Two bites at the cherry, but no enhanced costs

The recent decision of a hearing officer for the UK's Intellectual Property Office (IPO) in Wragg v Donnelly BL O/280/10, 9 August 2010 has already been picked up by the SOLO IP weblog (here) on account of its novelty value, since the case was -- unusually -- heard outside London. But it is interesting for another reason: costs.

The patent in this dispute was for a device for conducting fluid released from a pressure relief valve of a boiler, via a conduit, to the outside of a building and changing direction of the fluid using a cup-shaped portion at the end of the conduit. By the time the hearing officer had determine the issues of validity and infringement, those issues had already been the subject of two non-binding opinions under the Patents Act 1977, s.74A, in which it was considered (i) that Wragg had indirectly infringed the patent and (ii) that the patent was valid.

In proceedings under s.71 of the same Act, Wragg sought unsuccessfully to establish that the same patent was both invalid and non-infringed. Donnelly, feeling aggrieved that his adversary had taken two bites at the cherry, argued that he should be awarded costs greater than the ordinary scale costs since the same issues had already been the subject of the two opinions.

According to the hearing officer, the whole point of the IPO's non-binding opinions service was to provide an inexpensive way for parties to get an impartial view of a dispute between them. If the use of this service did not actually enable the parties to resolve their dispute, it would be wrong to punish either party for wanting to have the matter fully explored in a way which was simply not possible under the opinions service, since it lacked cross-examination and other procedural devices which were available to the courts. Bearing this in mind, enhanced costs would not be awarded.