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Patent Office Opinions – is there power in your shower?

The grounds on which a UK Intellectual Property Office opinion can be challenged have narrowed in a recent ruling. This could leave businesses doubting the effectiveness of the service. The ruling relates to a spat between Lundberg & Son VVS-Produckter AE (Lundberg) and ZGP Limited (ZGP).
Back in 2009 ZGP requested an opinion in relation to whether a product (the Ecocamel shower head) infringed a Lundberg patent. The Opinion, issued in July 2009, concluded that there was no infringement of Lundberg’s patent by the Ecocamel shower head.

This latest decision stems from Lundberg’s request for a review of the 2009 opinion. According to Lundberg, the opinion wrongly interpreted the working of the ZGP Ecocamel product.

Lundberg’s request for a review was dismissed however, as not meeting the requirements that the only ground on which a non-infringement opinion could be reviewed was if the decision was based on an incorrect interpretation of the patent i.e. if the examiner had made an error of principle or if the examiner’s opinion was clearly wrong. The ruling examiner noted that the option of getting a second, binding opinion still existed, by suing for infringement – in effect directing Lundberg to more expensive UK court action.

Could this signal a reduction in the use of the opinions service by patent holders and interested third parties? Is the Intellectual Property Office dismissing the use of its own opinions service? Suggesting that parties instead rely on the certainty of court action? Evidence one way or the other will come in the number of future opinions issued.

Background

The UK Intellectual Property Office (IPO) introduced its patents opinions service in October 2005 as a ground-breaking procedure allowing anyone to ask for an expert examiner opinion on an issue of patent infringement or validity. The service was initially envisaged as being useful for businesses or individuals who are (or think they may become) involved in a dispute over a patent – the UK IPO opinion can act as a useful basis for negotiation between the parties.

The UK IPO patent opinions are non-binding and do not provide any legal remedies, such as damages or an injunction, and the process cannot result in revocation of a patent considered to be invalid in an opinion. However, they are relatively cheap and swift to obtain, issuing within 3 months from the request, and can be useful in the initial stages of a dispute.

The UK IPO has commented that “The objective behind the introduction of the Opinions service in 2005 was to provide a simple and low cost method of resolving disputes without the need for costly litigation. Over 45% of users of the service who responded to a recent review of the service indicated that an opinion had led to a resolution of a dispute”.