DLP Limited has been unsuccessful in its attempt to get the English High Court to set aside the non-binding opinion of the UK Intellectual Property Office. The opinion was that Scrabo Bathing Care’s shower tray did not infringe its patent relating to low level shower trays, which can be easily accessed by wheelchair users.
Since 1 October 2005 it has been possible, for a modest fee of currently £200, to obtain an impartial expert but non-binding opinion from the UK IP Office. This impartial expert provides a non-binding opinion as to the validity of a UK or an EP (UK) patent (over specified prior art) or, as to whether a particular product or process infringes such a patent (section 74A and section 74B of the Patents Act 1977 as amended). This service was introduced with the intention of allowing parties to test the strength of their arguments and to provide them with a basis for negotiation and hopefully to resolve their differences without the need for litigation.
However, the procedure also makes provision for an appeal or review of such an opinion to a Hearing Officer and indeed from such a Hearing Officer’s review to the High Court. However, this appeal procedure is available only to the patentee and only in specified circumstances:
- That the opinion wrongly concluded that the patent was invalid, or was invalid to a limited extent; or
- That, by reason if 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.
This procedure was included as it was felt it would be fundamentally unjust to a patentee if the opinion concluded that the patent was invalid, and for him to have no form of redress. This would be the situation if no revocation proceedings had been commenced. In contrast, if the patent was concluded to be valid, affected parties could effectively challenge this by commencing revocation proceedings.
Similarly, if an opinion on infringement over a specified product or process concluded there was none, the patentee could only challenge this conclusion by commencing infringement proceedings if infringing acts had actually occurred in the jurisdiction. Patent opinions were however usefully available even where the specified act was only potential or hypothetical etc.
DLP Limited applied for such a non-binding opinion as to whether a specified shower tray of its competitor (Scrabo Bathing Care) came within the scope of the claim 1 of its patent as properly construed. Claim 1 reads as follows:
“A shower tray comprising a trough along one or more sides of the tray and means for clamping flexible floor covering material and/or a flexible edge of a ramp device in the trough(s).”
Both the original opinion and the Hearing Officer’s review concluded that the Scrabo shower did not infringe. This was because the claim as read by the skilled man required that the claimed shower tray itself included a trough. Whereas, the Scrabo tray trough was only formed by a combination of the tray and the flooring upon its installation. DLP Limited appealed to the High Court pursuant to section 74B and rule 77K of the Patent Rules 1995.
Another judge at an earlier hearing had suggested that perhaps the court should refuse to deal with this appeal because it was an inherent feature of the procedure that it could only result in non–binding opinions. This suggestion was dealt with as an initial matter by the Kitchen J who firmly disagreed. This was so despite it appearing on the facts of this case, that the patentee could have sought a binding decision of the court by commencing an infringement action. Kitchen J was of the view that the Act and the Rules had “expressly provide[d] for an application by the patent holder for a review of an unfavourable opinion and for an appeal as of right against an unfavourable decision on such a review”. It would be wrong to decline the jurisdiction that had been so conferred.
Secondly, the judge confirmed that the nature of the appeal was a review and not a re-hearing and the court should “be sensitive to the nature [of the original opinion]. It was only an expression of an opinion and one almost certainly reached on incomplete information. For these reasons I believe a Hearing Officer should only decide an opinion was wrong if the examiner has made error of principle or reached a conclusion that is clearly wrong. Likewise on appeal this court should only reverse a decision of a Hearing Officer if he failed to recognise such an error or wrong conclusion in the opinion and so declined to set it aside”.
With these considerations in mind the judge dismissed the appeal concluding that the “core reasoning” of the opinion and review had not be shown to be wrong. “It was not an opinion which was clearly wrong. Indeed, I think it was a reasonable view for them to take”.
The judge’s statements concerning how these appeals should be dealt with indicate that it will be an uphill struggle to get a non-binding patent opinion overturned unless the “core reasoning” within it was clearly wrong. This is perhaps just as well as the primary aim of the system was to encourage settlement without resorting to the courts.
However confidence in the quality of such opinions may not be assisted by the distinctly odd suggestions by the examiner that the claim required the trough to be integral with or formed of the material of the tray and by the Hearing Officer that the trough be in place at the time and place of supply. The judge himself expressed “considerable sympathy” with the patentee’s criticisms of these interpretations.