Friday, 22 June 2012

Mediation, expansion of Opinion service, are open for consultation

Fiction: the disputants are angry,
the mediator is happy. Reality?
The mediator can get fairly
frazzled too ...
There's a new consultation on plans to expand the UK Intellectual Property Office's Patent Opinions service -- a reasonably priced, good quality and surprisingly little used means of getting an expert opinion on the validity of a patent or its scope of protection which can assist greatly in the decision to bring an action -- or to defend one.

There are two sets of proposals on the table: one is for the expansion of the Patent Opinion service to cover supplementary protection certificates (SPCs) for pharma and agrichemical patents. While it seems quite illogical to exclude them, I doubt that the availability of this service would  make much difference in practice to whether SPC-related litigation was launched or not.  The other set of proposals relates to an SME-directed Mediation Service.  According to the BIS web page:
"The Intellectual Property Office (IPO) ... set out proposals to expand its Patent Opinions Service and is seeking views from business on how to improve its Mediation Service.

The Government is committed to providing SMEs with the economic environment and framework they need to grow. The Hargreaves Review identified a number of barriers facing SMEs trying to making the most of their Intellectual Property. One of these was the cost of managing IP, in particular resolving disputes surrounding the enforcement of their own IP rights and defending themselves against allegations of infringement made by others.

...  The IPO’s Patent Opinions Service allows individuals or companies to request an opinion on the validity or infringement of a patent and is well used. A review of this service demonstrated a high desire from users for expansion of the service to aid resolution of further patent disputes. Government is now consulting on the following proposal:
  • expanding the questions relating to patent validity that can be the subject of an opinion; 
  • expanding the service to offer opinions as to whether a Supplementary Protection Certificate ('SPC') is valid or is infringed; 
  • giving the IPO the power to consider revoking a patent following issue of an opinion which concludes it is invalid.
The IPO provides a Mediation Service to any parties involved in an IP dispute who wish to resolve matters without resorting to the Courts. However, uptake of this service is low and the IPO is therefore seeking comments and supporting evidence from key stakeholders and IP right holders on the reasons for this. This will be used to determine what service, if any, the IPO should be offering to support speedier and lower cost dispute resolution".
The Mediation consultation will run for six weeks, ending on 24 July 2012 and your response should ne emailed here.  The Patent Opinions Service consultation will run for 12 weeks and concludes on 4 September 2012. Please send your comments here.

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