From October 1st, 2005 the UK Patent office has been able, upon application, to issue a non-binding reasoned opinion upon request as to the validity and/or infringement of a UK Patent (or European Patent designating the UK.) Any party may file such a request, including a patent attorney or solicitor without disclosing its client’s identity. The UK Patent Office then advertises the request and any person may file observations on the matter within a period of four weeks from the date of the advertisement. The patentee and any exclusive licensee have two further weeks to reply to the observations.
After the deadlines for observations and replies have expired, a Patent Office Examiner prepares the opinion, and issues it to the patentee, any exclusive licensee, the requester, and to any party who filed observations. The patentee and/or exclusive licensee then have to apply to the Patent Office for a review of an adverse opinion. The sole grounds for review is that the opinion came to a wrong conclusion. The opinions provisions were enacted in the Patents Act 2004 and added to the Patents Act 1977 as Sections 74A and 74B. The opinion process is also the subject of Rules 77A to 77K of the Patents Rules 1995 (as amended.) The fee charged by the Patent Office is £200, but to this must be added more substantial costs for preparing the request. Although the opinion is ‘non-binding’ it is likely that it would severely undermine the willingness of a patent holder to bring suit under a patent, and such an opinion may be useful in dealing with potential nuisance claims