Since October 2005, an application can be made to the United Kingdom Intellectual Property Office (UK-IPO) seeking a non-binding opinion on certain issues of validity and infringement. Although these UK-IPO opinions are non-binding, the cost of obtaining one is low and the opinions can offer businesses of all sizes a useful, inexpensive tool for resolving patent disputes.
The recent decision in DLP Limited's Patent (16 November 2007, [2007] EWHC 2669 (Pat)) was the first time the High Court had been asked to review one of these UK-IPO opinions. In his decision, Mr Justice Kitchin confirmed that it is appropriate for the High Court to hear appeals from patent proprietors unsatisfied with an opinion from the UK-IPO, but that the High Court can only influence in limited circumstances.
Background
Parties that wish to resolve patent disputes whilst avoiding the cost and time of formal litigation can apply to the UK-IPO under Section 74A of the Patents Act 1977 for a nonbinding decision as to whether:
- a particular act constitutes infringement of a UK or EP (UK) patent, or
- the invention claimed is notpatentable.
The resulting opinion, although non-binding, may prove useful in discussions aimed at avoiding formal litigation. As the application fee is only £200 (approximately US$400), it is a highly cost-effective way of pre-empting expensive litigation proceedings.
The procedure has generally been well-received. Since its introduction, 57 requests for an opinion have been filed and 45 opinions issued.
Review and Appeal
If the proprietor of the patent (or an exclusive licensee) is not satisfied with the UK-IPO's opinion, he can apply under Section 74B of the Patents Act to have the opinion reviewed by a Hearing Officer for a fee of £50. The Hearing Officer may set aside all or part of the opinion, or allow the original opinion to stand. Of the 45 opinions issued by the UK-IPO, there have been 13 requests for review by a Hearing Officer.
If the proprietor of the patent remains dissatisfied with any element of the opinion that has been upheld following the Hearing Officer's review, the proprietor may apply to the High Court for a further review of the opinion.
An appeal to the High Court can only be filed if the proprietor of the patent considers that:
- the opinion wrongly concludes that the patent is wholly or partly invalid, or
- as a result of an incorrect interpretation of the specification of the patent, the opinion wrongly concludes that a particular act did not (or would not) infringe the patent.
DLP Limited's Patent
On 16 November 2007, Kitchin J in the Patents Court gave the first decision following an appeal under Section 74B of the Patents Act.
DLP Limited was the proprietor of a patent relating to shower trays. Both the UK-IPO and the Hearing Officer had concluded that the allegedly infringing shower tray did not infringe the patent. DLP considered the interpretation of the patent to be incorrect and therefore appealed to the High Court.
Mr Justice Pumfrey had, at an earlier hearing, suggested that the Court should perhaps refuse to hear the appeal because the appeal can still only result in a non–binding opinion. In his decision on this matter, Kitchin J found that it was entirely appropriate for the Court to hear the appeal as the Patents Act and the Patent Rules 1995 specifically provided for an appeal to the High Court. In addition, the nature of the UK-IPO opinions, despite being non-binding, was such that they could be of significant importance to the proprietor of the patent.
As with other forms of appeal, the Court can only overturn the UK-IPO opinion if there has been an error of principle, or if the conclusion is clearly wrong. Likewise, the Hearing Officer's decision can only be reversed if the Hearing Officer failed to recognise such an error or wrong conclusion in the opinion and so declined to set the opinion aside.
In this case, the Judge dismissed the appeal, concluding that the "core reasoning" of the opinion and the Hearing Officer's review were not clearly wrong.
Conclusion
Non-binding opinions are intended to give the parties "guidance" as to the likely outcome of formal litigation and, as such, are useful tools. However, this case demonstrates the limits of such non-binding opinions for companies that are adamant that their patent has been infringed. Despite the money and time that DLP has invested in the procedure—a procedure that is intended to be quick and inexpensive— DLP appears no closer to the definitive answer that it seeks. Whilst the UK-IPO's opinion is that there is no infringement, Kitchin J expressed "considerable sympathy" with DLP's criticisms of the interpretation of the patent given in the UK-IPO opinion and by the Hearing Officer. DLP may take comfort in Kitchin J's comments and conclude that, if it were to issue infringement proceedings, the Court, which is not bound by the UK-IPO's opinion, would find that the patent was infringed. DLP may have been better off investing in infringement proceedings, rather than appealing the non-binding decision.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
