The UK Intellectual Property Office opinions service have now received the 100th request for an opinion on the infringement or validity of a UK patent.

100th Patent Office Opinion Requested

At the moment, the UK Intellectual Property Office can issue opinions under section 74A of the Patents Act on:

  • Validity of a patent
  • Infringement of a patent

Up until now, the opinions service has proved very useful, in allowing patent holders to assess whether a product infringes their patent or not, thereby helping the patent holder to decide whether or not to enforce their patent in Court, or alternatively avoiding the need for Court action altogether.

The opinions service can also be used by persons seeking to engineer around a particular patent (if possible), or by persons who fear that a prospective product may infringe a patent and wish to have clearance before committing to that product.

The opinions service may be used to assess the validity of a patent, prior to commencing a revocation action, or for settling a dispute between parties about the validity and enforceability of a granted patent. Up until now, the use of the opinions service has provided a low cost alternative to full patent litigation in the Patent County Court or Patent Court (High Court).

The Patent Office are now seeking comments from users of the opinions service with a view to extending the opinions service to other rights such as trade marks and designs, to extend the benefits of Patent Office opinions to these other areas of intellectual property.

To date, Franks & Co have filed 3 requests for opinion, and 1 request for a review of an opinion, meaning that Franks & Co’s clients account for 4% of all opinions so far requested at the UK Intellectual Property Office. Franks & Co were the first firm to make use of the review procedure.

For further details please contact Robert Franks

Article Published October 5th, 2009