Manual of Patent Practice

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Section 74A: Opinions on matters prescribed in the rules

Sections (74A -74A)(6) last updated: July 2015.

74A.01

Section 74A was introduced by the Patents Act 2004 and came into force on 1 October 2005. The section provides for a procedure where the comptroller can issue, on request, non-binding opinions. Initially such opinions were restricted to questions of validity relating to novelty or inventive step, and questions of infringement. On 1 October 2014, section 74A was amended by the Intellectual Property Act 2014, such that from this date onwards the matters on which an opinion can be requested are set out in rule 93(6).

[The Patents Opinions Service Procedures Manual should be consulted for full details of practice concerning opinions under section 74A and reviews of opinions under section 74B.]

 
Section 74A(1)
The proprietor of a patent or any other person may request the comptroller to issue an opinion on a prescribed matter in relation to the patent.
 
Section 74A(2)
Subsection (1) above applies even if the patent has expired or has been surrendered.

Making a request for an opinion

74A.02

(r.92, r.93, sch 4A, para 1(2) are also relevant)

Anyone may ask the comptroller for an opinion on infringement or validity in relation to a UK patent, European patent (UK), or supplementary protection certificate (SPC), whether in force or not, except when the patent has been revoked or the SPC declaredinvalid. However, opinions on infringement or validity are limited to the matters set out in rule 93(6):

(a) whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;

(b) whether, or to what extent, an invention for which the patent has been granted is not a patentable invention (as set out in s.1(1));

(c) whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art;

(d) whether the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed or, if the patent was granted on a a divisional application under s.15(9) or a new application filed under s.8(3), s.12(6) or s.37(4), in the earlier application as filed;

(e) whether the protection conferred by the patent has been extended by an amendment which should not have been allowed;

(f) whether a supplementary protection certificate is invalid under Article 15 of the Medicinal Products Regulation; and

(g) whether a supplementary protection certificate is invalid under Article 15 of the Plant Protection Products Regulation.

In the following paragraphs, the term “patent holder” means the proprietor of the patent and any exclusive licensee.

74A.03

(r.93, r.53(2)(b) and r.51 are also relevant)

A request for an opinion should be made on Patents Form 17 filed in duplicate. This shall be accompanied by a statement setting out the question upon which an opinion is r.51 sought, submissions from the requester on that question, and any matters of fact which are requested to be taken into account. The statement shall be accompanied by the name and address of anyone, of whom the requester is aware, having an interest in that question, particulars of any proceedings of which the requester is aware which relate to the patent and which may be relevant to that question, and a copy of any evidence or other document which is referred to in the statement, but there is no need to provide copies of published UK granted patents or applications. However, when the requester is acting as an agent in making the request, there is no requirement for the agent to disclose the person for whom he is acting. The statement, evidence and any other documents must be provided in duplicate. Any document filed in connection with a request for an opinion cannot be kept confidential (see 118.10).

 
Section 74A(3)
The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so (a) in such circumstances as may be prescribed, or (b) if for any reason he considers it inappropriate in all the circumstances to do so.

Refusal or withdrawal of request

r.94, r.106(3) and r.106(4) are also relevant

An opinion will not be issued if the request for an opinion appears to the comptroller to be frivolous or vexatious, or the question upon which an opinion is sought appears to have been sufficiently considered in any proceedings. In addition, an opinion is not issued if the requester withdraws the request by giving notice to the comptroller in writing. In this situation, the comptroller may remit the whole or part of the fee paid to request the opinion.

The requester is notified by the comptroller where a request for an opinion is refused, and has a right to be heard (see 74A.10). Where the request is refused, the comptroller has discretion to remit the whole or part of the fee paid to request the opinion. Under the Patents Rules 2007 there is no longer a requirement to apply in writing for remission of the whole or part of the fee.

Notification and advertisement of request

74A.05

r.95(1), r.95(2), r.92, r.54(1) and r.54(6)(a) are also relevant.

Various parties are notified of the request for an opinion by being sent a copy of the statement and Patents Form 17 filed by the requester, along with any other documents filed by the requester that the comptroller sees fit to send. The parties notified are (unless they are also the requester for an opinion): the patent holder (i.e. the patent proprietor and any exclusive licensee of the patent), any holder of a licence or sub-licence which has been registered under r.47, any person who has made a request for information as to when an opinion has been filed on a patent, any person who is specified in the statement filed by the requester as having an interest in the question, and any other person who the comptroller considers to have an interest in the question upon which the opinion is sought.

74A.06

r.95(4) is also relevant.

The request for an opinion is advertised on the Office website. The URL index for opinions is available in requests for opinions.

74A.07

r.95(5) is also relevant.

If a request is refused or withdrawn before parties are notified that the request for an opinion has been filed, only the patent holder is notified of the request (if he is not also the requester). In this event, the request for an opinion is not advertised.

Submission of observations and observations in reply

74A.08

r.96(1)-(3) and r.96(7) are also relevant.

Unless the request for an opinion has been refused or withdrawn, any person may submit written observations within four weeks from the date of advertisement of the request on the Office website. This time period is extendable at the comptroller’s discretion under rule 108(1). Within this period, the person submitting the observations is required to supply a copy of these observations to the patent holder (except where the patent holder is the person submitting the observations) and the requester of the opinion. The observations must be confined to the issues raised in the request for an opinion, but may include reasons why the comptroller should refuse the request for an opinion.

74A.09

r.96(4)-(5) is also relevant.

Once the period for submitting observations has expired, the requester and the patent holder (if he is not the person submitting the observations in question) have two weeks to submit observations in reply. This period is extendable at the comptroller’s discretion under rule 108(1). This response must be strictly confined to issues raised in the observations. Within this period, any observations in reply from the requester must be sent by him to the patent holder. Similarly, the patent holder must send any observations in reply to the requester.

[Any request for an extension of time to submit observations or observations in reply should be referred to a Deputy Director with responsibility for the opinions procedure. As the procedure of issuing an opinion is intended to be quick, only very short extensions will normally be granted, and only with very good reasons]

74A.10

r.96(6) is also relevant.

If it is reasonably possible, the observations filed and copies of such observations should be delivered only in electronic form or using electronic communications. Directions made under section 124A prescribing the form and manner for making these observations using electronic media were published in PDJ No. 6071 on 28 September 2005 and are reprinted in full in the “Relevant Official Notices and Directions” section of this Manual. The irections require observations to be sent by email to address opinions@ipo.gov.uk or to be delivered on digital media.

 
Section 74(A)(4)
Any opinion under this section shall not be binding for any purposes.

74A.11

The opinion does not have binding legal effect on the requester, observers or anyone else. However, that does not prevent the fact that an opinion has been given from being referred to in subsequent proceedings.

74A.11.1

See 73.02 and 73.04.1 for details of when action may be taken to commence revocation proceedings under s.73 after an opinion concludes that a granted UK patent or European patent (UK) lacks novelty or an inventive step.

 
Section 74(A)(5)
An opinion under this section shall be prepared by an examiner.

Issue of the opinion

74A.12

r.97 is also relevant.

After the end of the procedure for submission of observations, the request is referred to an examiner for preparation of the opinion. A copy of the opinion is sent to the requester, the patent holder, and any other person who filed observations. The opinion is also made available in our website guide requests for opinions.

[A senior patent examiner should consider the observations and prepare the written opinion. The examiner will first see the file about 2 weeks after the request for an opinion is received and may study the patent and any observations during the submission period. Further details on preparing the opinion are given in chapter 5 of the Patents Opinions Service Procedures Manual. ]

 
Section 74(A)(6)
In relation to a decision of the comptroller whether to issue an opinion under this section (a) for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and (b) no appeal shall lie at the instance of any other person.

74A.13

The requester of an opinion has the right to be heard before the request is refused by the comptroller. No other person has the right to be heard on the question whether the request should be granted. Similarly, no person other than the requester has the right to appeal to the courts against that decision (under the general right of appeal given by section 97).