Since October last year, anyone can request a non-binding opinion from the Patent Office (the “Office”) on a question of validity and/ or infringement. The new procedure is designed to help parties in a dispute focus on their key issues “…and test the strength of their arguments without committing themselves to a subsequent course of action”. To date, four opinions have been published by the Office. Two of the cases illustrate, perhaps unsurprisingly, the Office’s inability to deliver unconditional opinions in circumstances where the requester has failed either to identify the core aspects of the case or to provide legible evidence in support of his assertions.
In the UK, it generally takes between 9-12 months between the commencement of legal proceedings for patent infringement and the actual court hearing (although this can now be less under the streamlined procedure) and the costs of proceedings up to a full trial can amount to several hundreds of thousands of pounds. Although the successful party may be entitled to recover from the losing party a significant proportion of the fees and disbursements incurred, it may not be able to recover all of its costs.
It was against this backdrop that the Office published its 2004 Consultation Paper, one aim of which was to provide a “…quick, balanced and affordable way for parties to get an impartial assessment in a patent dispute”. This resulted in sections 74A and 74B being inserted into the Patents Act 1977. Section 74B outlines the circumstances under which an opinion may be reviewed, whereas section 74(A) outlines the procedure for filing a request for an opinion, details of which are summarised below.
Anybody can request an opinion on any issue of validity and / or infringement in relation to a UK patent or a European Patent that designates the UK. There is no requirement to declare an interest when filing the request. Indeed, it is even possible to remain anonymous by filing the request through a patent agent, as illustrated in Opinion 01/05, details of which are below.
In order to file a request for an opinion, the requester needs to provide the Office with two copies of the following:
- Completed Patents Form 17/77;
- Statement setting out the facts, the arguments and the analysis of the case; and
- Any documents referred to in the statement.
In addition, the requester needs to pay the prescribed fee of £200 and inform the Office of any relevant UK or EPO proceedings (underway or completed) which relate to the patent in question, in addition to providing details of any known interested parties that should receive a copy of the request.
Once the Office has checked that the request has been properly filed, it will make an entry into the Patents Register to this effect. The Office has made it clear that requests that are frivolous or that relate to matters sufficiently considered in related proceedings will not be considered. Provided the request proceeds, it will be advertised on the Office’s website and interested parties will be invited to file observations within four weeks from the date of the advertisement. If no observations are filed, the request will be forwarded to an examiner for an opinion. If observations are filed, and the deadline for filing observations has expired, the requester and the patent holder will have two weeks to file any observations in reply. Once they have done so, the examiner will base his opinion on the information available, as in the opinions summarised below. The opinion is not binding and if a patent is found to be invalid the Office will take no further action to remove it from the Register. Likewise, any opinion on infringement has no legal consequences as regards the alleged infringer.
Re EP(UK) 1351732/Novo- Nordisk A/S, Opinion 01/05, 13 January 2006 
The first request for an opinion under this new procedure was filed through a patent agent. It was directed to the question of whether EP(UK) 1351732 (owned by Novo-Nordisk A/S) was novel / inventive. The requester produced ten documents in support of his claim. The patent concerned an automatic drug-dispensing syringe in which the user can correct a wrongly dialled dose. Observations were filed by the patentee, stating that the documents produced were either irrelevant or had already been considered in pre-grant proceedings. No response was filed by the requester. The Office then carried out a thorough analysis of the prior art documents, despite the fact that the requester took no active part in the proceedings. This was possible due to the fact that the request was sufficiently detailed, enabling the Office to focus on the documents at hand. In conclusion, the Office upheld the narrower claims, but held that the broader claims were invalid either because they lacked novelty or were obvious.
Re EP(UK) 0801532/Mr Lenighan, Opinion 02/05, 20 January 2006 
This opinion concerned the question of whether GB 2294790 had been infringed by a product called Showerbath, manufactured by Heritage Bathrooms. The patent concerned a bath with a screen assembly which can be swung into position so that the user can take a shower whilst standing in the bath. The screen comprises at least one panel with a sealing strip attached to the lower edge of the panel. When the screen is swung into position, the sealing strip engages the edge of the bath, preventing the screen from swinging beyond the bath.
According to Heritage Bathrooms, Showerbath does not infringe the patent because its screen is intended to swing out past the edge of the bath. Therefore, although the sealing strip offers some limited resistance, it has never prevented the screen from swinging out past the edge of the bath. In this case, the Office was only able to give a conditional opinion on the basis that the materials provided were of such poor quality that it was not possible to determine whether the Showerbath screen could pass over the bath or not. The Office therefore held that if the Showerbath product (when in normal use) is being prevented from being swung outwards over the edge of the bath because of the sealing strip, the product infringes the patent. If, on the other hand, the screen can be swung over the edge of the bath, the product does not infringe the patent.
GB 2294790/Mr Lewis, Opinion 03/05, 3 February 2006 
In this case, Mr Lewis, (who is also the patent holder) filed a request with the Office, asking that it provide an opinion on whether the patent is valid and whether it has been infringed. The patent concerned a method of analysing a goods article to identify a characterising feature and then marking or labelling the article with a mark denoting that feature. Observations in response to the request were filed by the Assay Master of the Sheffield Assay Office where acts of infringement are alleged to have been (or are being) performed. The Assay Master denied infringement and the requester provided additional evidence in response to the Master’s observations.
The examiner held that the request was unsatisfactory for the following reasons: First, it did not contain a claim as to why the patent might be invalid. The examiner pointed out that the reason for omitting to do so was probably due to the fact that the requester (who is also the patent holder) wanted to protect its position should an observer challenge the patent’s validity. The examiner pointed out that for future cases, a patentee making a request for an opinion on infringement does not need to protect its position in this way as the Office will always ask the patentee to reply to an observer’s submissions before delivering an opinion on validity. Secondly, the requester had marked the documents “commercial confidential” despite the fact that documents filed in connection with a request are immediately open to public inspection. Once informed of this, the requester removed the markings. Thirdly, no interested party was identified despite the fact that the requester clearly had a potential infringer in mind. The requester did however, provide information once informed of this omission. Fourthly, the request only referred to questions on validity and infringement with regards to the whole of the patent rather than on a claim by claim basis. The examiner was therefore unable to answer the questions in detail.
In conclusion, due to lack of evidence from either party, the examiner was unable to establish with sufficient certainty whether the relevant claims were invalid due to lack of novelty. Secondly, on the question of infringement, the examiner concluded that had the patent been valid, it would have been infringed.
GB 2324605/Mr Mackinder, Opinion 04/05, 30 January 2006 
In this case, Mr Mackinder, who is also the patent owner, made a request directed to the question of whether the patent is infringed by a marketing device called the Road Angel Navigator™ (the “Road Angel”), manufactured by Blackspot Interactive Limited. The patent outlines a system whereby satellite positional information may be used to determine when a vehicle exceeds the speed limit. If it does, it will send off a signal to an appropriate law enforcement agency. No observations were filed. The examiner was able to conclude, on the basis of the Road Angel’s user guide, that the Road Angel did not infringe the patent. According to the findings of the examiner, the purpose of the Road Angel is not to transmit a signal to law enforcement agencies but to provide a warning to the driver as and when he approaches a speed camera with excessive speed.
The above cases illustrate the importance of providing the Office with directions and verified evidence when filing a request. Indeed, only in response to half of the requests filed to date has the Office been able to provide the requester with an unconditional opinion. It is hoped that future requesters will learn from the above cases and that the Office will be able to deliver unreserved opinions that the parties can use as a foundation for negotiations or that will assist in dispute resolution.
Published in World Intellectual Property Report, March 2006
The UK Patent Office – Patents – Opinions and Reviews,
The UK Patent Office – About Us & Policies - Consultation Paper,
 Opinion delivered by Examiner Rebecca Villis
 Opinion delivered by Examiner John Rowlatt
 Opinion delivered by Examiner Mike Prescott
 Opinion delivered by Examiner Eamonn Quirk