Virgin Atlantic Airways v Contour Aerospace and others: Which country did you say?
- Virgin Atlantic Airways v Contour Aerospace and others: Which country did you say?
- Entitlement to damages - In the balance
- CJEU rules on cross-border interim relief in patent proceedings
- The role of post-dated evidence in UK patent litigation
- Amending a granted patent to avoid invalidity
- Patents County Court decides patent dispute between two multinational corporations
- Patent extensions: continuing ambiguity on the application of the SPC Regulation
- Other News - Latest on Unitary Patents Court
The High Court has recently held that it is not entitled to review administrative decisions of the EPO declining to give declaratory relief to Contour Aerospace (formerly Premium Aircrafts Interiors UK).
This was a consolidated hearing of five actions all relating to three European patents owned by Virgin (908 and its two divisionals, 711 and 734) concerning aircraft seats which could be converted to flat beds.
In summary the actions included: three patent infringement actions together with attacks on validity; a fourth action between Contour and Virgin concerning a declaration of infringement for a modified seat design; and a fifth action concerning whether the EPO should not have granted the 908 Patent with GB as one of the designated states.
It is this last action which this article will take a closer look at.
The "administrative" error (non-designation)
Patent 908 is a divisional application applied for using electronic form 1001E. This form assumes that all contracting states are to be designated unless the applicant specifically designates otherwise. In this case, Virgin provided a list of over 20 countries, which did not include Great Brittain (GB) and which expressly stated that GB was not designated. Despite this clear desire not to designate GB at all, or to immediately countermand the mandatory designation, the EPO proceeded to process the application as if GB were included.
During opposition proceedings to Patent 908, Contour wrote to the EPO to request correction of the designation of GB as "an obvious mistake" under Rule 140 EPC. The Opposition Division forwarded the request onto the Examining Division (ED) to consider. The ED decided that it was not necessary to correct the decision to designate GB on a number of grounds, including the fact that the designation fee for GB had been paid and afterwards the designation of GB had never been questioned by Virgin, and that even if this had been an oversight by the EPO, the EPO would have been bound by the principle of good faith having accepted the designation of GB throughout examination proceedings. Contour appealed to the Technical Board of Appeal (TBA), but the TBA held that Contour's Appeal was inadmissible as Contour were not a party to the examination proceedings under Article 106 EPC.
Having failed before the EPO, Contour turned to the UK IPO Comptroller for correction of the register under Rule 50 of the Patents Rules 2007. The Comptroller dismissed the application as he would have to decide "whether or not the European patent (UK) exists", which he felt to answer would mean he would have to conduct the equivalent of a judicial review of the EPO's determination, which would be wrong in principle.
Contour therefore applied to the High Court to resolve the issue.
Contour submitted that decisions of the EPO are justiciable in the English courts under modern principles of private international law. This is because the EPO purports to grant domestic private law rights which are reflected in the domestic intellectual property register.
Virgin's main argument was that the country designation was not a matter to be investigated by the English Courts since to do so would be a collateral attack on the decision of the EPO which the English court should not entertain.
In resolving whether a national Court was entitled to give declaratory relief to address the administrative error by the EPO, Mr Justice Floyd considered a variety of sources. First, he acknowledged that there was a longstanding principle of English common law that any individual affected by an act of a domestic public authority should be able to enquire into the legality of that act. This right can also be found to a certain extent in Article 6(1) of the European Convention on Human Rights, and in European Law.
However, Mr Justice Floyd added that the present case differed in that the acts of the authority which were being challenged in the English courts as being acts of an international organisation set up by international treaty. Mr Justice Floyd cited various authorities that showed that in these circumstances the English courts do not regard themselves as competent to adjudicate upon the legality of acts performed by international organisations pursuant to an international treaty. In particular, Mr Justice Floyd considered the case of Lenzing AG's European Patent (UK)(2). In this case, Lenzing had been unsuccessful before the TBA to overturn an earlier order that their patent be revoked. Consequently the Comptroller of the UKIPO made an entry to that effect on the register. Lenzing sought judicial review of the Comptroller's action (and thereby the TBA's decision) and sought rectification of the register under section 34(1) Patents Act 1977 to remove it. Mr Justice Jacob (as he then was) dismissed the application and concluded that that the Patents Act made it clear that the EPO should have the final say on revocation.
Having considered the various authorities, Mr Justice Floyd rejected the Defendants' arguments that the domestic law enabled an English Court to pronounce on international law and that, as there were no equivalent protections under the EPC, that meant it was not compatible with Article 6.
The Judge concluded that the English Courts could not give the declaratory relief sought by Contour to address the administrative error by the EPO:
"Not every decision in the grant procedure which may adversely affect the right of an individual is capable of challenge; a line has to be drawn between those decisions which are capable of a full challenge and those which are not, or which are simply to be subject to a review. The EPC as a whole has decided where those lines are to be drawn. The extent to which the designation of the UK may be challenged in proceedings before the EPO, namely by asking the appropriate division to review its decision, represents the agreement of the contracting states on where the line is to be drawn in that respect."
Deciding whether or not to look behind a domestic public authorities' decision has always been a tricky issue for the English Courts to deal with, never mind a decision by an international authority. This case provides further evidence of the English Courts' reticence to question decisions of international authorities.