Wednesday, 3 April 2013

Appeals to an Appointed Person: might it work for patents too?

The United Kingdom Intellectual Property Office (IPO) has published a consultation paper on whether to extend the use of Appointed Persons from trade mark law to to patents and supplementary protection certificates (SPCs).

Under the law as it currently stands, trade mark appeals from the decisions of IPO hearing officers may be made to the High Court (of which the Patents Court forms part) or to a specially designated Appointed Person.If an appeal is made to the Patents Court, further appeals may be made to the Court of Appeal and to Supreme Court. However, in the case of an appeal to the Appointed Person, a device which was introduced as a means of preventing the costs of an appeal from spiralling upwards, the decision of the Appointed Person is final and no appeal may be made on substantive legal matters. Much use has been made of this facility in trade mark disputes, and it appears that a substantial majority of appeals are to an Appointed Person rather than to the Court.

There appears to be little reason to think that appeals on matters pertaining to SPCs would be brought to an Appointed Person as a matter of choice since, even though the Appointed Person may refer questions to the Court of Justice of the European Union for a preliminary ruling, both proprietary pharma and generic pharma sectors are likely to want rulings at the highest level, where they are of greater precedental value.  However, when it comes to regular patent disputes involving individual inventors and small businesses, the prospect of litigation ending after a single appeal may be quite tempting.

The closing date for the submission of responses is 21 May 2013.

Click here for a little more background
Click here for the consultation paper

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