Oystertec Plc v Barker
| Jurisdiction | England & Wales |
| Judge | Mr Justice Jacob |
| Judgment Date | 14 November 2002 |
| Neutral Citation | [2002] EWHC 2324 (Pat) |
| Docket Number | Case No: CH/2002/APP/0650 |
| Court | Chancery Division (Patents Court) |
| Date | 14 November 2002 |
[2002] EWHC 2324 (Pat)
The Honourable Mr Justice Jacob
In the Matter of the Patents Act 1977
And in the Matter of an Application by Edward Evans Barker
For Revocation of Uk Patent No 2314392 in the Name of Oystertec Plc
Case No: CH/2002/APP/0650
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Richard Miller QC and Mr Khawar Qureshi (instructed by Berg & Co) for the Appellant
Guy Burkill QC (instructed by Edward Evans Barker) for the Respondent
Hearing dates: 31 October 2002
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
THE HON MR JUSTICE JACOB
Mr Justice Jacob
This appeal is from Mr Dennehey, the Comptroller's Hearing Officer. Section. 72(1) of the Patents Act 1977 says:
"Subject to the following provisions of this Act, the Court or the Comptroller may on the application of any person by order revoke a patent for an invention …"
Oystertec own a patent for an invention, number 2314392. A firm of patent agents, Edward Evans Barker ("EEB") applied to the Comptroller to revoke it. This, Oystertec say, they are not entitled to do. The case turns on the true construction of s. 72. It is based on the fact that, as seems self evident, that EEB are not acting in their own interest but are acting for some undisclosed principal. At the heart of Oystertec's contention is the proposition that when the Act speaks of "any person" it means the person who is actually applying for revocation, not some agent. What matters, they say, is substance, not the form.
Formally EEB do not admit that they are acting for a principal. They say whether they are or not is irrelevant. They are exercising the right of anyone to seek revocation. Notwithstanding the non-admission the fair inference from the known facts is that EEB are acting as agents for an undisclosed principal. Patent agents would not in the ordinary course of their profession themselves seek revocation of a patent. They act for clients. I intend to work on the basis that they are so doing.
Although there were some points about what is or should be on the application form 2/77 I do not think the case turns on that. In the end Counsel were agreed that is so. The question is one that turns on the true construction of the statute. Mr Miller QC for Oystertec contends that the statute, particularly when construed in the light of the Human Rights Act, requires that only the "true" applicant for revocation can apply. His agent cannot. The rival argument advanced by Mr Burkill QC is that the Act means exactly what it says: any person can apply for revocation; his motive, including whether he is acting for somebody else is entirely irrelevant. The Act requires no locus standi. That is the policy of Parliament. A patent is a monopoly, Parliament has provided that any member of the public can challenge a purported public monopoly. They may do so because they have a commercial interest in doing so, they may do so because they do not believe this monopoly is a good thing, they may even do so in order to annoy or harass the patentee. Unless the proceedings are conducted in such a way as to be an abuse of process they can proceed. Whether or not there is an abuse of process depends upon what is being advanced in the proceedings, not upon the motive behind them. I think Mr Burkill is right, notwithstanding the immense skill and charm with which Mr Miller advanced his arguments. It is to these I must now turn.
Mr Miller first submits that the applicant for revocation in this case is not really EEB but the unnamed principal. The short answer to that is simply that it is indeed EEB who are the applicants. Whenever any agent acts for an undisclosed principal he is, to the outside world, the principal. The outside world treats him as a principal and is entitled to treat him as a principal. Whether he has a private arrangement with someone else is no business of the outside world as far as its dealings with him are concerned. Of course it may be that in some circumstances the fact of the agency may give third parties rights against the undisclosed principal too. Here, for instance, it might well be said that the undisclosed principal is a maintainer of the proceedings. As such, if it came to the point, the maintainer might be liable for costs and for that purpose his name could be revealed under compulsion. But that is not to say that the proceedings themselves are improperly constituted. The undisclosed principal is a maintainer of the proceedings properly brought by EEB. It is those proceedings which he is maintaining.
Next, Mr Miller submits that s.72 requires that the applicant for the revocation be acting " qua" applicant and not in a nominal capacity. What does he mean by " qua" applicant? He means really, and can only mean really, someone who has no interest in revocation. But the Act does not require any interest in revocation.
In this connection there is a strong and marked contrast with the position under the prior Patents Act of 1949. Under ss.14 and 32 of that Act an applicant for revocation had to be a "person interested". You had to demonstrate a " locus". There is an evident and sharp change in the present Act. I enquired whether this matter had been considered. Counsel provided a copy of the relevant section of the committee which examined patent law some time before the 1977 Patent Act, the so-called "Banks Committee" report of July 1970, Cmnd. 4407. Paragraph 380 reads as follows:
"Sections 32 and 33 provide that a patent may be revoked at the instigation of any person interested. "Person interested" has been interpreted as meaning that the applicant for revocation must have a real, definite and substantial interest. It has been held to include a person manufacturing or trading in the same field as that to which the patent relates but to exclude a person who intends to manufacture or trade within that field and a mere user of the goods concerned. It has been suggested to us that this is unduly restrictive and that it would be a better principle, and in the public interest, to allow anyone to apply for revocation of a patent. It is argued that abolition of the requirement of locus would not result in any serious possibility of vexatious litigation, that there is a number of cases in which the issue of locus standi is raised as a preliminary point, and that these give rise to preliminary decisions which are subject to appeal and which can be time consuming. As a result, decisions on the substantive issues can be much delayed. We have some sympathy with this view but consider that to abolish the requirement of locus would result in a real danger of oppressive proceedings being brought by nominees of opponents who would wish to remain anonymous or, particularly before the Comptroller, by persons who merely wish to involve the patentee in trouble and expense. We do not think this would be in the public interest. We agree, however, that the present locus requirements are unnecessarily restrictive and we accordingly recommend that:
A person who establishes that he intends to manufacture or trade within the same field as the patent, and a user of the goods concerned should be regarded as having Locus Standi."
What is significant here is that, notwithstanding that express recommendation, Parliament decided to do away with locus standi altogether. Although Banks thought there might be persons who would litigate vexatiously to involve the patentee in trouble and expense, Parliament considers that such persons, provided of course they had reasonable cases, should be entitled to apply to remove invalid monopolies. They do so at their own risk as to costs just as any other applicant for revocation incurs such a risk.
Next, Mr Miller relies upon the Human Rights Act 1998. He submits firstly that legislation must, so far as possible, be read and given effect in a way which is compatible with conventional rights. This of course is the law, see sections 1(1) and 3(1) of the Act. He then goes to Article 6 of the Convention:
"In the determination of his civil rights and obligations or of any criminal charge against him, everyone is entitled to a fair and public hearing …."
Mr Miller submits that a hearing cannot be fair or public if one of the parties is merely a nominee for an unknown stranger. He says there is a lack of transparency in the proceedings and a potential for unfairness. Moreover, there is no proper public hearing because one of the protagonists is hiding his identity from the public. What could be more "unpublic" than a joust in which one of the knights gets someone else to do his jousting for him?
First then, fairness. Mr Miller submits that anonymity of the true applicant, as he would put it, may result in a number of procedural unfairnesses. The "true" applicant may have relevant disclosure which could be given, an expert may be called who has a connection with the true applicant which is not revealed – indeed he might even be the true applicant. Mr Miller gave an instance where knowledge of the identity of the "true" applicant for revocation would be vital. Suppose the patentee sued A for infringement successfully, the patent being held valid and infringed? Suppose A as an undisclosed principal then got B to continue the acts of infringement? Unless the patentee could know that B was really acting for A, no case of estoppel could ever be pleaded. Mr Miller submitted that the "true" applicant must have something to hide – why else use a "puppet"?
I am not impressed by these "unfairnesses". Disclosure in patent actions is nearly always of...
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