On 16 November, Mr Justice Kitchin handed down judgment relating to an appeal of a non-binding opinion issued by the Intellectual Property Office ("UKIPO") (formerly the Patent Office) under section 74A of the Patents Act 1977. This was the first such appeal to be heard by the High Court and confirmed that a patentee can appeal the outcome of a review by the Comptroller of a UKIPO opinion to the High Court, as of right. However, the Courts will only interfere with the review decision if it is clearly wrong.

Business Impact

Before requesting an opinion under section 74A, the applicant should now bear in mind that the opinion may be reviewed and sanctioned by the High Court. Although the opinion will remain non-binding, if it is upheld by the Courts it may be perceived as having more weight.

Non-binding opinions

In October 2005 sections 74A and 74B of the Patents Act 1977 were introduced to provide an alternative to patent litigation, whereby anyone can request a non-binding opinion from the UKIPO on questions of infringement or validity.

Section 74A allows any person to request the Comptroller to issue an opinion as to whether: (a) a particular act constitutes infringement; or (b) the invention is not patentable because it is lacks novelty or inventive step. The opinions are prepared by an examiner and are not binding for any purposes. The procedure was introduced as a means of providing a quick and affordable way for parties to obtain an impartial assessment of validity / infringement with a view to encouraging settlement.

Since its introduction, the new scheme has been well used: 57 requests for an opinion have been made, with 45 opinions being issued (3 were refused, 3 were withdrawn and 6 remain pending). Of these 45, 13 have been the subject of a review request (one of which has since been withdrawn). 8 review decisions have been issued and 4 remain pending. In only one of the review decisions has the opinion been overturned.

Review of an opinion

A patentee can request the Comptroller to review an opinion on the grounds that it wrongly concluded that the patent was invalid (in whole or in part) and/or that a particular act did not constitute infringement. The review is conducted by a Hearing Officer on behalf of the Comptroller.

Only a patentee has the right to request a review of the opinion. This is because a third party may seek a declaration of non-infringement or start revocation proceedings if it disagrees with the opinion, but a patentee would have no means to address an adverse opinion on validity or on infringement in respect of a hypothetical act.

Appeal to the High Court

The current decision concerned an attempt by a patentee to appeal to the High Court the finding of a review by the Comptroller that the conclusions of an opinion should stand. This was the first such appeal and raised two important questions:

  1. Should the Courts entertain the appeal?
  2. If it does, what approach should it adopt?

On the first question, Mr Justice Kitchin concluded that the Courts should hear the appeal, reasoning that this was the manifest intention of section 74B (and rule 77K of the rules made thereunder) and is not excluded by section 97 of the Patents Act 1977. Further, he concluded that the fact that the decision would be non-binding did not make the issue to be addressed an academic one. Rather, the issue which was to be decided was real, namely whether the review decision was wrong.

On the second question, the Judge held that the appeal should be limited to an assessment of the review decision: it not being the function of the Courts to give a second opinion on the underlying issue of validity or infringement which was the subject of the section 74A request. Mr Justice Kitchin emphasised that on appeal it was important to bear in mind that when different people are asked to opine on the same issue with the same set of facts and evidence before them, each might be expected to reach a different conclusion, all of which fall within a range of reasonable outcomes. In the review process, an opinion should only be overturned if the examiner made an error of principle or reached a conclusion that is clearly wrong (i.e. one that no reasonable person would come to). Likewise, on appeal, the review decision should only be set aside if the Hearing Officer failed to recognise such an error or wrong conclusion in the opinion.

In the instant case, while the judge expressed some sympathy with the criticisms raised against the opinion and the review decision, he concluded that the examiner and the Hearing Officer had directed themselves correctly in the law and had adopted the proper approach to construction of the patent and, in the circumstances, the opinion and the review decision were not clearly wrong. Accordingly, the appeal was dismissed.

Comment

This is the first appeal to be heard by the High Court relating to a UKIPO opinion. It affirms that the Courts may review the core reasoning of the Comptroller in reaching and reviewing opinions. However, the Courts will only overturn a review decision if the Hearing Officer has erred in principle or reached a conclusion that is clearly wrong – a high threshold reminiscent of judicial review applications.