are used:
    OPIN-REQ - Opinion Request
    OPIN-REQ-ATT - Opinion Attachment
    OLFI annotation has been applied and documents are set as ‘public’
    Black and white copies of any colour documents have been scanned to dossier and the black and white copy annotated OLFI and redacted for IPSUM purposes
  • update the Current Situation on Live Opinions summary table

Observations

Inviting observations

29.14

A copy of the request for an opinion is sent to various interested parties who are then invited to file observations within the set time period (4 weeks) should they wish. The opinion request is sent to the following parties:

  • the proprietor of the patent/SPC (if they are not the requester)
  • any holder of a licence or sub licence (refer to OPTICS)
  • any person who has requested a caveat relating to an opinion request (refer to front cover of dossier for caveatee details)
  • any parties identified by the requester who the requester is aware may have an interest
  • any person who appears to be likely to have an interest in the question upon which the opinion is sought (refer to request documentation and check OPTICS)

It should be noted that Exclusive licensees and non-exclusive licensees should be treated in the same way as patent proprietors. Any exclusive licensee and non-exclusive licensee should be sent copies of any documents sent to the patent proprietor. They will also have the right to file observations in reply. In very rare instances it will be possible to have more than one exclusive licensee on the same patent.

Extra care must be taken where details of more than one licensee will have been entered on the Register. The wording of some letters will need to be altered to show that more than one licensee is involved. Refer to the Senior Opinions examiner for guidance.

29.15

To invite the parties to file observations, the A3 should:

  • access the Opinions database to generate the relevant letters depending upon the status of the parties in accordance with the list of letters shown in Annex 1 - Opinions letters as follows:
  • letter OL1a, b, or c will be issued to the requester
  • letter OL2a, b, or c to the other parties
  • a copy of the Patents Form 17, statement and any attachments to the statement should be sent to anyone invited to file observations. The A3 should ensure that the documentation has been redacted accordingly (account details; personal signatures etc)
  • the A3 will import all letters generated to the PDAX dossier and prepare the dossier for IPSUM
  • where the request relates to an SPC, the A3 will amend the letter headings as appropriate

Referring the case to the opinions examiner

29.16

An Outlook task will be set for the opinions examiner and mentor indicating the date the opinion is due to be issued.

Observations filed

29.17

Observations can be filed electronically via email to opinions@ipo.gov.uk and should be copied to the requester and any exclusive licensee. Upon receipt of observations the A3 will undertake the following actions to acknowledge receipt of observations:

  • where observations are filed electronically, forward the email and attachments to the opinions examiner and transfer the email and attachments to the dossier
  • update the Opinions record card to show observations received
  • update the current Opinions summary table
  • redact and prepare the dossier for IPSUM

29.18

The A3 will acknowledge receipt of observations and invite observations in reply as follows:

  • access the opinions database and locate the record of the party who has filed observations. On this record, change the status of the party to “Observer”
  • using the Opinions database generate the relevant letters depending upon the status of the parties in accordance with the list of letters shown in Annex 1 - Opinions letters
  • letter OL03a, b, or c will be issued to the observer
  • letter OL04a, b, c or d will be issued to invite observations in reply, together with a copy of the OL03a, b or c. The proprietor and requester should both be invited to file observations in reply (if the proprietor is not the requester)
  • the A3 will import all letters generated to the PDAX dossier using suitable annotation and doc code ‘LETTER-LIT’
  • prepare the dossier for IPSUM
  • doc Codes: OPIN-OBS for Opinion Observations and OPIN-OBS-ATT for Observation attachments
  • where the request relates to an SPC, the A3 will amend the letter headings as appropriate

It is essential that where the observer is the proprietor, the A3 accesses the opinions database to identify the record for this party to alter the status back to “Proprietor”. This will ensure correct content of subsequent letters and/or opinion to this party.

No observations filed

29.19

In the event that no observations are filed the A3 will undertake the following actions:

  • email the examiner to advise no observations filed and that he can now proceed to prepare the opinion and transfer mail to PDAX dossier
  • mark the Opinions record card “No observations filed” and date and initial
  • update the current Opinions summary table

29.20

It should be noted that where no observations have been filed, observations in reply are not applicable and the opinion examiner can proceed to prepare the opinion.

Observations in reply

29.21

Any person to whom observations are sent are eligible to file observations strictly in reply. When several interested parties have been identified during proceedings, it is therefore possible to receive more than one set of observations in reply. Observations in reply can be filed electronically via email to opinions@ipo.gov.uk and should be copied to the proprietor, requester and any exclusive licensee. The A3 will undertake a daily check to ensure timely referral of any correspondence upon receipt. As this is the final stage of observations it is essential that when observations in reply are filed they should be sent to the opinions examiner without delay to ensure sufficient time is allowed for the examiner to prepare the opinion.

Observations in reply filed

29.22

Upon receipt of observations in reply the A3 will undertake the following actions:

  • where observations in reply are filed electronically forward the email and attachments and blank opinions template to the opinions examiner and transfer the email and attachments to the dossier
  • update the Opinions record card to show observations in reply received
  • update the current Opinions summary table
  • prepare the dossier to appear on IPSUM Doc Codes: OPIN-OBS-REP for Observations in Reply and OPIOBSRE-ATT for Observations in Reply attachments

29.23

The A3 will acknowledge receipt of observations in reply as follows:

  • letter OL05 will be issued to acknowledge receipt of observations in reply to the sender
  • the A3 will import letter generated to the PDAX dossier using Doc Code LETTER-LIT and prepare the dossier to appear on IPSUM
  • where the request relates to an SPC, the A3 will amend the letter headings as appropriate

Note: Observations in reply are not served to any other party (the party filing the observations in reply is required to copy the proprietor and any exclusive licensee)

Referring observations in reply to the opinions examiner

29.24

An email is sent to the Opinions examiner to let them know that Observations in reply have been filed and that they can proceed to prepare the Opinion.

No observations in reply filed

29.25

At the expiry of the two weeks period for filing observations in reply, the opinion examiner will be looking to issue the opinion within six weeks. It is essential therefore to ensure that where no observations in reply are filed the examiner is notified without delay. The A3 should therefore take the following action:

  • email the opinion examiner to advise that no observations in reply have been filed and transfer the email to the dossier
  • update the Opinions record card to show that no observations in reply have been filed
  • update the current Opinions summary table

The A3 should issue a reminder email to the Opinions examiner 2-3 days prior to the due date.

Opinion issue

29.26

The opinions examiner will prepare the opinion using a word template. The opinions examiner will send the opinion by email or PDAX message to litigation section requesting issue and will confirm whether OL20 or OL21 is appropriate to accompany the opinion.

A3 actions upon receipt of opinion

29.27

On receipt of confirmation email from the examiner, the A3 should undertake the following actions:

  • insert today’s date on the opinion
  • save an unsigned copy of the document to SharePoint in both PDF and Word formats. This version will be used for internal circulation.
  • apply the opinion examiner’s electronic signature
  • save a signed copy of the document to SharePoint in both PDF and Word format. This version will be used for circulation to the requester, proprietor and any observers
  • enter date of opinion issue on opinion database
  • generate either OL20 or OL21 as directed by the opinions examiner for issue with the signed PDF hard copy of the opinion
  • where the request relates to an SPC the A3 will amend the letter headings as appropriate
  • update OPTICS with a free text entry to read as follows:
    For a request relating to a patent:

Request for an opinion under section 74A filed on…(date)….issued on ….(date).

For a request relating to an SPC:

Request for an opinion under section 74A in respect of SPC/XXXX/XXX filed on…(date)..issued on (date).

  • update the opinions record card to show date opinion issued
  • produce final website advert to advise outcome of opinion request and send to Webmaster with unsigned PDF version of opinion document
  • circulate the unsigned PDF opinion document to the Opinions group by email (see current circulation list) There is a copy available on SharePoint
  • create a file note for the dossier to show all records cleared
  • upload the final website advert to PDAX dossier (doc code: ADVERT) together with the OL20 or OL21 letters (doc code: LETTER-LIT). The unsigned opinion should be uploaded to the dossier using doc code OPINION-LIT
  • update the dossier so that all documentation appears on IPSUM
  • update the Current Situation on Live Opinions summary table
  • for patent opinion requests ONLY where an opinion has been issued which concludes that the patent clearly lacked novelty or inventive step revocation action under Section 73(1A) may be initiated following the expiry of the Section 74B Opinion Review period. (See Chapter 32 for procedures to be followed). Set a suitable diary date if applicable

Preliminary refusal of a request for an opinion

29.28

The Senior Opinions examiner/SPC examiner may wish to issue a preliminary view that the request for an opinion is refused, under certain circumstances, for example when the issue in question has been decided before. This view may be taken prior to or following, the placement of the website initial advertisement notifying that the request has been filed.

29.29

The Senior Opinions examiner/SPC examiner will advise the A3 of the Office’s preliminary view to refuse the request giving the reasons for this view. The requester will be given a date to provide comments regarding the preliminary view and the opportunity to ask to be heard on the matter.

The A3 will undertake the following actions:

  • access the Opinions database to generate opinion record
  • issue letter OL06a or b as appropriate inserting the text setting out the reasons for the view as provided by Senior Opinions examiner
  • if appropriate, send letter OL06c with a copy of OL06a to the proprietor (unless they are the requester) advising them of the preliminary view
  • if requested by The Senior Opinions examiner/SPC examiner, compose a refund letter and send this to the Head of Litigation for approval. The letter is then sent to Finance, who will arrange a refund of the £200 filed with Patents Form 17
  • the A3 will import letters generated to the PDAX dossier via Manual Import and prepare the dossier for IPSUM
  • where the request relates to an SPC the A3 will amend the letter headings as appropriate

29.30

Any correspondence arising from the requester should be referred to the Senior Opinions examiner/SPC examiner. It is possible that the Senior Opinions examiner/SPC examiner may wish to issue a response to the correspondence received by the requester. The requester may ask to be heard on the matter and in this event the A3 should notify the Senior Opinions examiner/SPC examiner and liaise with the Litigation Manager (Opinions) and Litigation Section Hearings Clerk accordingly so that arrangements can be made.

29.31

It should be noted that in cases where a request includes several grounds the Senior Opinions examiner/SPC examiner may issue a preliminary refusal in relation to only one of the areas. Where this is the case the content of letters should be checked carefully before issue.

Decision issued - request refused

29.32

Following a hearing or decision on the papers, the Litigation Section Hearings Clerk will issue any Office decision arising which refuses a request for an opinion. The Hearings Clerk will import the decision and cover letter to the PDAX dossier. The Hearings Clerk will diary the expiry of the appeal period and will notify the A3 Opinions/ex parte Clerk accordingly.

The A3 will undertake the following actions following the expiry of the appeal period:

  • issue OL07 to the patent proprietor for information unless the proprietor is the requester, in which case, he will have received the correspondence from the Hearings Clerk
  • where the request relates to a SPC the A3 will amend the letter headings as appropriate
  • update OPTICS to read:

In a decision of the comptroller dated XX Xxxx the request for opinion filed on XX Xxxx was refused.

  • if requested by the Senior Opinions examiner/SPC examiner, create a refund letter on Word and send to Head of Litigation to authorise. The letter is then sent to Finance Section who then arranges a refund of the £200 fee filed with Patents Form 17

  • arrange for an opinion refused advert to be placed on the website
  • arrange for a link from the web advert to the Office refusal decision
  • the A3 will import letter generated to the PDAX dossier and prepare dossier for IPSUM
  • where the request relates to a SPC the A3 will amend the letter headings as appropriate.

Opinion request withdrawn by requester

29.34

A request for an opinion can be withdrawn by the requester at any time during the process.

The A3 will undertake the following actions upon receipt of the withdrawal letter:

  • import letter of withdrawal of request to the PDAX dossier using Doc Code OPIN-WDRL
  • issue OL08a to the requester and letter OL08b to the patent proprietor where the patent proprietor is not the requester
  • where the request relates to an SPC the A3 will amend the letter headings as appropriate
  • arrange for the withdrawal advert to be placed on the website
  • update OPTICS register to read as follows:

Request for an opinion filed on xxXXxx withdrawn on xxXXxx

  • inform the allocated examiner of the withdrawal and cancel the task
  • generate a file note stating that the opinion has been withdrawn and the date
  • the A3 will import letter generated to the PDAX dossier and prepare dossier for IPSUM

29.35

Where the withdrawal is received following the placement of the initial website advertisement notifying that the request has been filed the procedures to be followed are as shown in 29.34 with the following changes:

  • issue OL09a to the requester (and not OL08)
  • issue OL09b to any party who has been contacted previously in connection with the opinion request or has filed observations. Where the request relates to an SPC the A3 will amend the letter headings as appropriate

Caveats

29.36

Where an individual has filed a caveat relating to a patent whilst an SPC opinion request is ongoing, the caveatee may have requested that they are notified if and when a request for an opinion is filed and/or information regarding the period for filing observations. Where a caveat exists it will be shown on PDAX dossier/SPC file. Where a caveat request has been filed the A3 should undertake the following action:

  • contact the Caveat Clerk in Formalities/access the SPC file to obtain details of the caveat request
  • where the request is in connection with the opinion, the A3 should send the appropriate details in agreement with the Formalities group/SPC section
  • the caveatee’s details should be recorded as “Other” (a potential interested party) in the Opinions database
  • should the caveatee subsequently file observations, the database entry should be updated to show the new role as “observer”

Extensions of Time

29.37

Requests for extensions to time periods for filing either observations or observations in reply may be received. Where a request is received, it should be made in writing indicating the reasons for the request. The request should be brought to the attention of the examiner or Senior Opinions examiner/SPC examiner without delay. The examiner will consider the request and if the extension of time is allowed the A3 should undertake the following actions:

  • on the opinions database, edit all party details to include the allowed extension of time on observations and observations in reply (input as appropriate)
  • issue letters OL10a-b or OL11a-b as appropriate
  • where the request relates to an SPC the A3 will amend the letter headings as appropriate
  • where the observer is the proprietor, access the opinions database to identify the record for this party to alter the status back to “proprietor”. Update the Opinions record card with the new dates
  • the A3 will import the extension of time request letter to the PDAX dossier and prepare the dossier for IPSUM. A file note is also created on PDAX
  • update the Current Situation on Live Opinions summary table

29.38

It should be noted that if an extension of time is granted for the filing of observations, the same extension of time must be applied to the date for filing observations in reply, to ensure the observer in reply has a full two weeks. However, the opinion due date remains unaltered.

29.39

Where the request for an extension of time is refused the A3 will:

  • issue letters OL12a and OL12b
  • where the request relates to an SPC the A3 will amend the letter headings as appropriate
  • the A3 will import the request for extension letter and the refusal letters generated to the PDAX dossier and prepare the dossier for IPSUM. A filenote should be created on the dossier

Request for copies of an opinion request

29.40

Parties may contact the office to seek copies of documents filed in connection with an opinion request upon viewing the initial website advertisement. Should any such requests be received, the A3 will ensure copies of Patents Form 17, accompanying statement and any supporting documents are sent to those making the request. This request for copies should be dealt with as a matter of urgency and the documents issued together with cover letter OL02b advising the party of the deadline for filing observations. There is no Patents Form or fee required for this. The A3 will add the party’s details to the opinions database record for the opinion, as a potential interested party. Where the request relates to an SPC the A3 will amend the letter headings as appropriate.

Reference

Letters

Standard opinion letter templates are available for reference on SharePoint/OpinionsAdministration/letters. Annex 1 - Opinions letters outlines letters used throughout the various stages of the opinions process.

Website adverts

29.42

Updates are sent to Webmaster for the opinion request to be advertised on the website the same day. Templates are available on SharePoint /Opinionsadministration/advert and are as follows.

Web page update (Date) (Updates highlighted in red)

Initial advert

Opinion number Patent/SPC number, title and owner Requester and request date Issue (Infringement and/or Validity) Observations deadline Outcome
xx/14 GB/EP (SPC number)

Patent title

Proprietor name
Requester

Date
Infringement

Validity

Or
Infringement
Validity
Date

Final advert

Opinion number Patent/SPC number, title and owner Requester and request date Issue (Infringement and/or Validity) Observations deadline Outcome
xx/14 GB/EP (SPC number)

Patent title

Proprietor name
Requester

Date
Infringement

Validity

Or
Infringement
Validity
Date Opinion Issued date

**PDF Copies of final opinions attached to email.