Refusal or withdrawal
Refusal or withdrawal of a request
Requests other than in respect of novelty, inventive step or infringement
Frivolous or vexatious
Previous Proceedings
Repeating arguments considered during the examination of the patent
Insufficient information
Refusing a request
Withdrawal of a request
Remission of fees
Refusal or withdrawal of a request (Section 74A(3) & Rule 94)
1. After an opinion request is filed, a preliminary assessment will be made as to whether it should be refused.
Requests other than in respect of novelty, inventive step or infringement
2. An opinion can only consider the validity of a patent in respect of novelty under section 1(1)(a) and/or inventive step under section 1(1)(b) - see section 74A(1)(b). Any request on any other grounds is beyond the scope of opinion work and will therefore be refused. The Office refused opinion 05/07 because once all of the request, the observations and the observations-in-reply had been considered it was clear that the issue at the heart of the request was one of excluded matter, notwithstanding that the request was presented in terms of inventive step.
3. A request will be refused where it appears that it is frivolous or vexatious. Assessing these matters will require the Office to look at previous requests in relation to the patent and the patent proprietor, as well as substantive issues. It was decided not to refuse opinion 05/06 for being vexatious as the observer had requested because the parties and argument in the opinion were found to be different to those in concurrent revocation proceedings.
4. An opinion request will also be refused if the issue on which an opinion is sought has already been sufficiently considered in any proceedings. Both opinion 02/05 and opinion 27/06 related to infringement of the same patent but different alleged infringers were listed in each respective opinion request, and so opinion 27/06 was not refused. In the case of opinion 01/07 a revocation action was stayed whilst the opinion was sought; and in the case of opinion 22/06 the issues and evidence in the opinion were the same as those that were to go before the court but the issues were settled before the trial, and so the matters were never tested in court.
5. A request may also be refused where related proceedings (either in the UK or at the EPO) are underway but not completed - although whether it is appropriate to refuse the request would depend on all the circumstances. For example, an opinion issued to parties already involved in proceedings could sometimes be helpful, and the courts may encourage or could direct parties to seek such an opinion.
Repeating arguments considered during the examination of the patent
6. The Office will not issue an opinion if for any reason it considers it inappropriate in all the circumstances to do so. This provision was relied on to refuse two requests which did no more than repeat arguments already considered pre-grant. In decision BL O/298/07 refusing an opinion request, the hearing officer noted that the request relied on prior art that had clearly been considered pre-grant and therefore did not raise a new question. In decision BL O/370/07, the hearing officer concluded that a request for an opinion on validity which argues on the basis of prior art that was cited as category "X" or "Y" in the search report, or as part of a substantive objection at any other time in the examination procedure, is, other than in exceptional circumstances, unlikely to clear the hurdle of raising a new question or argument.
7. However Opinion 21/07 did consider 4 documents cited as category A in the search report, together with a number of new documents, when assessing validity.
8. The Office is also free to refuse to give an opinion if the submissions are not sufficiently good enough to enable a sensible opinion to be issued.
9. If a request is to be refused, the Office will inform the requester and give the reasons for refusal. The requester will be entitled to a hearing on the matter under section 101. As is made clear in section 74A(6), no other parties can be involved in that hearing and only the requester has the right of appeal. If a request is refused then the patent holder (who may not have been involved up to this point unless he is the requester) will be informed (patent holder means the proprietor and any exclusive licensee). The request papers and the decision not to proceed will be publicly available on the patent file. A request may be refused at a later stage in the opinion process, after the request has been advertised and other parties have made observations. Refusal can take place at any time before the issue of the opinion, as with opinion 05/07 (see decision BL O/289/07). For example, a third party may provide a good reason why the request should be refused. If so, the same procedures will apply, but any party who submitted observations would be informed (as well as the patent holder).
10. A requester may withdraw a request for an opinion at any time, without having to give reasons, as with opinion 01/06 wherein the requester withdrew having seen the observations and thus being clear in his own mind that there was no infringement.
11. The comptroller will not continue of his own motion when presented with withdrawal. This is different from the practice under revocation proceedings where, if the applicant for revocation withdraws, the comptroller continues in the public interest to consider whether the patent is invalid and should be revoked. Equivalent procedures to those governing refusal of a request apply in terms of notifying third parties, and all the papers will remain public. Since no opinion will have been issued there will be no problems if another party later requests an opinion on the same issue.
Remission of fees (Rule 106)
12. The Office has the discretion to refund all or part of the request fee if a request is withdrawn or refused. A request for a refund should be made in writing by the requester.
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