The UKIPO offers an opinion service, allowing interested parties to ask a UKIPO Examiner to indicate whether a UK patent, or a European patent having effect in the UK, is valid and/or infringed by a particular act. The UKIPO aims to issue opinions within about 3 months, and the cost of requesting an opinion is relatively low. This means the opinion service provides a quick and low-cost means of obtaining an official view on the validity and/or infringement of a UK or European patent.
To request a UKIPO opinion, it is necessary to notify the UKIPO of the question on which an opinion is sought (validity or infringement), the requester’s position on that question, and the evidence upon which that position is based. The request will then be published by the UKIPO so third parties, including the patent proprietor (if the proprietor is not the party requesting the opinion), can file observations in reply within a 4-week period. The requester will then be notified of any observations filed and will be given a further 2-week period to file observations in response. The UKIPO will then issue its opinion shortly afterwards.
For those wishing not to disclose their identity to the patent proprietor, it is possible to remain anonymous by allowing us to request the opinion in our name.
Additionally, if a UK (or European) patent is found to be invalid by the Examiner and the UKIPO is sufficiently confident in this conclusion, the UKIPO may (at its discretion) revoke the UK patent (or the UK designation of a European patent), allowing costly revocation proceedings before the UK courts to be avoided.
Despite the clear value and advantages of the UKIPO opinion service, it is often overlooked, with fewer than 30 opinions typically being requested each year. We have direct experience of requesting UKIPO opinions and are happy to work with you to get an opinion on a patent you are interested.
Examination of a UK patent application may involve a hearing before a Hearing Officer at the UKIPO. Hearings may also be held at the UKIPO at the end of a trade mark opposition, and in cases where there is a dispute over ownership of and/or entitlement to a patent or patent application.
Whatever the reason for the hearing, it is vital to present and argue the best case carefully, clearly, and in close alignment with the most recent law and procedures. We can take these cases, presenting at the hearing ourselves and, importantly, knowing when at other times to work directly with specialist counsel.
We also provide pre-hearing advice on strategy, prospects, and costs to plan for all eventualities.
Read the latest insights from the Schlich team reporting recent cases and updates from the UKIPO.
The UKIPO confirms that an SPC is for the product in the marketing authorisation on which it is based and not further uses for the product
It is well known that a pharmaceutical product can find alternative uses than the application for which it was originally developed. Furthermore, further patents can be granted to additional usage and dosage regimes for such pharmaceutical products. The question considered by the Hearing Officer in this case was whether a marketing authorisation for a single active compound (safinamide) was also sufficient to support a supplementary protection certificate (SPC) application for the use of safinamide in combination with levodopa/PDI for the treatment for Parkinson’s disease.
The UKIPO has recently confirmed it can consider excluded subject matter when issuing an Opinion on the validity of a UK patent under Section 74A of the Patents Act 1977.
The UK Courts have decided that they have jurisdiction to grant an interim junction, restraining an infringer, before a European Patent has granted, in the specific circumstances where the Appeal Board of the EPO had held that a patent should be granted, but the formal procedure for grant had not yet been completed.
The information in this article is believed to be correct at the time of writing (1 May 2020). Please visit the EPO, UKIPO and EUIPO websites that are being continually updated for the most up-to-date information: EPO: https://www.epo.org/news-issues/covid-19.html UKIPO: https://www.gov.uk/government/news/coronavirus-important-update-on-ipo-services EUIPO: https://euipo.europa.eu/ohimportal/en EPO On 1 May 2020, the EPO published an updated Notice concerning disruptions […]
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