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Comptroller: to be or not to be
involved, that is the question?
Where a patent is revoked, the patentee will
invariably seek to appeal the decision. However, what happens
if the case settles shortly after appealing? The Respondent will no
longer have an interest in the outcome of the proceedings and so
disappear from the scene, but unless the patentee pursues the
appeal he will have lost his patent protection as against other
third parties.
The recent UK appeal in Apimed
Medical Honey Limited v Brightwake Limited [2012] EWCA Civ
5 provides the most recent example that in such
situations the patentee is obliged to invite the Comptroller to
intervene and effectively play the role of Respondent whilst
bearing the costs of such intervention. The Comptroller's
role being to protect the public interest by intervening to the
extent necessary to prevent invalid patents being restored to the
register. This follows the guidance in Halliburton
Energy Services Inc v Smith International (North Sea) Ltd [2006]
EWCA Civ 185 – prior to this case, standard
practice was to restore the patent to the register simply at the
request of the patentee on settlement of a revocation
action.
The Facts
Apimed owned a patent which described the use
of a gel containing honey as a medical dressing. Apimed
claimed that Brightwake had infringed its patent by selling a
medical dressing called Algivon. Brightwake denied
infringement and counterclaimed for revocation of the patent
claiming it was invalid due to lack of novelty and was
obvious. The case came before the Patents County Court where
HHJ Fysh QC held that the patent was not infringed, and was invalid
for obviousness.
Apimed initially appealed on both
points. However, Apimed and Brightwake subsequently reached a
settlement such that Brightwake had no ongoing interest in the
case. Apimed nevertheless wanted to establish that the patent
was valid and invited the Comptroller to consider whether he wished
to appear and make written submissions on the appeal – an
invitation which was duly accepted by the Comptroller. The
Court of Appeal subsequently found in favour of Apimed and allowed
the Appeal.
Comment
There is obviously a public interest that
should prevent an invalid patent to be restored to the register.
Both the European Patent Office (EPO) and continental European
systems, such as Germany, follow similar principles: Rather
than involving the Comptroller, the adjunctive body is obliged to
consider continuing a revocation challenge even if the party suing
for revocation withdraws the proceedings. See for example Rule
84(2) EPC 2000 which provides that EPO may continue with an
opposition out of its own motion, even where the opposition is
withdrawn. Similarly, sec. 87 of the German Patent Act
provides that the Patents Court has to investigate the case and is
not bound to the submissions or pleadings of the parties.
The fact that the appeal faced some opposition
from the Comptroller not only gives the restored patent some
respectability but Apimed could now seek a Certificate of Contested
Validity. Such a certificate is particularly useful if a
third party were to contest the validity of the patent in the
future as, if unsuccessful, he would be liable for indemnity
costs.
It is of interest to note that in the current
case, Apimed instructed a QC and junior Counsel to assist in the
appeal. Similarly, Brightwake had instructed a QC in the
proceedings before the Patents County Court. In contrast, the
Comptroller only instructed junior Counsel. One can only
speculate as to the reasons for, what on the face of it, appears to
be an uneven resourcing of the appeal as between the Appellant and
the Comptroller. The Comptroller may have considered that junior
Counsel sufficed for this particular action, equally Apimed may
have chosen to spend significantly more on its appeal than on the
Comptroller's costs with the hope of an improved likelihood of
success. In such cases, the Comptroller is already at a
relative disadvantage in that he does not have the benefit of
having been involved in the case from the start. For the
majority of cases, the patentee will be in a better strategic
position where the Respondent is the Comptroller rather than the
original Respondent. Thus, even though the Appellant bears
the Comptroller's costs, such costs may be a small price to pay to
get a valuable patent back to the register.
However, whilst the Comptroller may not start
on a level playing field, it does not necessarily mean that the
appellant will always be successful. Indeed, in the leading
case of Halliburton v Smith, the Appeal was
dismissed.
Dr Ulrike
Till, Partner, Beatriz San Martin, Senior
Associate and Philip Bilney,
Trainee, IP Protection and IP
Enforcement and Litigation at Field Fisher
Waterhouse.
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