Explaining Patent Litigation 5: leave to appeal

The fifth guest post in Liz Cohen's Explaining Patent Litigation series, on patent litigation in England and Wales, deals with an important and sensitive topic:the mechanism for appeal in patent disputes. Liz, a partner in the IP specialist practice of Bristows LLP, explains why it is that an unsuccessful litigant can't just appeal at will but has to get leave to do so. This is what she writes:

Why is permission needed to appeal?

For those who do not practise Patent litigation in the Courts of England and Wales, the need for a party to seek permission to appeal a judgment is often considered quirky. Permission to appeal a County Court or High Court decision is now required in virtually all cases, compared to (for example) France and Germany, where permission to appeal to a higher court is an automatic right.

A few years ago, the requirement to seek permission to appeal was challenged (see Pozzoli SPA v BDMO SA and Moulage Industriel de Perseigne SA [2007] EWCA Civ 588.) Pozzoli argued that Article 32 the TRIPS Agreement (which reads "An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available") imposes an obligation to grant permission to appeal where a patent has been revoked at first instance, even if there is no real prospect of success on appeal.

The Court of Appeal dismissed Pozzoli's argument that Article 32 requires a full judicial hearing on the merits and held that a decision by the Court of Appeal as to whether or not to grant permission to appeal from an order for revocation is a "judicial review" within the meaning of Article 32 of the TRIPS Agreement.

However, the Court of Appeal went on to observe that, in patent cases which are not very clear and which would not be understood sufficiently readily by the Court of Appeal in an hour or so, the better course was normally for the trial judge to grant permission to appeal. This was because the Court of Appeal, when faced with an incomplete understanding of the case and a plausible skeleton argument seeking permission to appeal, would be likely to grant permission in any event.

So it still remains the case that a party wishing to appeal a judgment from a lower court must first convince the judge who made the decision to be appealed that the appeal has a real prospect of success or that there is some compelling reason why the appeal should be heard. Examples are cases raising questions of great public interest or questions of general policy. Alternatively, following Pozzoli, permission may also be granted if a party can convince a judge that it would take the Court of Appeal more than an hour to sufficiently understand the case to make a meaningful decision on permission to appeal. In practice, this is often a more appealing submission than trying to convince a Judge that he got it wrong. Failing that a party can still apply directly to the appeal court in an appeal notice.

Any permission granted may be limited to particular issues to be heard on the appeal or may be subject to conditions, for example, deferring the hearing of the appeal to a later date.

In all cases the appellant (or intended appellant, if that party is seeking permission from the appeal court) must request permission to appeal in an appellant’s notice. The appellant’s notice must be filed at the appeal court within 21 days after the date of the decision of the lower court that the appellant wishes to appeal unless an alternative period is directed by the lower court (which may be longer or shorter than 21 days). An appellant who requires more than 21 days should apply to the lower court when the judgment is given.

Next week: Expedited patent trials

Evidence "not a question of principle", so no appeal

In an earlier post, PatLit reported on Molnlycke Health Care v BSN Medical Ltd [2010] EWCA Civ 988, in which the Court of Appeal for England and Wales dismissed an appeal against a refusal to stay UK proceedings on the basis that a Swedish court was already seised of the matter in dispute. Jacob LJ said then that, when the matter first came before his court, it was not entirely clear from the papers whether the Swedish court was seised with the same issue as that in the English proceedings. The court approached the Swedish judge, who responded "immediately and helpfully in that spirit of cooperation between European judges which could not have existed even 20 years ago". The immediate and helpful response was that she was seised of different issues. The UK action would not therefore be stayed.

BSN then sought permission from the Court of Appeal to lodge a further appeal to the Supreme Court. Jacob LJ (giving the Judgment of the Court) has refused that request. As Jacob LJ explained:

"1. The Court has considered a number of written representations from the solicitors for BSN seeking permission to appeal to the Supreme Court from our decision of 30th July 2010. No application for such permission was made at the time we gave that decision, though it obviously could have been.

2. The case turned on whether the Swedish Court was first seized of the issue of whether or not the Mölnlycke patent claim covered the BSN actual products. We asked the Swedish Judge whether that was in issue and got a clear answer – not “as the case stands now.”

3. The matter relied upon for permission to appeal concerns communications between the Swedish Judge and the lawyers for BSN subsequent to our decision and a subsequent decision in Germany. The suggestion is that these materials show that the Swedish court may be seized of the issue.

4. Whether it is already so seized turns entirely on the evidence. As the evidence stood before us it was clearly not so seized. No question of principle - still less one of general importance – arises.

5. For that reason we refuse permission to appeal to the Supreme Court".