On 16 November 2007, in the case of DLP Ltd, Re UK Intellectual Property Office Decision, [2007] EWHC 2669 (Pat), the English High Court dismissed an appeal arising from a decision of the UK Intellectual Property Office (UKIPO) on the question of an infringement under the new patent rules.

DLP holds patents relating to shower trays designed to hold waste water in the shower and permit wheelchair or disabled access without loss of water to the surrounding floor.

The Patents Act 2004 introduced a new scheme allowing patent holders or interested parties to seek “opinions” from a UKIPO examiner on questions of validity and infringement. The rules allow for an inexpensive (£200) application to be made) but the examiner has only documentary evidence to hand and will not take oral evidence from the applying party although “interested parties” may make submissions. The examiner is therefore unlikely to have all the relevant information to hand.

The purpose of such a scheme is to get parties to negotiate settlements based on an independent, guiding opinion in order to prevent expensive litigation while, at the same time, permitting it to go ahead should the parties be unsatisfied with the result. For this reason, the opinion is non-binding on any future tribunal.

DLP sought an opinion as to whether a shower tray made and sold by a third party, Scrabo Bathing Care, infringed its UK patent. The examiner subsequently issued an opinion that Scrabo’s shower tray did not infringe the patent. DLP then requested a review of the opinion which was issued by the Hearing Officer and resulted in a finding of no fault. DLP then appealed to the High Court against that decision.

The Court had to walk a tightrope between the competing purposes of the new system and the consequence of a decision of the High Court for a patent holder. The Court considered two questions:

1. Was there a decision against which there was a right to appeal?

2. Was the Court capable of making a decision where Parliament had stated quite categorically that any result was non-binding?

The first question was answered by an analysis of the rules and their purpose. The opinion can be challenged on review by a Hearing Officer for a £50 fee, the route followed by DLP as outlined above. However, this is available only to the patent holder as he cannot apply to a Court for a “declaration of validity” and cannot sue for infringement on a hypothetical act. Other interested parties do have further avenues to explore through the Court. Kitchin J decided that an appeal of the review did lie within the Court’s remit but only on issues where the review had not changed the examiner’s decision. As a result, only the parts of the examiner’s opinion that were left alone were challengeable.

The second question was raised as a result of case law from the House of Lords (Sun Life [1944] AC 111) which had decided that, where the Appellant and Respondent’s positions would not be affected by considering what was merely an academic question, the matter could not be heard. Kitchin J decided that, although any decision he would make would be non-binding, the outcome of the appeal would be of value to the patent holder. The Court nonetheless restricted DLP’s appeal to a review only where a manifestly incorrect decision or error of principle had occurred. The appeal was therefore summarily dismissed as no such error had occurred, although Kitchin J acknowledged that different examiners might come to different conclusions.

Statistics show that the new system is heavily used. There have been 57 applications so far, with 45 opinions issued. There have been 13 subsequent reviews with eight review decisions, two of which had been appealed to the Court.

By the Court accepting these appeals, however, the patent holder (in this case DLP) is put in a worse position as the High Court has effectively made a finding of non-infringement but on incomplete and shaky evidence and the skills of a junior patent examiner. Rather than having a very inexpensive or very expensive system to choose from, some commentators have argued that a more useful and reliable approach would be to have appeals lying only within the remit of the UKIPO. Although they would be heard summarily, they would be heard by experienced hearing officers.