Sean Hutchinson

October 2022

Introduction

Under Section 74A of the Patents Act 1977 and Rule 93(6) of the Patents Rules 2007, any person may ask the UKIPO to issue an Opinion as to (i) whether a particular act infringes (or, if done, would infringe) a particular UK patent, and (ii) whether a particular UK patent is valid.

These provisions also apply to European patents designating the UK.

UKIPO Opinion Number 12/22

In the case of UKIPO Opinion Number 12/22, a third party asked the UKIPO to issue an Opinion as to whether UK patent number 2577960 was valid. The third party argued the patent lacked an inventive step and related to subject matter excluded from patentability in the UK, and thus that the patent was invalid.

In response to the third party’s request for an Opinion from the UKIPO, the proprietor of the patent argued the UKIPO was not permitted to issue an Opinion in relation to excluded subject matter, on the grounds that a UKIPO Examiner would have already considered this during examination of the application on which the patent was ultimately granted.

In this regard, it is worth noting the provisions of Rule 94(1)(b) of the Patents Rules 2007, which recites:

“The comptroller shall not issue an opinion if the question upon which the opinion is sought appears to him to have been sufficiently considered in any relevant proceedings.”

The Examiner considered this argument of the proprietor, and noted the limitations imposed on the issuance of an Opinion by the UKIPO are intended to prevent the proprietor having to repeatedly address objections it has already overcome in related proceedings. Since no explicit objection of excluded subject matter was raised during examination of the application on which the patent was ultimately granted, the Examiner decided the question of whether the patent was directed to excluded subject matter was a new issue raised by the third party in its request for an Opinion.

Accordingly, the Examiner decided it was entirely appropriate for the UKIPO to issue an Opinion in relation to excluded matter in this case, and went on to issue an Opinion stating that the inventive concept was excluded from patentability under Section 1(2) of the Patents Act 1977.

Summary

It is well-known that the UKIPO can only issue an Opinion in relation to a question asked of it if that question has not already been addressed in other, related proceedings.

UKIPO Opinion Number 12/22 confirms that a question may be considered new, even if the Examiner of the relevant UK patent application may have considered a particular topic (such as excluded subject matter) previously. The critical test for whether a question has already been dealt with in other, relevant proceedings is whether a specific argument/objection has been raised in those other proceedings, not simply whether the broader topic that argument/objection relates to has been considered elsewhere.

Despite not being binding on other proceedings, such as infringement and revocation proceedings before the UK courts, UKIPO Opinions are a quick and easy way of determining whether a UK patent is valid and/or whether a UK patent is infringed by carrying out a particular act.

If you have a question regarding validity or infringement of a UK patent or a European patent designating the UK, then Schlich would be happy to work with you to request an Opinion on the matter from the UKIPO.