Commentary Part 2: Patents Section 16: Opinions service
62.Section 74A of the 1977 Act specifies the limited matters on which the IPO is able to give an opinion. Subsection (1) of this section amends section 74A to replace the specified matters on which an opinion can be issued with a broader power to set out those matters in rules. Prescribing the matters in rules will enable these to be amended more easily in response to the demands of the users of the service.
63.Subsection (2) removes a power in section 74B(2) of the 1977 Act that has not been used and for which no future use can be foreseen. Amendment of this power would have been necessary if it had been retained.
64.Subsection (3) amends Schedule 4A to the 1977 Act to allow opinions to be requested on the validity or infringement of a Supplementary Protection Certificate (“SPC”). An SPC provides an extension to the term of monopoly provided by a patent to account for the delay in bringing certain products to market arising from regulatory and clinical trials requirements. Schedule 4A to the 1977 Act sets out those provisions of the 1977 Act that apply to SPCs.
65.Subsection (4) extends the powers of the Comptroller-General of Patents Designs and Trade Marks to revoke a patent on his own initiative. He will be able to do so if an opinion concludes that a patent is invalid because the invention covered by the patent was either known (not novel) or was obvious (lacks an inventive step). This additional power will only be exercised where the patented invention clearly lacks novelty or an inventive step. The patent holder will have the opportunity to apply for a review of the opinion, and also to make observations or amend his patent before any revocation action is taken.