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Court of Appeal reverses PCC decision on validity of honey wound dressing

06/06/2012

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Court of Appeal reverses PCC decision on validity of honey wound dressing

snIPpets – June 2012

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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 Fieldfisher.

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