The IP opinions with teeth

In October 2014 the UK Intellectual Property Act came into force. Its role, as stated by the UK Intellectual Property Office (UK IPO), was to “modernise IP law to help UK businesses better protect their IP rights”. Among its provisions were changes to design legislation, details of the establishment of the Unified Patent Court and an expansion of the IPO opinion service.

IPO opinions (from a senior examiner) can be a useful tool on the commercial landscape as they provide parties with the opportunity at a relatively low cost—£200 ($289)—to obtain an opinion from the IPO on the validity (or infringement) of a UK patent. A perceived weakness is that the law states explicitly that the opinions are non-binding

The 2014 act introduced the ability for the IPO to start, of its own volition, revocation proceedings following a finding of lack of novelty or inventive step. Previously the right to revoke of its own volition extended only to very limited circumstances such as where there was double patenting between a nationally granted UK patent and the UK part of a granted European patent. Therefore, the act has created the potential for situations where supposedly non-binding opinions may end up being quite a bind on the proprietor.

The law enables the IPO to start, of its own volition, the process of revoking a patent if an opinion considers it to be invalid. It is worth noting that this applies only in a limited set of circumstances and, if the process is started, the patent owner does have the opportunity to apply for a review of the opinion and/or provide arguments or amend the patent to try to overcome the problem and prevent revocation. Furthermore, if none of this works and the patent is revoked, the proprietor can appeal against the decision to the courts.

Fujifilm case

The IPO has had the power to revoke patents in this way since October 2014, but it took until February 2016 for it to exercise this discretion for the first time. Fujifilm’s granted UK patent deriving from EP1837182, titled “Ink washing liquid and cleaning method”, was revoked following the issuance of a negative opinion on validity.

In March 2015, legal services provider Acredian IP—presumably acting on instructions from a third party who wished to remain anonymous—requested an opinion on the patent’s validity.

Fujifilm was given several opportunities to contest the opinion and/or amend the patent and did not make any submissions. The UK “Manual of Patent Practice” sets out that if the proprietor fails to respond to the invitation to contest the opinion and/or amend the patent, it will be offered a hearing. It seems that if the proprietor remains unresponsive at this stage then the patent will be revoked. The patent was revoked.

Jemella dispute

There has been one other case in which revocation by the IPO following a negative opinion has been threatened and a decision has been issued. The proprietor in this case is Jemella and the patent relates to a hair dryer. The revocation attempt was filed by Dyson.

In that case Jemella contested the IPO opinion and actively defended its patent throughout the proceedings. In response to the opinion on invalidity, a response was filed on behalf of Jemella pointing out supposed errors in the reasoning that led to the conclusion of invalidity. In view of the proprietor’s arguments the IPO decided there was no need to revoke the patent.

"requesting an opinion on validity could offer an effective route to knocking out a UK patent, and is likely to be considerably cheaper than revocation proceedings."

In a brief decision on December 18, 2015, the IPO stated simply that Jemella contested the earlier view expressed in the opinion (that the patent was lacking in novelty and inventive step), so no order for revocation was made.

That decision does not provide any indication of the level of consideration given by the IPO or its analysis of Jemella’s observations. It is therefore hard to draw from this any conclusions on the IPO’s overall willingness to revoke patents of its own volition.

Lessons to learn

The lessons are clear. IPO opinions have teeth and a party that finds itself at the wrong end of a decision revoking one of its patents cannot afford to rely on the non-binding nature of the opinions. If you want the patent to survive you need to respond and defend it.

It is interesting to note that although three documents were relied on by Acredian IP to back up its request that the Fujifilm patent was invalid, only one of these was considered by the IPO. This was a document that had not been considered by the European Patent Office (EPO) during examination of the European application (although it had been cited and considered in the corresponding application in the US).

In contrast, the other two documents were cited during prosecution of the European application, and the IPO did not consider these documents despite assertions by Acredian IP that they were insufficiently considered by the EPO.

It seems the IPO is likely to be reluctant to reconsider documents which have already been considered by the examiner during the application procedure—particularly if these were considered previously with reference to novelty and/or inventive step.

In terms of practical lessons to be learned from this case, for patent proprietors it seems that contesting a negative opinion is crucial to avoiding revocation. If you have missed all opportunities to contest the IPO opinion then it is possible to appeal against the revocation to the English High Court, but the deadline for doing so is short—28 days from the date of the decision—and it would be expensive.

On the flip side, requesting an opinion on validity could offer an effective route to knocking out a UK patent, and is likely to be considerably cheaper than revocation proceedings and could be pursued anonymously. The chances of success are likely to be improved if prior art documents can be found which were not considered by the EPO.

A clear indication from the various cases is that a request for an IPO opinion based on good prior art is a strong tool against a weak patent. The strength, in part, comes from the ability to have the case heard in a quick and low-cost forum with the potential for revocation of the patent to ensue.

Avi Freeman is a partner at Beck Greener and heads the electronics, physics and mechanical engineering team. As a European and UK patent attorney, he works with UK and overseas high-tech companies to navigate the complexities of European, UK and overseas patent law. He can be contacted at: afreeman@beckgreener.com