Chapter 30: Section 74B Reviews of opinions
Sections (30.01 to 30.21) last updated: March 2016
Section 74B of the Patents Act 1977 provides for a review of an opinion. An application may be filed by the patent proprietor or an exclusive licensee.
An application for a review needs to be filed before the end of the period of three months beginning with the date on which the opinion has been issued.
An application may be made on the following grounds only:
- that the opinion wrongly concluded that the patent in suit was invalid, or was invalid to a limited extent; or
- that, by reason of its interpretation of the specification of the patent in suit, the opinion wrongly concluded that a particular act did not or would not constitute an infringement of the patent (rule 98(5))
An application for a review may not be filed or if filed, may not be continued, if the issue raised by the review has been decided in other relevant proceedings.
The application must be made on Patents Form 2 accompanied by the appropriate fee together with a statement in duplicate setting out fully the grounds on which the review is sought (rule 98(3)). The statement should contain details of any proceedings of which the applicant is aware which may be relevant to the question of whether the application for a review may be brought or continued if the issue raised by the review has been decided in other proceedings.
On receipt, the form and accompanying documents will be scanned to the Office’s electronic case management system and an electronic dossier (case file) will be created. An electronic message will be sent to the Litigation Mailbox. The B3 will carry out an initial check of the case. The check establishes, for example, that the correct section of the Act has been identified, the filing fee has been paid, a statement of grounds has been filed and the correct patent number(s), if appropriate, have been quoted. If these formalities requirements have been met, the B3 should :
- enter the proceedings on the inter partes SharePoint list
- allocate a B2 Case Officer and HO and enter the details in the excel spreadsheet
- advise the A3 Opinions Officer that a review has been filed and provide details accordingly. The A3 will update the opinions record card accordingly
- the B3 will undertake an analysis of the application for review to determine whether it can be served
- the B3 will complete the website advert template as shown in (Annex 1 - Template - Website advert for application for review) to be sent to webmaster for the advert to appear on the following Wednesday. This will provide interested parties with the opportunity to oppose the review or file a statement in support of the application. The period for opposing a review is either (a) four weeks of the date of the advertisement on the website or (b) if it expires later, two months from the date the opinion was issued
Statement of grounds
What should the statement of grounds contain
The statement should contain details of any proceedings of which the applicant is aware and which may be relevant to the question of whether the application for a review may be filed.
When checking the statement of grounds, reference should be made to the provisions of rule 98(5) (see paragraph 30.03 above).
What happens if the statement does not comply
Where the statement does not comply, the B3 will contact the applicant for review outlining the defect and will provide a period of time for the applicant to respond. Where the defect is minor, for example, a document referred to in the statement is not attached, the applicant will be asked to provide the document within a period of not more than one month. Defects which are substantial, for example, where the statement appears to be inadequate or does not comply with the provisions of rule 98(5), may be referred to the Hearing Officer for consideration.
Serving the application for review
When the B3 is satisfied that the application is in order, the application will be served (see Annex 2 - Letter - Serving application for review). In accordance with rule 99(1) of the Patents Rules 2007, a copy of Patents Form 2, the statement and any other documents filed, will be sent to:
- the requester of the opinion (if different from the applicant for review)
- any party who filed observations in connection with the original request for an opinion under section 74A
The requester and any observers will be invited to file a statement in support of the application, or a counter statement opposing it (rule 99(3)) within either four weeks from the date of advertisement or two months from the date the opinion was issued, whichever is the later.
If the applicant for the review was the original requester of the opinion and no observations were filed in relation to the opinion, the B3 should issue the letter (Annex 3 - Letter - Applicant for review where no observations filed).
The B3 should then minute the B2 and request the B2 carries out the following actions:
- diaries the case to await a counter statement or statement
- updates the front cover of the dossier with the appropriate label e.g “Litigation Proceedings” and “Review of Opinions”
- update OPTICS to record the fact that the application for review has been filed using REC OPI function
Where a statement/counter-statement is filed
Any person who files a statement or counter- statement becomes a party to the proceedings. Upon receipt of either a statement supporting the application for a review or a counter-statement opposing it, the B2 will undertake a check to ensure it has been filed within the time period specified. The B2 should also carry out the following actions:
- update the inter partes SharePoint list to record the date the statement/counter-statement is filed
- ensure the document has been correctly scanned to the dossier with the appropriate document code and any documents referred to are attached
- send a copy of the statement/counter-statement to the other parties in the review advising that the proceedings will now be reviewed by the Hearing Officer to determine the subsequent procedure (see Annex 4 - Letter - Statement/counter-statement filed)
- refer the documents filed to the Hearing Officer
Where a statement/counter-statement is not filed, the B2 should inform the Hearing Officer accordingly and write to the applicant for the review advising that no statement counter-statement has been filed (Annex 5 - Letter - No statement/counter-statement filed) and that the proceedings will now be reviewed to consider the best way forward.
Filing of evidence
The B2 should seek advice from the Hearing Officer as to the subsequent procedure. Evidence rounds may not always be necessary for reviews of opinions but if evidence is required, the Hearing Officer may direct either simultaneous or sequential filing of evidence. The B2 will issue a letter accordingly (see Chapter 1). Alternatively, the Hearing Officer may decide to proceed to a hearing or decision on the papers.
Format of evidence
If evidence is required, it should be in the form of a witness statement.
Hearing or decision on papers
If evidence is not required, the party(ies) will be invited to attend a hearing or will be given the option of having the matter decided on the basis of the papers filed. The B2 will issue a letter accordingly to establish requirements (see Annex 6 - Letter - Decision on papers or hearing).
If any of the party(ies) wishes a hearing, the B2 will advise the Hearing Officer and will liaise with the Hearings Clerk who will make the necessary arrangements (see Chapter 4).
The outcome of the proceedings will be either that the opinion is set aside in whole or in part, or, no reason has been shown for the opinion to be set aside. A copy of the decision will be sent to the applicant for the review and any party who has filed a statement or counter-statement by the Hearings Clerk (see Chapter 5). The decision will also be published on the website.
The B3 will update the register to reflect the outcome of the decision and will arrange for the advertisement of the review on the website to be updated to show a decision has been issued.
There is no appeal to the courts against a decision to set aside an opinion, except where the appeal relates to a part of the opinion that is not set aside (see rule 100(3)). Therefore, it is not possible for the courts to consider the issue of whether to reinstate a non-binding opinion. Only the patent proprietor or exclusive licensee has the right to appeal under rule 100(3).
Once the decision has been issued and any appeal period has expired, the B2 will clear all records as follows:
- update the inter partes SharePoint list
- ensure the dossier contains all documents including minutes
- add ‘Precedent’ label to the dossier
- produce a clear records file note for the dossier
- advise the A3 Opinions Officer the review has been completed so the opinions record card may be updated