An International Guide to
Patent Case Management for Judges

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9.2 The U.K. Intellectual Property Office and the Comptroller-General of Patents, Designs and Trade Marks

The United Kingdom’s Intellectual Property Office (UKIPO) is the government body with responsibility for all intellectual property rights, including patents.

As noted above, the Comptroller is head of the UKIPO. In addition to their role in examining patent applications and granting patents, the Comptroller has jurisdiction to hear and determine:

  • applications to revoke patents;23
  • applications for declarations of non-infringement;24
  • with the agreement of the parties, claims of infringement;25
  • references regarding entitlement to patents;26
  • applications for compensation by employees;27 and
  • applications in relation to licenses of right and compulsory licenses.28

In such proceedings, the Comptroller is required to seek to give effect to the same overriding objective – of dealing with a case justly – that governs proceedings in the court.29 The Patents Rules 2007 set out a procedural code for matters such as statements of the parties’ cases, the filing of evidence, case management and hearings.30 Appeals from decisions of the Comptroller in such matters can be made as of right to the Patents Court.31 According to the UKIPO website, the Comptroller issued only two decisions in contested disputes in the above areas in 2020 and in 2021.

The Comptroller also operates an opinion scheme, under which any person may request the Comptroller to issue a nonbinding opinion on any of the following matters:

  • whether a particular act constitutes or would constitute an infringement of a patent;
  • whether or to what extent an invention for which a patent has been granted is patentable;
  • whether a patent is insufficient;
  • whether a patent discloses matter not disclosed in the application therefor, or whether protection has been extended by an amendment; and
  • whether a supplementary protection certificate is invalid.32

The Patents Rules 2007 prescribe the procedure to be followed if such an opinion is requested, including allowing for observations by any other person and for a review of the opinion by the Comptroller on request.33 According to the UKIPO website, 26 requests were received for opinions in 2020, and 24 requests in 2021, all but one of which led to an opinion being issued.