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Coping with Contentious Patents

There are two main scenarios in which a dispute may arise around a patent. 

The first is if you disagree with the Intellectual Property Office about the outcome of your patent application. Secondly if someone has infringed your patent or there is a query about who owns the invention. There are several different methods of resolving disputes regarding patents.

Hearings

If your dispute is with the IPO then you can request a hearing where you will be able to make your thoughts heard. You will meet with a hearing officer, who will take into account both sides before making an unbiased decision. While you can represent yourself, it can be advisable to see the advice of a patent solicitor.

If an agreement cannot be made through correspondence then it is possible to request one in writing. Once a hearing has been arranged it is important to prepare the point you wish to argue and ready yourself for any questions that may be asked of you. A decision may be made at the end of the hearing but usually it will be issued in written form at a later date. The final decision is binding and if you still disagree you will have to take the matter to the courts.

If your dispute is with someone else then the IPO may be able to arrange an inter partes hearing. Here, both sides will be able to put their dispute forward to a hearing officer who will take into account their evidence. If you disagree with the hearing officer’s final decision you will have to take the case to litigation. This should be avoided where possible as the process can be very time consuming and expensive.

If you do wish to go ahead with proceedings you can apply through the IPO. If you are the party who wishes to file the proceedings you must fill in a Form 2 and if you are filing an opposition you will need to complete a Form 15. Needed will  be 2 copies of the form along with a £50 fee, 2 copies of a statement of ground and 2 copies of any evidence that you are putting forward to support your claim.

If you are the party who is being contested you will be sent all relevant documents and asked to produce a counter statement explaining which elements of the allegations you agree or disagree with and if you want the other party to prove. Also you should give an indication of whether you would like to receive costs if the allegations are proved as unsuccessful.

Once the IPO has received the counter statement the party who filed proceedings will be sent a copy and if they wish to continue they will have to fill in a Form 4 and pay the £350 fee. If you fill in the form the IPO will look at the statement and counterstatement and will decide what the best way to continue with the case would be. Once they have decided on the appropriate method of proceedings they will aim to complete proceeding within 10 months

Alternative dispute proceedings

If you do not wish to go to a hearing you may want to consider an alternative dispute procedure.

Opinions

An opinion can be sought if you are in dispute with someone about the infringement of a patent or its validity. It can be used if you want to try and avoid court proceedings but is not legally binding, so even after the dispute has been resolved the case could go back to court. A senior examiner will consider the dispute through the paper which each party sends in. The dispute will then be published. When you apply for an opinion you must provide 2 copies of Form 17 along with the fee of £200. You must also include 2 copies of a written statement setting out the details of your case and 2 copies of any evidence that you provide to support your case. Once a request has been received all documents will be sent to relevant parties and finally when an opinion has been made it will be sent to all the parties involved.

Mediation

Mediation can be used when both parties agree that they do not wish to have to go through court proceedings. A trained mediator is employed to help the parties come up with a solution to their problem. Mediation is more desirable then litigation as it is less expensive and usually a lot quicker. It also allows the individuals involved to stay in control and thus both parties can usually gain something from an agreement.