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Journal of Intellectual Property Law & Practice Advance Access published online on December 19, 2006
Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpl192
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© The Author (2006). Published by Oxford University Press. All rights reserved

Practice Point

Patent Office opinions: can you afford not to have one?

Alasdair Poore *

LEGAL CONTEXT: An incident of the Patents Act 2004, the UK Patent Office has since 2005 offered non-binding opinions as to whether the novelty or inventiveness of patent claims are commensurate with their patentability, and whether the scope of such claims renders particular acts as infringements of the patent.

KEY POINTS: Opinions are available for a modest sum, to anyone making a request to the Comptroller, within 12 weeks of application. However, because the assessment of validity is confined to novelty and inventiveness, opinions may be incomplete or distorted when compared with court judgments; for example in the case of opinions on "computer" patents or the unavailability of Gillette "squeeze" without recourse to arguments on sufficiency of disclosure. In complex cases, opinions may not be provided, or may be devalued, because the procedure does not provide for cross examination of expert witnesses.

PRACTICAL SIGNIFICANCE: Despite these shortcomings, Patent Office Opinions may provide a significant tool in the resolution of less complex cases, and may be used in a range of other contexts; for example, in place of warranties in corporate due diligence, in assisting valuation and in negotiating royalty rates

Key Words: A recent innovation in UK patent law was the provision by the Patent Office of reasonably priced, non-binding opinions as to the validity of a granted patent in some circumstances and as to whether an act might constitute an infringement of a granted patent. • Early experience suggests that the facility to obtain opinions has been used with caution and that its full potential remains untested. • This article reviews the early days of operation of non-binding opinions, identifying both those areas in which some benefit may have been obtained and those areas in which uncertainty remains in terms of law and practice.

* Partner, Mills & Reeve. Email: alasdair.poore{at}mills-reeve.com


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