Premature appeal gets buried

While the substantive grounds of this morning's decision of Mr Justice Kitchin in Medeva BV v The Comptroller General of Patents [2010] EWHC 68 (Pat) are likely to be discussed elsewhere (a comment is expected soon on The SPC Blog), there's an interesting procedural point too -- whether the appellant in this case had appealed too soon, before the unfavourable decision had in fact been made. The judge explained as follows:

"The procedural point

34. The Comptroller contends that the notice of appeal was filed by Medeva prior to any appealable decision having been made by the Intellectual Property Office ("IPO"). The relevant facts are these.

35. The SPC applications in issue were filed on 17 April 2009, some two months after the grant of the Patent. But it is also right to record that the applications were preceded by related SPC applications filed in 2005 which had generated a good deal of correspondence but no decision.

36. By letter dated 25 June 2009, the agents acting for Medeva wrote to IPO indicating that if they did not hear from it with a decision in relation to the applications by 31 July 2009 then Medeva would treat the failure to make a decision as a refusal of the applications.

37. By letters dated 31 July 2009, the examiner on behalf of the Comptroller responded in relation to each application. Each letter was headed "Examination as to formal and substantive requirements" and contained detailed reasons as to why the examiner considered the applications should be refused. The letters included this expression of opinion: "Consequently, it remains my opinion as the substantive examiner on behalf of the Comptroller that your application does not meet the requirements of Article 3(a) of the Regulation and that it should be refused under Article 10(2) of the Regulation". The letters invited a reply by 3 December 2009.

38. On 24 August 2009, the agents for Medeva wrote again, referring to their letter of 25 June 2009 and reiterating that Medeva would treat the failure to make a decision as a refusal of the applications and that it would bring the matter before the Patents Court as an appeal. They emphasised Medeva's concern to ensure that any dispute concerning the applications was resolved before the Patent expired. The letter concluded: "Please advise before 28 August 2009 if you do not accept our position that the refusal in your letters of 31 July 2009 is a final decision, failing which we will assume you agree".

39. By letter dated 1 September 2009, the examiner replied making clear that IPO's position was that the letters of 31 July 2009 contained the opinion of the substantive examiner acting for the Comptroller but did not constitute decisions actually to refuse the applications. Such decisions would have to be made by a hearing officer either after a hearing or, if Medeva so wished, on the basis of the papers on file.

40. In the meantime, on 29 August 2009, Medeva filed its notice of appeal. In its grounds of appeal, it stated that it regarded the letters of 31 July 2009 as a decision refusing the applications. This prompted an application by the Comptroller to strike the appeal out as having been made prematurely and on the basis there was no decision from which to appeal.

41. Subsequently the Deputy Director issued his decision and Medeva amended its notice of appeal to refer to it. Consequently it is accepted by all parties before me that the appeal can now be heard. Nevertheless the Comptroller requests that I decide whether the notice of appeal was properly filed on 28 August 2009 for the following reasons. First and most importantly, the Comptroller is concerned that unless this issue is resolved it will result in a series of premature and potentially speculative appeals. In that regard it seems that a number of third parties have inquired of IPO as to how Medeva's appeal has been heard so quickly after the decision of the Deputy Director. Second, the parties have expended costs in dealing with the issue, not least as a result of the Comptroller's decision to apply to strike out the appeal.

42. In my judgment the letters dated 31 July 2009 were not decisions against which appeals could properly be filed under s.97 of the Patents Act 1977. It is clear from the terms of the letters that they did not purport to be decisions. Rather they contained a statement of the opinion of the examiner and invited a response. Moreover, practitioners well know from the IPO Manual of Patent Practice that an examiner has no authority to make a decision on behalf of the Comptroller to refuse an SPC application.

43. Further, I do not accept the Comptroller was guilty of any actionable failure to make a decision or that any inaction by the Comptroller can properly be said to amount to a decision to refuse the applications or any other procedural impropriety. IPO did respond to the applications within the one month deadline set by the letter of 25 June 2009 and, moreover, did so in terms which were both clear and reasonable. Nothing further was heard from Medeva until their agents sent to IPO the letter dated 24 August 2009 with its four day deadline. The response from IPO by the letter dated 1 September 2009 was prompt, though just outside the deadline. Once again the terms of the letter were both clear and reasonable and provided no basis for treating the letters of 31 July 2009 as anything other than that which they purported to be, namely an expression of the opinion of the examiner. In the event, the Deputy Director, acting on behalf of the Comptroller, did issue his decision on 16 November 2009, some seven months after the filing of the applications.

44. For all these reasons I find that the appeal was indeed filed prematurely".