Intellectual Property Act 2014

16 Opinions service

(1) In section 74A of the Patents Act 1977 (the title to which becomes “Opinions on matters prescribed in the rules”), in subsection (1), for the words from “an opinion” to the end substitute “an opinion on a prescribed matter in relation to the patent”.

(2) In section 74B of that Act (reviews of opinions under section 74A), omit subsection (2)(c) (power to make rules providing for review proceedings to be treated as other proceedings under the Act).

(3) In Schedule 4A to that Act (application of Act to supplementary protection certificates), in paragraph 1(2), at the appropriate place insert—

• “sections 74A and 74B (opinions by the Patent Office);”.

(4) In section 73 of that Act (comptroller’s power to revoke patents), after subsection (1) insert—

“(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.

(1B) The power under subsection (1A) may not be exercised before—

(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or

(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).

(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.”