Vexatiousness in Patent Office Opinions

A recent opinion issued by the UK-IPO has come to the IPKat's attention.  The UK-IPO, on request, issues opinions under Article 74A regarding granted UK patents.  Such opinions, which are limited to considering infringement and validity (but not exclusions from patentability), are strictly non-binding, but they could be useful as aids in settling minor disputes, particularly as the (official) cost for making a request is only £200.  Sometimes, however, requesters might get a bit carried away with making request after request on the same patent, which could vex a patent proprietor, who may feel that he is obliged to respond to the request each time in order to defend himself.  There is a provision designed to prevent such vexatious requests from being allowed, and specifically if the matter in question has already been considered in proceedings before the UK courts, the IPO or the EPO (where the patent has been granted by the EPO). 

In Opinion 21/08, a request was made for an opinion as to whether certain claims of EP(UK)0605800 were valid, in particular whether these claims involved an inventive step over the prior art as defined by documents cited by the requester. The patent proprietor filed observations claiming that the request was vexatious according to rule 94(1)(a), because the issues had been already considered in relevant proceedings, including a cancellation action submitted to the German Federal Patent Court in which certain of the documents were presented that could have been used in an earlier request for an opinion (08/06) by the same requester.  

The examiner noted that the patent proprietor had not backed up their assertion with any evidence, and had not shown why the requester should have been aware of the relevant documents at the time of making their earlier request for an opinion, in June 2006. Although it was undeniable that there had been an earlier opinion request, as well as an EPO opposition (which had been withdrawn) and the action in the German Patent Court, all relating to the same patent, the examiner considered that there was nothing to link them in a way that suggested vexatiousness. A case had not therefore been made out which would allow a conclusion to be made that the request was vexatious and that an opinion should not be issued. Also, the meaning of 'relevant proceedings' according to rule 92 did not even cover actions in the German courts [rule 92 defines the term as "proceedings (whether pending or concluded) before the comptroller, the court or the European Patent Office"]. 

The IPKat thinks that this must be right, but would caution against inferring any general principles from the opinion which, after all, was only given by a patent examiner and is not binding on anyone at all.  It does, however, make sense that the opinions service should be available, within reason, to allow a requester to have another go if they did not succeed first time, provided the proprietor is not inconvenienced too much by it.  In this case, though, the requester failed again to get what they wanted, as the examiner found the patent to be valid. The IPKat wonders if the requester has the nerve to try yet again, and would be interested to see what result they get on their third attempt.