On 19 November 2004, the First Division of Inner House delivered its judgment in ITP SA v Coflexip Stena Offshore Limited [2004] CS A3606/00.

ITP had sued Coflexip in Scottish Courts for infringement of its patent for a heat insulated pipe-in-pipe assembly for use in pipelines to be laid on the seabed for the purpose of transporting oil products. ITP’s patent was held valid both before the Opposition Division of the European Patent Office and before the Lord Ordinary in Scottish proceedings. In the latter proceedings, Coflexip was also held liable for infringement of the patent. Coflexip appealed against both decisions and during the pendency of appeal before the Scottish Court, the Board of Appeal of the European Patent Office annulled the decision of the Opposition Division and found the patent to be invalid. This led to a situation where the patent was invalid against the whole world, but was valid against Coflexip due to the judgment of the Scottish Court which had not been overturned by the Court of Session on appeal.

The matter was further complicated when ITP made an application to the European Court of Human Rights (ECtHR) claiming that the proceedings before the Board of Appeal had infringed its human right to a fair trial enshrined under the European Convention of Human Rights (ECHR). This was based on the fact that the Board took into consideration certain documents which were never put before the Examining Division of the EPO, and that the Board failed to remit the matter back to the Examining Division leading to the deprivation of a property right due to procedural irregularity. On the basis of this application, ITP asked the Scottish Court to delay the decision of the appeal at least until the ECtHR had considered whether the application was admissible, as contrary action would again amount to infringement by the Scottish Court of ITP’s human rights. Coflexip on the other hand contended that the appeal be allowed on the ground that the patent had been held invalid by the Board of Appeal.

After hearing both submissions, the Court held that the European Patent Convention supersedes the ECHR. There is nothing in the ECHR that can prevent the UK courts from implementing a decision of the Board of Appeal under section 77 (4A) of the Patents Act. Since the patent was a property right created by the European Patent Convention, after being revoked under the C onvention there is no property right in favour of ITP. The national courts are bound to give effect to a decision of the Board of Appeal and cannot inquire into whether the proceedings before the Board of Appeal were Convention-compliant. In reaching this conclusion it also held that there existed a fundamental distinction between a decision of an international tribunal such as the Board of Appeal and that of a foreign court, as only in the latter case may a domestic court decline to give effect to the decision due to non-observance of principles of natural justice.

On broader perspective, this decision is another example where the parties have sought to re-read the legislation in light of human rights. The Court , though amenable to such an approach, emphasized that the European Patent Convention and the UK Patent Act can not be interpreted in light of ECHR in such a way so as to make the resulting interpretation inconsistent with the fundamental features of the legislation. Another issue settled in this case is that a decision of the Board of Appeal will not be open for further review even if there is a substantial miscarriage of justice due to non-observance of principles of justice. In the opinion of the Court, if ITP is successful in its application to the EctHR, it will not affect the revocation of the patent because the ECtHR does not have any power to order European Patent Office to reinstate the patent. At best it could make an order for monetary compensation in ITP’s favour. However, it is hoped that in future such a situation will be rectified by addressing this anomaly.

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