The UKIPO Opinions service is, in my humble view, a greatly underused resource for questions of validity or infringement, particularly those between smaller entities that are unlikely to make it into the courts. The costs are much cheaper than litigation, and the UKIPO issues the opinion typically within a few weeks. With the relatively short deadlines for response this means there can be an answer within a couple of months of filing the request for an Opinion.
I was therefore very interested in this analysis from patent blogger Tufty the Cat. As explained in detail in the article, since 2014 it has been possible for a negative opinion on validity to result in revocation of the patent. The UKIPO have indicated that they will only do so in "clear cut" cases. According to the analysis, of the 36 Opinions which found a lack of novelty or inventive step where proceedings are complete, there have been 12 patents amended and 6 cases of the patent being revoked.
In these 18 cases, the requester of the Opinion was successfully able to limit the scope of the patent or have it revoked in its entirety, at a cost significantly less than UK court proceedings. If you are concerned about a competitor's UK patent, an Opinion request may be a good first step to contest its validity. Even if the UKIPO does not require them to amend the patent or revoke it, a negative Opinion on validity may well strengthen your hand in any subsequent negotiations.
If you would like to learn more about the UKIPO Opinion service, my colleagues, Daniel Weston and Sarah Le Mesurier are presenting a webinar on this at 15:00 on the 19th August 2020. Full details, and a registration link are available here.
What is surprising, to me at least, is how little the Opinions service has been used. Is this due to a general reluctance to put arguments on the public record, or is it something else? Are enough people even aware of the possibility of requesting an Opinion when an issue of validity or infringement comes up?
