Re DLP Ltd (2007)
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR JUSTICE KITCHIN,Mr Justice Kitchin |
| Judgment Date | 16 November 2007 |
| Neutral Citation | [2007] EWHC 2669 (Pat) |
| Docket Number | Case No: CH 2007 APP 0315 |
| Court | Chancery Division (Patents Court) |
| Date | 16 November 2007 |
[2007] EWHC 2669 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Kitchin
Case No: CH 2007 APP 0315
Richard Hacon (instructed by Marks & Clerk) for the Appellant
Michael Tappin (instructed by the Treasury Solicitor) for the Comptroller
Hearing date: 26 October 2007
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.
Mr Justice Kitchin:
Introduction
This is the first appeal before this court under the new scheme for “Comptroller's opinions”. It raises two important issues:
i) Should this court entertain such an appeal at all?
ii) If it does, what approach should it adopt?
On 19 July 2006, the appellant (“DLP”) sought an opinion from the Comptroller under section 74A of the Patents Act 1977 (“the Act”) as to whether a shower tray made and sold by a third party, Scrabo Bathing Care (“Scrabo”), infringed its UK patent number 2,394,175B (“the patent”). On 20 October 2006, and in accordance with the statutory scheme, the examiner issued an opinion that the Scrabo shower tray did not infringe the patent. DLP requested a review of the opinion which was duly issued by Mr Walker, the Hearing Officer acting for the Comptroller, on 26 April 2007. The Hearing Officer ordered certain parts of the original opinion to be set aside but found no fault with its overall conclusion. DLP now appeals to this court against that decision. The appeal is brought under section 74B of the Act and the rules made under that section.
A preliminary hearing of the appeal took place before Pumfrey J on 18 October 2007. In the course of that hearing an important feature of the procedure was canvassed, namely that it can only ever result in opinions or decisions on review which are non binding. I understand this led the learned judge to express reservations as to whether this court should entertain the appeal for essentially two reasons: first, whether the review by the Hearing Officer is a decision against which there is a right of appeal; second, whether the appeal is of a type with which the court should, in any event, refuse to deal. Accordingly, he directed that these issues should be addressed by both the Comptroller and DLP at the substantive hearing. As a result, I have had the benefit of submissions upon them by Mr Tappin on behalf of the Comptroller, and Mr Hacon on behalf of DLP.
The legal framework
The framework of the opinion system was created by sections 74A and 74B of the Act which were introduced by section 13 of the Patents Act 2004.
Section 74A deals with opinions and reads:
“(1) The proprietor of a patent or any other person may request the comptroller to issue an opinion—
(a) as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b) as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied.
(2) Subsection (1) above applies even if the patent has expired or has been surrendered.
(3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
(a) in such circumstances as may be prescribed, or
(b) if for any reason he considers it inappropriate in all the circumstances to do so.
(4) An opinion under this section shall not be binding for any purposes.
(5) An opinion under this section shall be prepared by an examiner.
(6) In relation to a decision of the comptroller whether to issue an opinion under this section—
(a) for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
(b)
no appeal shall lie at the instance of any other person.”
Section 74B allows rules to make provision for a review procedure and for there to be a right of appeal against a decision made on a review in prescribed cases. It reads:
“(1) Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
(2) The rules may, in particular—
(a) prescribe the circumstances in which, and the period within which, an application may be made;
(b) provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(c) make provision under which, in prescribed circumstances, proceedings on a review are to be treated for prescribed purposes as if they were proceedings under section 61(1)(c) or (e), 71( 1) or 72(1)(a) above;
(d) provide for there to be a right of appeal against a decision made on a review only in prescribed cases.”
The relevant rules (rules 77A-K Patents Rules 1995) came into force on 1 October 2005. They provide details of the application process, the right of review and the right of appeal against the review decision.
The opinion
The opinion procedure is set forth in rules 77B-G. The scheme is relatively straightforward and I can summarise the material aspects of it quite shortly. Any person may request the Comptroller to issue an opinion as to whether a particular act constitutes an infringement or as to whether an invention is patentable. The procedure begins with a request setting out the question upon which an opinion is sought, the requester's submissions on that question and any matters of fact which are requested to be taken into account. The requester must provide details of any persons having an interest in the question and of any proceedings of which the requester is aware which relate to the patent and which may be relevant to the question. The Comptroller then advertises and notifies interested parties of the request. Any person may, but is not required to, file observations on any issue raised by the request. The Comptroller then refers the request to an examiner for the preparation of the opinion and the Comptroller issues the opinion by sending a copy to the requester, the patent holder and any other person who has filed observations. Appropriate particulars are entered on the register throughout.
Importantly, the opinion is not binding for all purposes (section 74(A)(4)). The aim of the scheme was explained in a consultation paper issued by the Patent Office (as it then was) before the rules were finalised. In short, it is intended to provide a low cost service which helps to resolve patent disputes, and so encourages innovation, by providing a quick, balanced and affordable way for parties to get an impartial assessment of key infringement and validity issues. The Comptroller aims to provide a reasoned opinion and express a firm view, rather than trying to assess the likelihood of invalidity or infringement in percentage terms. It was also noted that the opinion can only be as good as the material submitted allows. However, it was hoped that an opinion might assist the parties to focus their minds on the key issues, test and understand the strength of their cases and so better enable them to negotiate a settlement rather than engaging in litigation.
The review
The rules relating to the review process read:
“ Review of opinion
77H.-(1) The patent holder may, before the end of the period of three months beginning with the date on which the opinion is issued, apply to the comptroller for a review of the opinion.
(2) However, such proceedings for a review may not be brought (or if brought may not be continued) if the issue raised by the review has been decided in other proceedings.
(3) The application shall be made on Patents Form 2/77, and shall be accompanied by a copy and a statement in duplicate setting out fully the grounds on which the review is sought.
(4) The statement shall contain particulars of any proceedings of which the applicant is aware which may be relevant to the question whether the proceedings for a review may be brought or continued.
(5) The application may be made on the following grounds only—
(a) that the opinion wrongly concluded that the patent was invalid, or was invalid to a limited extent; or
(b) that, by reason of its interpretation of the specification of the patent, the opinion wrongly concluded that a particular act did not or would not constitute an infringement of the patent.
Procedure on review
77I.-(1) Upon receipt of the application, the comptroller shall send a copy of the form and a statement filed under rule 77H—
(a) to the requester (if different from the applicant); and
(b) to all persons who filed observations under rule 77F.
(2) The comptroller shall advertise the application in such a manner as he may think fit.
(3) Before the end of the relevant period, any person may file a statement in support of the application or a counter-statement contesting it (which in either case must be in duplicate), and on so doing shall become a party to the proceedings.
(4) The relevant period is the later to end of the following periods—
(a) the period of four weeks beginning with the date that the application is advertised under paragraph (2);
(b) the period of two months beginning with the date on which the opinion is issued under rule 77G(2).
(5) The comptroller shall send to the other parties a copy of each statement or counter-statement filed under paragraph (3).
(6) The comptroller may give such directions as he thinks fit with...
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