Baldwin & Francis Ltd v Patents Appeal Tribunal
| Jurisdiction | England & Wales |
| Judge | Lord Morton of Henryton,Lord Reid,Lord Tucker,Lord Somervell of Harrow,Lord Denning |
| Judgment Date | 14 May 1959 |
| Judgment citation (vLex) | [1959] UKHL J0514-1 |
| Date | 14 May 1959 |
| Court | House of Lords |
Lord Morton of Henryton
Lord Reid
Lord Tucker
Lord Somervell of Harrow
Lord Denning
House of Lords
Upon Report from the Appellate Committee, to whom was referred the Cause Baldwin & Francis Limited against Patents Appeal Tribunal and others, that the Committee had heard Counsel, as well on Monday the 16th, as on Tuesday the 17th, Wednesday the 18th and Thursday the 19th, days of March last, upon the Petition and Appeal of Baldwin & Francis Limited, whose registered office is at Eyre Street, Sheffield, in the County of York, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 2d of May 1958, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, or that the Petitioners might have such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the printed Case of Anderson Boyes & Company Limited, lodged in answer to the said Appeal (the Patents Appeal Tribunal and the Comptroller-General of Patents not having lodged a printed Case in answer to the said Appeal, though ordered so to do); and due consideration had this day of what was offered on either side in this Cause:
It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal, of the 2d day of May 1958, complained of in the said Appeal, be, and the same is hereby, Affirmed, and that the said Petition and Appeal be, and the same is hereby, dismissed this House: And it is further Ordered, That the Appellants do pay, or cause to be paid, to the Respondents Anderson Boyes & Company Limited the Costs incurred by them in respect of the said Appeal, the amount thereof to be certified by the Clerk of the Parliaments.
My Lords,
The question for decision in this House is whether there is or is not any error of law on the face of the record of the Patents Appeal Tribunal (Lloyd-Jacob, J.) in the present case. That Tribunal reversed interim and final decisions of the Superintending Examiner (Mr. E. T. Vincent acting for the Comptroller-General of Patents) whereby, in opposition proceedings under section 14 of the Patents Act, 1949, he ordered that there should be inserted in the Third and Fourth Respondents' Letters Patent No. 703,630 a specific reference to the Appellants' Letters Patent No. 658,823.
The First and Second Respondents were not represented at the hearing of this Appeal and I shall hereafter refer to the Third and Fourth Respondents as "the Respondents".
This appeal has taken an unusual course, and in order to state the matters to be considered by this House it is necessary to set out the history of the case in some detail. I shall first state the relevant provisions of the Patents Act, 1949. They are as follows:—
"14. (1) At any time within three months from the date of the publication of a complete specification under this Act, any person interested may give notice to the comptroller of opposition to the grant of the patent on any of the following grounds:—
. . . . . .
( g) that the complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed;
. . . . . .
(2) Where any such notice is given, the comptroller shall give notice of the opposition to the applicant, and shall give to the applicant and the opponent an opportunity to be heard before he decides on the case.
(3) …
(4) An appeal shall lie from any decision of the comptroller under this section.
9. (1) If, in consequence of the investigations required by the foregoing provisions of this Act or of proceedings under section fourteen or section thirty-three of this Act, it appears to the comptroller that an invention in respect of which application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant's complete specification by way of notice to the public unless within such time as may be prescribed either—
( a) the applicant shows to the satisfaction of the comptroller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or
( b) the complete specification is amended to the satisfaction of the comptroller.
(2) …
(3) An appeal shall lie from any decision or direction of the comptroller under this section.
85. (1) Subject to the provisions of this Act with respect to Scottish appeals, any appeal from the comptroller under this Act shall lie to the Appeal Tribunal.
. . . . . .
(7) Upon any appeal under this Act the Appeal Tribunal may exercise any power which could have been exercised by the comptroller in the proceeding from which the appeal is brought.
(8) …
(9) Rules made under this section shall provide for the appointment of scientific advisers to assist the Appeal Tribunal upon appeals under this Act and for regulating the functions of such advisers; and the remuneration of a scientific adviser appointed in accordance with such rules shall be defrayed out of moneys provided by Parliament.
(10) An appeal to the Appeal Tribunal under this Act shall not be deemed to be a proceeding in the High Court.
. . . . . .
87. (1) An appeal shall lie to the Court of Appeal:—
( a) from any decision of the Appeal Tribunal on an appeal under section thirty-three or section forty-two of this Act where the effect of the decision is the revocation of a patent:
( b) from any decision of the Appeal Tribunal under section fifty-five of this Act:
( c) with the leave of the Tribunal, from any decision of the Tribunal under section fourteen of this Act, where the effect of the decision is the refusal of the grant of a patent on the ground specified in paragraph ( d) or paragraph ( e) of subsection (1) of that section."
The effect of the provisions of sections 9 (3), 14 (4), 85 and 87 is that no appeal lies to the Court of Appeal from the decision of the Patents Appeal Tribunal in the present proceedings, that the Appeal Tribunal is an inferior tribunal and that the only remedy of persons aggrieved by a decision of that Tribunal is by way of Order of Certiorari.
The Appellants were and are owners of a patent No. 658,823 the complete specification of which is entitled "Improvements in and relating to Earth Leakage Protection Systems for Electric Motors, Cables and Other Apparatus". Those improvements were designed to prevent the reclosing of a circuit in which an earth fault had developed until that fault had been repaired.
On 22nd November, 1950, the Respondents made application for Patent No. 703,630, the complete specification of which was filed on 24th December, 1951, and published on 10th February, 1954. The specification was entitled "Improvements in or relating to Protective Systems for Polyphase A.C. Loads". The purpose of the invention in question was similarly to prevent the reclosing of an electrical circuit while an earth fault which had developed remained unrepaired.
Within the statutory period, the Appellants gave notice of opposition under section 14 (1) of the Patents Act, 1949, on a number of grounds of which the only material one was, and is, that the complete specification did not sufficiently and fairly describe the invention or the method by which it was to be performed, under the terms of subsection (1) ( g) of section 14. The Appellants' contention was that the specification could not fairly describe the invention or the method by which it was to be performed without a reference being made to their patent No. 658,823 and that such a reference should be directed under section 9 of the Patents Act, 1949.
The reason for such a reference being directed by the Comptroller-General is that any member of the public proposing to make the apparatus described in the specification ought to be warned that in so doing he runs a substantial risk of infringing the prior patent mentioned in the reference.
By an Interim Decision dated 15th June, 1956, the Superintending Examiner, on behalf of the Comptroller, decided that the Respondents' invention could not be performed without substantial risk of infringement of the Appellants' Patent. He rejected all other grounds of opposition, and allowed the Respondents one month to submit proposals for amending their specification. No such proposals were forthcoming, and accordingly by a Final Decision dated 31st August, 1956, he ordered that the Patent applied for be sealed with a reference to the Appellants' Patent.
The Respondents appealed from this decision to the Patents Appeal Tribunal and that Tribunal reversed the order of the Superintending Examiner.
The Appellants thereupon applied by motion to the Divisional Court of the Queen's Bench Division for an Order of Certiorari to bring up and quash the Order of the Patents Appeal Tribunal on the ground that errors of law appeared on the face of the record. The alleged errors of law are set out in the Statement by the Appellants dated 26th June, 1957, and include misconstruction by the Tribunal of the relevant specifications.
The Divisional Court dismissed the motion. Lord Goddard, Lord Chief Justice, after referring to sections 9 and 85 of the Patents Act, 1949, and to the Rules made thereunder, said that it was obvious that Parliament and the Statutory Committees who had to make rules considered that matters relating to patents would be considered by experts; it was not intended that the Divisional Court should investigate difficult scientific questions. Lord Goddard pointed out that what the Patents Appeal Tribunal had...
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...[ Milliken ]. 85 See, for example, Shore v Wilson (1839), 9 Cl & F 355, 8 ER 450 (HL); Baldwin & Francis Ltd v Patents Appeal Tribunal , [1959] AC 663 (HL). 86 See, for example, Sydall v Castings Ltd , [1967] 1 QB 302 (CA); London & Lancashire Fire Insurance Co Ltd v Bolands Ltd , [1924] AC......
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