Haberman v Comptroller General of the Patent Office & Anor

Section 118 of the Patents Act 1977 requires the Comptroller to provide information relating to a published patent application which is available from the Patent Office’s official records. It does not create a procedure for investigating and establishing facts that the Office’s records do not contain. The Act must be interpreted by reference to its language; subordinate rules cannot alter that meaning. The provisions concerning unpublished applications are limited exceptions to the general protection of confidentiality. In particular, section 118(5) concerns applications divided or split during patent prosecution, rather than every later application concerning overlapping subject matter. An applicant therefore could not compel the Comptroller to determine the date on which an unpublished application had been withdrawn.

The claimant appealed against the Patent Office’s refusal to provide the date on which her earlier patent application, GB 9107381, had been withdrawn. The Office’s records for the relevant period had been destroyed. The claimant argued that section 118 of the Patents Act 1977, read with rule 92 of the Patents Rules 1995, required the Comptroller to establish the date, including by obtaining evidence from witnesses if necessary.

The information was sought because the withdrawal date affected whether a later application, GB 9207766, could claim priority under article 4 of the Paris Convention for the Protection of Industrial Property. The central questions were the scope of section 118 and whether section 118(5) applied to the two applications.

1. The appeal was dismissed. The claimant could not obtain from the Comptroller a central determination of the date on which the unpublished application had been withdrawn. The issue was one for the European Patent Office’s Board of Appeal and any other tribunal before which the priority question arose.
2. The Patents Act 1977 must be interpreted first by examining the words enacted by Parliament. The executive cannot use rules made under the Act to alter its meaning. Rule 92 identifies dates about which information may commonly be requested, but it cannot expand section 118.
3. Section 118(1) requires information relating to a patent application to be provided after publication, subject to prescribed restrictions. The court construed this as referring to information available from the Patent Office’s official records. The Comptroller may use the Office’s internal resources to correct an official record shown to be wrong or reasonably doubtful, but section 118 does not generally require her to obtain information from outside persons and re-supply it to the requester.
4. Section 118(2) establishes the general principle that documents or information concerning an unpublished application must not be communicated without the applicant’s consent. Section 118(3)(b) permits, but does not require, the communication of prescribed bibliographic information. The reference in rule 95 to the fact that an application has been withdrawn did not establish a duty to provide the date of withdrawal.
5. Section 118(5) was not applicable. Properly construed, the reference to a new application filed “in accordance with rules” concerned divisional or otherwise split applications arising during patent prosecution, including applications under section 15(4) or section 8. It did not cover any later application by any person with overlapping subject matter, since that construction would substantially undermine the confidentiality protected by section 118(2).
6. The respondents were awarded their assessed costs: £2,561.15 payable to the Comptroller and £3,078.65 payable to Playtex, within 14 days.

The judgment records an appeal from a refusal by the Patent Office to provide information under section 118 of the Patents Act 1977. The appeal was dismissed by the High Court (Patents Court), with costs awarded to the respondents.