The Patent Opinions Service was introduced by the IPO in 2005 to offer businesses an assessment service in relation to the validity or infringement of patents. The opinions issued, which cost £200 each, are non-binding but in our experience can often be helpful for companies and individuals looking to resolve patent disputes in a quick and affordable manner without getting into full legal proceedings before the courts.
Following a review in 2009 and a consultation in 2012, the Service will be expanded on several fronts on 1 October 2014. Currently, one can only request opinions on
whether a particular act is likely to constitute infringement upon a granted patent, and
whether or to what extent the invention in question is not patentable because it lacks novelty and/or inventive step.
The expanded Service will be able to provide opinions on a wider range of grounds on which revocation can be requested, such as issues of:
unallowable added matter during amendment, and
validity or infringement of Supplementary Protection Certificates (SPCs).
Of more concern to rights holders, if an opinion issued by the expanded Service provides a clear-cut indication that a patent is invalid, the IPO will now have the power to initiate revocation proceedings of its own volition (subject to certain safeguards for the patent holder).
Further, the IPO is set to expand the Opinion Service to cover designs within the next two years.
For more details, please refer to https://www.gov.uk/government/publications/expansion-of-the-patent-opinions-service-business-guidance .