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.

Grounds of challenge narrow for Comptrollers' Opinions

In a ruling last week by Mr P. Thorpe on behalf of the Comptroller of Patents in the UK, Lundberg & Son VVS-Produckter AE v ZGP Ltd BL O/080/10, the request of Lundberg that a review be made of a non-binding infringement opinion was refused (such opinions may be obtained from the Comptroller under the Patents Act 1977, s.74B; though non-binding, they are relatively cheap to obtain and can be quite useful). The opinion had concluded that there was no infringement of Lundberg's patent by ZGP's Ecocamel shower head.

According to Lundberg, the opinion wrongly interpreted the manner in which ZGP's product worked. However, Mr Thorpe concluded that under the Patents Rules 2007, r.98(5)(b), the only ground on which a non-infringement opinion could be reviewed was if the decision was based on an incorrect interpretation of the patent and, as Mr Justice Kitchin had established in DLP [2007] EWHC 2669 (Pat) [noted here by the IPKat], the review could only consider whether the examiner had made an error of principle or his opinion was clearly wrong. Lundberg's request did not meet these requirements and must be dismissed -- though the company still had the option of getting a second, genuinely binding opinion, by suing for infringement.

Are non-binding Opinions a useful tool in patent litigation?

It's a while since I last browsed the UK Intellectual Property Office's Requests for opinions page, which lists the patents in respect of which, for a very moderate fee, an informed opinion has been procured as to (i) the patent's validity and (ii) whether specific activities appear to infringe it. These opinions are non-binding but, at their point of introduction, I argued that they could be particularly useful for any party contemplating litigation.

Although we have not yet seen out July, the number of requests for Opinions this year is 23, which suggests that it will be the busiest year yet for the Comptroller's services (between 2006 and 2008 the annual total of requests ranged from 27 to 30). More significantly, both among those who seek requests and among those whose patents are their subjects, the names of some businesses that are notably active in the field of patent litigation can be seen.

PatLit would be pleased to hear from readers who deploy Opinions preparatory to litigation, or who have thought about doing so and then decided not to. Also, it would be good to hear from readers outside the UK as to whether any comparable service is offered in their jurisdictions. Do please let me know by posting a comment below or by emailing me here.