PATENT — Practice — Appeal from Patent Office — Request for Comptroller to issue opinion — Review of opinion — Appeal from decision on review — Patents Act 1977, s74A, s74B, as inserted by the Patents Act 2004, s 13 — Patent Rules 1995 (SI 1995/2093), r 77A-K, as inserted by the Patents (Amendment) Rules 2005 (SI 2005/2496), r 12

In re DLP Ltd [2007] EWHC 2669 (Pat)

Ch D: Kitchin J: 16 November 2007

It was the intention of s 74B of the Patents Act 1977 and r 77K of the Patents Rules 1995 that an appeal should lie as of right where it related to part of an opinion issued by the Comptroller, pursuant to s 74A of the Patents Act 1977, which had not been set aside by a hearing officer on review.

Kitchin J so held when dismissing an appeal by D Ltd from a decision of Hearing Officer Roger Walker of 26 April 2007 ordering that certain parts of an opinion of the Comptroller be set aside but concluding that there was no fault in the overall conclusion.

D Ltd sought an opinion from the Comptroller under s 74A of the Patents Act 1977 as to whether a shower tray, made and sold by a third party, infringed its United Kingdom patent. The examiner issued an opinion that the shower tray did not infringe. D Ltd requested a review of the opinion. On review the hearing officer, acting for the Comptroller, ordered that certain parts of the original opinion be set aside but found no fault with the overall conclusion. D Ltd appealed under s 74B of the Act and r 77A-K of the Patent Rules 1995.

KITCHIN J said that it was manifestly the intention of s 74B of the Act and r 77K of the Rules that an appeal should lie as of right where it related to part of an opinion that was not set aside. Both the Act and the Rules conferred jurisdiction upon the court to deal with an appeal from a decision on review, which it would be wrong for the court to decline to exercise. The nature of such an appeal was limited to a review of the hearing officer’s decision. The Comptroller’s decision to treat appeals of the instant kind as inter partes appeals and not to appear as a matter of course was entirely reasonable.

Appearances: Richard Hacon (Marks & Clerk) for D Ltd; Michael Tappin (Treasury Solicitor) for the Comptroller General of Patents, Designs and Trade Marks.

Reported by: Nicola Berridge, solicitor