When paper-only proceedings may not provide the swiftest solution

Monkey Tower Ltd v Ability International Ltd [2014] EWHC 18 (Pat), a 24 January decision of Henry Carr QC, sitting as a Deputy Judge of the Patents Court, England and Wales, came across this blogger's desk. It is unlikely to get on to BAILII, though it will be of interest to anyone who wants to save costs in Patent Office hearings by opting for submissions in writing only, but who may not be happy with one or more of the possible outcomes.

In Monkey Tower's application to revoke a UK patent held by Ability, the parties consented to a decision without an oral hearing. Before the Patents Office, the Hearing Officer held that some of the claims were anticipated by existing patents, but allowed Ability a further opportunity to propose amendments to the patent within six weeks of the date of his decision. Monkey Tower appealed on the ground that the hearing officer had erred, either in law or in principle, in letting Ability have a further opportunity to propose making amendments. Though Monkey Tower conceded that, under section 75 of the Patents Act 1977, the Comptroller of Patents did have a discretion, the company argued that the hearing officer did not exercise that discretion in accordance with fundamental principles of law, in particular the principle of procedural fairness.

Henry Carr QC dismissed the appeal. In his view,

* where the Patents Office had developed a procedural practice, the courts could still scrutinise it on appeal. The Office needed to ensure that its practice was procedurally fair and accorded with the overriding objective in rule 74 of the Patent Rules 2007, that of dealing with cases justly.

* it was no longer correct that, where there was any scope for a claim-validating amendment, the patentee should autotomatically be given the chance to amend after an interim decision had been handed down. In this respect there was no difference between revocation and infringement actions, and there should not be a more generous attitude to post-decision amendments in revocation actions.

* a patent was a right in rem and, unless revoked, deterred the public from working within its claims -- and revocation proceedings were normally commenced by parties who were concerned about being sued for infringement. This being so, the exercise of discretion under section 75(1) of the Act, post-hearing, had to take regard of all circumstances which were relevant to the question of procedural fairness to the parties.

* depending on the facts, those relevant circumstances were likely to include

(i) the resources already devoted by the parties to the proceedings;

(ii) the extent of any re-litigation as a result of the amendment;

(iii) the likelihood that a valid amendment could be proposed; and

(iv) whether there was evidence that prejudice would be caused to applicant for revocation by the delay that would be occasioned by a post-decision amendment application.

Thus, while an opportunity to amend after an interim decision would not be accorded to the patentee as a matter of course, it might well be fair to give such an opportunity in appropriate cases.

* on the facts, the Hearing Officer was right go give Ability the chance to seek amendments within six weeks of the date of the decision under appeal, for three reasons. First, the parties had consented to a decision without an oral hearing. That had saved time and costs, but had meant that the parties had been unable to explore their submissions with the tribunal and answer questions from the tribunal. Secondly, the decision under appeal had been reached on the basis of only short written submissions from the parties. Thirdly, the opportunity for re-litigation was limited and any further proceedings were likely to take the form of short written submissions.