ITP SA v Coflexip Stena Offshore Ltd
| Jurisdiction | Scotland |
| Judgment Date | 19 November 2004 |
| Docket Number | No 12 |
| Date | 19 November 2004 |
| Court | Court of Session |
Court of Session Inner House First Division
Lord President (Cullen of Whitekirk), Lord Macfadyen, Sir David Edward QC
Intellectual property - Patents - Whether court could decline to give effect to decision of European Patent Office Board of Appeal - Human rights - Patents Act 1977 (cap 37), sec 77 - Human Rights Act 1998 (cap 42), sec 3
Under the European Patent Convention of 5 October 1973 a system was established for the granting and regulation of European patents to contracting states. Applications required to designate the contracting states for which protection was sought. Under the Convention, a European patent was to confer on its owner the same rights in each contracting state for which it was granted as would be conferred by a national patent in that state. A European patent could be revoked by the opposition division of the European Patent Office. There was a right of appeal to the board of appeal, whose decisions were final. To the extent that a European patent was revoked in such proceedings, Art 68 provided that it was to be deemed not to have had, as from the outset, the rights mentioned above. The Patents Act 1977 provides by sec 77(1) that any European patent granted for the United Kingdom is to be treated as if it were a patent granted under the Act. By sec 77(4A) it provides that where a European patent is revoked in accordance with the proceedings set out in the Convention, it is to be treated as having been revoked under the Act. Section 3 of the Human Rights Act 1998 provides that in so far as it is possible to do so, legislation must be read and given effect to in a way which is compatible with the provisions of the European Convention on Human Rights and Fundamental Freedoms.
A company was granted a European patent in relation to a heat insulated pipe assembly. It brought proceedings against another company in the Court of Session for infringement of the patent, and on 23 August 2003, after proof, the Lord Ordinary (Nimmo Smith) held that the patent was valid, rejecting the defence that it lacked novelty and was obvious, and that it had been infringed. He granted interdict against the defenders. The defenders reclaimed. However, on 17 February 2004 a board of appeal of the European Patent Office revoked the patent, on the ground that it was obvious. The pursuers applied to the European Court of Human Rights, on the grounds that the proceedings before the board of appeal were in breach of their rights under Arts 6(1) and 13, because they had had no right to be heard nor to contest the revocation. The pursuers sought to sist the reclaiming motion pending the outcome of those proceedings, but their motion was refused. The defenders withdrew all their grounds of appeal with the exception of a new ground, that the patent was voidab initio and could not therefore have been infringed. At the reclaiming motion, the pursuers accepted that the court could not competently review the decision of the board of appeal, but contended that it could and should sist the cause pending the outcome of the proceedings before the European Court of Human Rights. They relied on the rule of interpretation in sec 3 of the Human Rights Act 1998, and argued that the terms of sec 77(4A) should be read down so as to be qualified by the words "unless to do so would be contrary to any Convention right".
Held that: (1) it was not possible to interpret sec 77(4A) of the Patents Act 1977 in the manner advocated by the pursuers, because an enactment in a contracting state requiring its courts to apply a certain interpretative principle to the legislation of that state could not confer any right on those courts to ignore or reduce the effect which they would otherwise have to attribute to the decisions of an international tribunal such as the board of appeal (para 25); (2) in any event, Art 68 of the European Patent Convention could not be subject to such a qualification, because that would imply that national courts could determine for themselves, inter alia, whether proceedings before the board of appeal complied with the provisions of the European Convention on Human Rights and Fundamental Freedoms, whereas the decisions of an international tribunal (as distinct from a foreign court) were not subject to review by national courts (para 25); (3) there was no basis for preserving as between the parties the liability which the Lord Ordinary had found to be established, where the pursuers had been found to have had from the outset no substantive right to the patent in proceedings to which the United Kingdom was bound to give effect (para 27); and reclaiming motion allowed and defendersassoilzied.
ITP sa brought an action of interdict in the Court of Session against Coflexip Stena Offshore Ltd from infringing the pursuers' patent rights in a European patent and for an accounting. A proof was heard before the Lord Ordinary (Nimmo Smith), who at advising, on 26 August 2003, held that the patent was valid and had been infringed and granted interdict. The defenders reclaimed. Before the reclaiming motion was heard, the patent was revoked by the European Patent Office Board of Appeal.
The cause called before the First Division, comprising the Lord President (Cullen of Whitekirk), Lord Macfadyen and Temporary Judge Sir David Edward QC for a hearing on the summar roll, on 5, 6 and 7 October 2004.
Cases referred to:
Ghaidan v MendozaELRWLRUNK [2004] AC 557; [2004] 3 WLR 113; [2004] 3 All ER 411
International Tin Council (Re)ELRWLRUNK [1987] 1 Ch 419; [1987] 2 WLR 1229; [1987] 1 All ER 890
Lenzing AG's European Patent (UK)UNK [1997] RPC 245
Marie Brizard et Roger International SA v William Grant & Sons LtdUNK 2002 SLT 1365; 2002 SCLR 619
At advising, on 19 November 2004, the opinion of the Court was delivered by the Lord President (Cullen of Whitekirk)-
Opinion of the Court-
[1] This reclaiming motion was heard in unusual circumstances. The pursuers sued the defenders for infringement of a European patent EP 0 890 056 B1 which they had been granted on 1 March 2000 with a priority date of 29 March 1996. The patent had been validated in the United Kingdom on 22 March 2000. The patent related, in general terms, to a heat insulated pipe-in-pipe assembly for use in pipelines to be laid on the seabed for the purpose of transporting oil products.
[2] On 26 August 2003, following a three week proof, the Lord Ordinary held that the patent was valid, rejecting the defenders' case that it lacked novelty and was obvious, and found that the patent had been infringed by the defenders. He granted interdict against the defenders from infringing the patent, and continued the case for an inquiry into the pursuers' claim for an accounting for profits. The defenders reclaimed against the interlocutor of the Lord Ordinary, initially on grounds relating to the issues on which they had been unsuccessful. However, the reclaiming motion took a different turn as a result of the following events.
[3] On 17 February 2004 a...
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