UK Patent Office Consults On Opinion-Giving Powers

by Robin Pilgrim, LawAndTax-News.com, London

24 May 2005

The UK Patent Office has launched a consultation on its proposals to implement powers granted under the Patents Act 2004 allowing it to give non-binding opinions on patent validity and infringement.

Ron Marchant, Chief Executive of the Patent Office, said: "By giving non-binding opinions on validity and infringement, the Office will be able to play a new and helpful role in resolving disputes over patents. It’s important that we hear from users how they think the new service should operate in detail. This will help us ensure that it fully achieves its aims – and so provides a quick, accessible and balanced procedure for assessing the key issues in a dispute over validity or infringement."

The provisions on non-binding opinions are just one of several changes made by the Patents Act 2004 that help with the enforcement of patent rights and the resolution of disputes over patents. The 2004 Act also modernises the UK patents system and aligns UK patents legislation with the revised European Patent Convention (2000). The consultation is open until 17 August 2005, and the new provisions should come into force later in the autumn.

A number of the major provisions of the 2004 Act came into force on 1 January 2005. The new consultation is concerned not only with non-binding opinions, but also with other provisions in the 2004 Act which need significant changes to the secondary legislation before they can take effect (the Patents Rules 1995 and the Patents (Fees) Rules 1998).

Subjects covered by the consultation include: Renewal fee payment periods; Co-ownership; Patent Office opinions; Security for costs; Keeping inventor details confidential; and Revocation by the patent holder.

The provisions of the 2004 Act which are already in force include: Remedies in entitlement proceedings; Restrictions on filing abroad; Compensation of employees for certain inventions; Enforcement of damages; Threats of infringement proceedings; and Costs and expenses in infringement proceedings.

The Regulatory Reform (Patents) Order 2004 also came into force on 1 January 2005. This Order streamlined and modernised a number of procedural and administrative aspects of the patent application procedure.

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