Section 74B: Reviews of opinions under section 74A
Sections (74B.01 - 74B.10) last updated: April 2015.
Section 74B was introduced by the Patents Act 2004 and came into force on 1 October 2005. The section enables provision to be made for a review of opinions made under section 74A.
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.
|Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, or an opinion under section 74A above.|
The comptroller may undertake a review of an opinion made under section 74A. Only the patent proprietor or exclusive licensee (“the patent holder”) may apply for a review, which is considered in full proceedings before the comptroller.
|The rules may, in particular
(a) prescribe the circumstances in which, and the period within which, an application may be made;
(b) provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(d) provide for there to be a right of appeal against a decision made on a review only in prescribed cases.
Applying for a review of an opinion
r.98(1)-(4) is also relevant.
The patent proprietor or exclusive licensee may apply to the comptroller for a review of an opinion within three months of the date of issue of the opinion (extendable under rule 108(1)). The application should be made on Patents Form 2 filed in duplicate. The form should be accompanied by a statement in duplicate setting out fully the grounds on which the review is sought. This statement should contain details of any proceedings of which the applicant is aware which may be relevant to the question whether the review proceedings can be brought or continued. Proceedings for a review may not be brought or continued if the issue raised by the review has been decided in other proceedings.
r.98(5) is also relevant.
The application for a review of an opinion may only be brought on two grounds. Firstly, the patent proprietor or exclusive licensee may apply to have an opinion set aside on the grounds that the opinion wrongly concluded that the patent was invalid, or was invalid to a limited extent. Secondly, he may apply for a review of an opinion which concluded that a particular act did not or would not constitute an infringement of the patent. In this case, an application for a review can only be made where this conclusion was reached by what is believed to be an erroneous construction of the patent specification.
Procedure on review
r.99(1) is also relevant.
Upon receipt of the application, a copy of the form and statement is sent to the original requester of the opinion (if different from the applicant for the review) and to anyone who submitted observations during the original opinions procedure (see 74A.08).
r.99(2) is also relevant
An application for a review of an opinion is advertised on the Office website.
r.99(3)-(6) is also relevant.
Following advertisement of the review, any person may file a statement in support of the application for review, or a counter-statement contesting the application. In doing so, the person becomes party to the proceedings. Any statement or counter-statement must be filed within four weeks from publication of the advertisement of the review, or within two months of the date of issue of the opinion under s.74A, whichever period is the later to expire. Copies of statements or counter-statements are sent to the other parties in the review. The comptroller may give directions as he thinks fit with regard to subsequent procedure.
Outcome of review
r.100(1)-(2) is also relevant.
As with other proceedings before the comptroller, the parties to the proceedings have a right to be heard before the comptroller issues a decision upon completion of the review. The decision shall either set aside the opinion in whole or in part, or decide that no reason has been shown for the opinion to be set aside. The decision does not estop any of the parties from raising an issue regarding the validity or the infringement of the patent.
Appeals against a decision on review
r.100 is also relevant.
There is no appeal to the courts against a decision by the comptroller to set aside an opinion, except where the appeal relates to a part of the opinion that is not set aside. Therefore, it is not possible for the courts to consider the issue of whether to reinstate a nonbinding opinion.
Revocation action following a review
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, and a decision has been issued that no reason has been shown for the opinion to be set aside.