UK: Patents Court Rules On Status Of Appeals Of Non-Binding Opinions

On 16 November 2007, Mr Justice Kitchin ruled on the first appeal to reach the Patents Court under the scheme for the provision of opinions by the Comptroller of Patents, finding that appeals of this type could be heard by the Patents Court.

For full commentary and analysis of DLP Ltd’s appeal in relation to a decision of a Hearing Officer of the UK Intellectual Property Office [2007] EWHC 2669 (Pat) please see below:

Full Article

In this case, Mr Justice Kitchin ruled on the first appeal to reach the Patents Court under the scheme for the provision of opinions by the Comptroller of Patents. The opinion procedure, available under section 74A of the Patents Act 1977 ("the Act"), allows the proprietor of a patent or any other person to request an opinion from the Comptroller as to whether a particular act constitutes an infringement or as to whether an invention is validly patentable. The opinion is intended to provide a quick, low-cost method for parties to get an impartial assessment of key infringement and validity issues but, notably, is non-binding (section 74(A)(4) of the Act).

In 2006, DLP sought an opinion from the Comptroller as to whether Scrabo Bathing Care ("Scrabo") had infringed one of its UK patents. DLP’s patent related to shower trays, particularly low-level shower trays readily accessible by infirm or disabled people while seated in a wheelchair. The examiner issued an opinion that the Scrabo shower tray did not infringe the patent. DLP requested a review of the opinion under section 74B of the Act and the rules made under that section. This was duly issued by the Hearing Officer acting for the Comptroller, who ordered certain parts of the original opinion to be set aside but did not find fault with the examiner’s overall conclusion. Unsatisfied with this outcome, DLP then brought an appeal against that decision under section 97 of the Act and rule 77K of the Patent Rules 1995, SI 1995/2093 ("the Rules").

In his judgment, Kitchin J addressed a number of issues, particularly:

• whether the review by the Hearing Officer is a decision against which there is a right of appeal; and,

• whether the appeal is of a type with which the court should, in any event, refuse to deal.

In relation to the first issue, Kitchin J ruled that the Act and the Rules manifestly intended in section 74B and rule 77K that an appeal should lie as of right where it relates to a part of an opinion that is not set aside.

In relation to the second issue, the court should not decline to exercise jurisdiction with appeals of this type, despite it being an inherent feature of the procedure that it can only result in the production of non-binding opinions or decisions. Kitchin J held that the provision of non-binding opinions are potentially of great value to all parties concerned with the validity or infringement of a patent, and the Act and the Rules expressly provide for an application for review and an appeal against an unfavourable decision on review.

In this particular instance, Kitchin J held that both the examiner and Hearing Officer had directed themselves correctly in law and the opinion was not clearly wrong. Accordingly, the appeal was dismissed.

Kitchin J’s finding that appeals of this type should be heard by the Patents Court is welcome news for patent owners considering applying to the Comptroller for a non-binding opinion. In situations where a third party disagrees with an opinion, the third party has the option of commencing full proceedings for revocation or seeking a declaration of non-infringement. A patent holder may not have the same opportunity if faced with an adverse opinion on validity if the review and appeal procedure did not exist.

However, the intention of the non-binding opinion procedure - to provide a relatively low-cost, quick method for parties to get an impartial assessment of key infringement and validity issues and, in the words of Kitchin J, "better enable them to negotiate a settlement rather than engaging in litigation" - appears to have been somewhat overlooked in this particular instance. Paradoxically, rather than pursuing the review and appeal procedure in relation to non-binding opinions, patent owners may find it quicker and cheaper to commence enforcement action or seek to negotiate with the alleged infringers.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

The original publication date for this article was 29/11/2007.