Legal Updates - Right to Appeal

Intellectual Property Law – Opinion of the Comptroller of Patents – Patent Infringement – Right to Appeal

The case of Re: An appeal by DLP Ltd [2007] involved an appellant who sought an opinion from the Comptroller of Patents as to whether a third party's product infringed theirs. The appellant in this case was a company which held the UK patent 2,394,175B (“the Patent”). The Patent related to shower trays, in particular to low level shower trays which could be easily accessed by infirm or disabled people while seated in a wheelchair.

The appellant sought an opinion from the Comptroller of Patents under s.74A of the Patents Act 1977 (“the Act”), whether a shower tray made and sold by a third party infringed the Patent.

In accordance with the statute, the examiner issued an opinion that the shower tray in question was not an infringement. The appellant subsequently requested a review of that decision under s.74B.

The Hearing Officer ordered certain parts of the original opinion to be set aside. However, no faults in the overall conclusions of the examiner were found. The appellant then sought to challenge that decision pursuant to s.97 of the Act and rule 77K of the Patent Rules 1995 (“the Rules”).

At this stage, a number of issues had to be decided upon, namely:

  • Whether there had been a decision which could be appealed against;
  • If so, whether the fact that the right of appeal was inherent in the procedure meant that it could only lead to a non-binding opinion or decision and therefore precluded the court from hearing the appeal; and
  • If not, whether the appeal in this case should have been allowed.

The court held as follows:

  • It was manifestly the intention of both s.74B of the Act and rule 77K of the Rules that a right to an appeal was to exists where it related to part of an opinion that had not been set aside on review.
  • The appeal in this case was not excluded by any of the provisions referred to in s.97 of the Act, nor was it excluded by rule 77K of the Rules. Therefore, the appellant had a right to appeal against the review decision of the Hearing Officer which had partially upheld the original opinion of the examiner.
  • Both the Act and the Rules provided a system for the provision of non-binding opinions which were potentially of great value to all parties concerned with the validity or infringement of a particular patent. The system also provided for an application, which could be made by the patent holder, for a review of an unfavourable opinion and for a right of appeal against an unfavourable decision on such a review.
  • Such an appeal did not involve an academic question, but whether the opinion to which the patent holder was entitled had been incorrectly concluded. In such circumstances, it would be wrong to decline to exercise the jurisdiction allowed for by Act and the Rules.
  • On appeal, the Hearing Officer's review decision was to be reversed only where it could be demonstrated that he had failed to consider an error or erroneous conclusion when conducting the review of the original opinion.
  • On the evidence, both the examiner and the Hearing Officer had directed themselves correctly in law. Both had properly considered the Patent in the light of the specification and from the point of view of a skilled person.

Accordingly, in such circumstances, the opinion was correct. Therefore the appeal was dismissed.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.


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