The Patents Rules 2007 and Patents (Fees) Rules 2007 – Part 8: Opinions – Guidance

Summary

Part 8 of the Patent Rules deals with opinions regarding the validity and infringement of patents. The following areas are covered:

Request for opinion: A request must be made in writing and accompanied by a copy of the relevant proceedings. The comptroller may refuse the request if it is frivolous or vexatious.
Notification and advertisement: The comptroller must notify the patent holder, licensees, and other interested parties of the request. The request will be advertised in a suitable manner.
Submission of observations: Any person may file observations on the issue raised by the request. The patent holder and requester must receive a copy of the observations. A person may file observations in reply within a certain period.
Issue of opinion: After the submissions, the comptroller will refer the request to an examiner to prepare an opinion. The opinion will be issued to the requester, patent holder, and other parties who submitted observations.
Review of opinion: The patent holder may apply to the comptroller for a review of the opinion within three months. The application must be made in writing and accompanied by a copy and statement setting out the grounds for the review. The comptroller may set aside the opinion in whole or in part, or decline to do so.

Key Points

Requests for opinion must be made in writing and accompanied by relevant proceedings.
The comptroller may refuse requests deemed frivolous or vexatious.
Observations may be filed on the issue raised by the request.
The patent holder and requester must receive a copy of observations.
The comptroller may set aside an opinion in whole or in part, or decline to do so, following a review application.