Contesting an opinion
Introduction
Reviews of opinions
Grounds for review
Scope of a review
Costs in reviews
Applying for a review of an opinion
Proceeding with the review - involving other parties
Subsequent procedure
Outcome of a review
Amendment of the patent during review proceedings
Appealing a decision on a review
Next section - Part II, Processing an opinion request
1.Hopefully the parties find that the opinion forms a basis for negotiation and settlement or at least it helps clarify the real issues in dispute and so - although further litigation may be necessary - the opinion reduces the cost and time of that litigation.
2.If however a party is not happy with the opinion then it may have a number of options to challenge it. In most cases, the best way to challenge an opinion will be to launch separate legal proceedings either in the courts or at the Patent Office. (If they are launched at the Office, the whole issue will be looked at afresh by a hearing officer who was not involved in giving the original opinion - so neither party's position will be prejudiced). Thus, for example, if a third party disagrees with an opinion which states that the patent is valid, he is free to launch proceedings to revoke the patent. And if a third party disagrees with an opinion which states that the patent is infringed, he is free to launch proceedings seeking a declaration of non-infringement.
3.In certain limited circumstances however the patent proprietor may be left with an adverse opinion and have no way of challenging that opinion if he believes it to be wrong. So in limited circumstances, a review of the opinion is available. No other parties are compelled to join those review proceedings, although they may do so if they wish.
Reviews of Opinions (Section 74B, Rules 98, 99 and 100)
4.In certain prescribed circumstances a patent proprietor or an exclusive licensee may request a review of an opinion. Such a review will allow the correctness of the opinion to be considered in full proceedings before the comptroller.
5.The patent holder may apply to have an adverse opinion on validity set aside, and this would include an opinion which suggested that the patent was only partially valid. It is important to provide this opportunity since - in the absence of a third party launching revocation proceedings or committing an allegedly infringing act - the patent holder may have no other way of tackling an adverse opinion on validity that he feels is wrong.
6. The patent holder may also apply to have an adverse opinion on infringement set aside, but only where the opinion has come to that adverse view as a result of (what the patent holder believes is) an erroneous construction of the patent specification.
7. It will not be possible to bring review proceedings if the issues raised in the opinion have been decided in other proceedings, since there is no sense in reviewing the status of a non-binding opinion on an issue that has been determined in a binding way by other proceedings.
8. A review of an opinion is not a second opinion. This was made clear by Kitchen J. in DLP Limited [2007] EWHC 2669 (Pat) where he noted:
In the case of an appeal under rule 77K, [now Rule 100] the decision the subject of the appeal is itself a review of the opinion of the examiner. More specifically, it is a decision by the Hearing Officer as to whether or not the opinion of the examiner was wrong. I believe that a Hearing Officer, on review, and this court, on appeal, should be sensitive to the nature of this starting point. It was only an expression of an opinion, and one almost certainly reached on incomplete information. Upon considering any particular request, two different examiners may quite reasonably have different opinions. So also, there well may be opinions with which a Hearing Officer or a court would not agree but which cannot be characterised as wrong. Such opinions merely represent different views within a range within which reasonable people can differ. For these reasons I believe a Hearing Officer should only decide an opinion was wrong if the examiner has made an error of principle or reached a conclusion that is clearly wrong. Likewise, on appeal, this court should only reverse a decision of a Hearing Officer if he failed to recognise such an error or wrong conclusion in the opinion and so declined to set it aside. Of course this court must give a reasoned decision in relation to the grounds of appeal but I think it is undesirable to go further. It is not the function of this court (nor is it that of the Hearing Officer) to express an opinion on the question the subject of the original request.
9. Hence the purpose of a review is not to provide a second opinion but rather merely to decide if the opinion was wrong because of an error of principle or because it reached a conclusion that was clearly wrong.
10. Reviews of opinions are considered to be inter-partes proceedings even if only one party is involved. Consequently when two or more parties are involved, the losing party may be entitled to an award of costs in line with the comptroller's usual costs regime. In a review of opinion 11/06 the hearing officer awarded £1500 against the unsuccessful requester of the review. Costs may also be awarded where the party requesting a review subsequently withdraws the request. For example, the hearing officer in BL O/007/07 awarded £1000 against the party who withdrew a request for a review on opinion 03/05.
Applying for a review of an opinion
11. Only the patent holder, i.e. the patent proprietor or the exclusive licensee, may apply for a review. An application for a review must be made within 3 months of the opinion being issued. The 3 month period is extendable at the discretion of the comptroller. However it is likely that a very good reason will need to be given before any extension of time is considered.
12. A patent holder applies for a review using Form 2/77 (which is the form used to launch any proceedings before the comptroller and which is downloadable from the Office's website). The fee is presently £50. The form must be accompanied by a statement setting out fully the grounds on which the review is sought, and the patent holder must give details of any proceedings which may be relevant to the question of whether the review proceedings can be continued.
13. All documents including the Form 2/77 should be supplied in duplicate.
Proceeding with the review - involving other parties
14. The Office will send a copy of the Form 2/77 and the statement to the original requester of the opinion - if they are not the applicant for review themselves - and to anyone who submitted observations. The Register will be updated to show that an application has been filed for a review of the opinion and an advertisement will be put on the website. The Patents and Designs Journal includes a standard notice directing anyone interested in reviews under section 74B to the website.
15. Anyone who wishes to file a statement in support of, or contesting, the applicant's statement (and so become a party to the review proceedings) will have four weeks from the publication of the advertisement or, if later, two months from the date of the opinion to do so. This includes parties who have been notified directly, so the Office will make sure they are notified on or before the date that the advertisement appears, and are informed of the deadline. The comptroller will send copies of any such statements to the other parties.
16. It is important to note that no-one is obliged to become a party to the review proceedings. Should someone become a party and then the review go against them, then they may be subject to a cost award against them.
17. The review proceedings are treated as inter-partes proceedings whether or not the original requester of the opinion, or anyone else, chooses to get involved.
18. The Comptroller has a wide discretion to direct subsequent procedure as he thinks fit. Typically the parties have been content to have the matter decided on the basis of the statement and any counterstatement. Occasionally a hearing has been held where parties had the opportunity to make oral submissions.
19. As with other proceedings before the comptroller, a hearing will be appointed if the parties wish it, or a decision may be reached on the papers. In either case, a reasoned decision will issue in the standard format, and this will either set aside the opinion, wholly or in part, or find no reason to do so.
20. A review does not create any estoppels. Hence issues determined for the purposes of review proceedings may still be re-litigated in subsequent proceedings.
21. The review will not come to a binding decision on patent validity or infringement, but is restricted to setting aside the opinion or leaving it to stand. A patent with an adverse opinion, which is subject to a review upholding the opinion, will remain simply a patent with an adverse opinion - although naturally that opinion may carry more weight after the review procedure is completed. It would not be appropriate for a review which performs such a function to (for example) go on to revoke the patent or make an award of damages for infringement.
22. Each party will be sent a copy of the review decision and the decision will be advertised and the Register updated. The Office's website provides full details of all review decisions.
Amendment of the patent during review proceedings
23. Amendment of the patent during a review will not be possible because review proceedings are not considered to be proceedings in which validity may be put in issue. However if the patent holder were to file amendments under section 27 during the course of the review, the hearing officer would be free to stay the review proceedings if that was appropriate.
Appealing a decision on a review
24. If a review decision upholds an opinion adverse to the patent holder either wholly or in part then the patent holder will be entitled to appeal the review decision to the High Court.
25. If however an opinion adverse to the patent holder is set aside on review, it would be disproportionate for the original requester (or anyone else) to be able to appeal that decision, and have the court consider in full proceedings whether to reinstate a non-binding opinion. Such a person will in any event be able to have the issues determined by a court by bringing revocation proceedings or proceedings for a declaration of non-infringement.
26. It is important to note that a party that unsuccessfully appeals a decision to the High Court may have costs awarded against them. Such costs are likely to be significantly greater than those awarded by the Comptroller. In Cunningham & Nokia Corporation [2008] EWHC 1174 (Ch), an appeal against a review of opinion 11/07, an interim cost award of £20,000 was made against the unsuccessful appellant. For more details on appeals see chapter 7 of the Patent Hearings Manual.
Back: The opinion
Next section: Part II, Guide for UK-IPO examiners - Processing an opinion request