Journal Article

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

Alasdair Poore

in Journal of Intellectual Property Law & Practice

Volume 2, issue 1, pages 23-29
Published in print January 2007 | ISSN: 1747-1532
Published online December 2006 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpl192
Patent Office opinions: can you afford not to have one?

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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

Keywords: 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.

Journal Article.  5112 words. 

Subjects: Intellectual Property Law

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