Adjournment in the UK for amendment in the EPO

PatLit is pleased to welcome this guest post from Paul England (Senior Associate, Taylor Wessing, and an occasional guest blogger on the IPKat). Here Paul picks on an important procedural matter: the adjournment of national proceedings so that one of the parties can make an application for amendment before the European Paten Office.  Paul explains:

Adjourned ...

The electronics cases passing through the courts of England and Wales have resulted in a number of important decisions recently: only last year, IPCom GmbH & Co KG v HTC Europe Co Limited & Others (noted by the IPKat here) refreshed the statement of the relationship between the British patents courts and the European Patent Office; now, a different aspect of that relationship is at issue in Samsung Electronics Co Ltd v Apple Retail UK Ltd and Another [2014] EWCA Civ 250. In Samsung v Apple, the Court of Appeal has taken the step of adjourning appeal proceedings, pending an application for amendment of the patents in suit in the European Patent Office (EPO).

The substantive proceedings concern the validity and infringement of two Samsung patents, which Apple is alleged to infringe with products including the iPhone 4, the iPhone 4S and the iPad 2 3G. At first instance, the patents had been held invalid on the basis that neither was entitled to its claimed priority date and by reason of intervening prior art. They were also, in the judgment of Floyd J (as he was when presiding in the case) obvious. Samsung had also made conditional applications to amend each of the patents before trial, each of which the judge held would not render them valid. The judge declared them invalid by final order on 8 May 2013. However, he granted permission to appeal and the hearing of the appeal was listed for 4 or 5 March with a time estimate of three days.

Subsequently, on 5 November 2013, Samsung filed amendment applications for both the patents in the European Patent Office further to the Article 105 procedure introduced by the European Patent Convention 2000. The timing of these applications, Samsung explained, was due to the need to coordinate these amendments (which would have pan-European affect) with the various parallel actions concerning equivalent parts of the patents being fought in the national courts of Europe. Acceleration of these proceedings was however sought and granted.

In marked contrast to opposition proceedings, as the Court of Appeal noted, the EPO amendment procedure is intended to be simple and quick. In this case, the court accepted that the amendments were likely to be determined by June 2014, before the proceedings in England and Wales were likely to be fully disposed of. The court also stated that the Patent Act 1977 specifically contemplates the possibility of concurrent proceedings between the UK and the EPO and there is no prohibition on central amendment while proceedings are pending in a national court. Accordingly, the Court of Appeal thought there was no abuse of process in the circumstances before it.

Indeed, given the legitimacy of central amendment and the relatively short time periods involved, the Court of Appeal held that it makes obvious sense to accede to Samsung’s request for adjournment pending central amendment. The court’s judgment was reinforced by the risk that it might otherwise come to a decision on patent claims that are deemed, post-amendment, never to have existed.