Patent Office opinions: can you afford not to have one?

Abstract

An incident of the Patents Act 2004, the UK Patent Office has since 2005 offered non-binding opinions as to whether the novelty or inventiveness of patent claims are commensurate with their patentability, and whether the scope of such claims renders particular acts as infringements of the patent. Opinions are available for a modest sum, to anyone making a request to the Comptroller, within 12 weeks of application. However, because the assessment of validity is confined to novelty and inventiveness, opinions may be incomplete or distorted when compared with court judgments; for example in the case of opinions on “computer” patents or the unavailability of Gillette “squeeze” without recourse to arguments on sufficiency of disclosure. In complex cases, opinions may not be provided, or may be devalued, because the procedure does not provide for cross examination of expert witnesses. Despite these shortcomings, Patent Office Opinions may provide a significant tool in the resolution of less complex cases, and may be used in a range of other contexts; for example, in place of warranties in corporate due diligence, in assisting valuation and in negotiating royalty rates