Smith International Inc v Specialised Petroleum Services Group Ltd.

A specific statutory procedure for appeals from the Patents Court is not displaced by later legislation governing second appeals in general terms unless Parliament expressly repeals it or a contrary intention is sufficiently clear.

Accordingly, section 55 of the Access to Justice Act 1999 and CPR rule 52.13 do not apply to an appeal governed by section 97(3) of the Patents Act 1977. Permission may be granted by either the Patents Court or the Court of Appeal. An application to the Court of Appeal is governed by the ordinary permission threshold in CPR rule 52.3, including whether the proposed appeal has a real prospect of success.

The Comptroller's Hearing Officer held that a proposed patent claim for apparatus used to catch debris in a well bore lacked novelty. Lewison J allowed the patent proprietor's appeal and set aside that decision. The opposing party then applied directly to the Court of Appeal for permission to appeal.

The preliminary issue was whether the proposed appeal was subject to the stringent second-appeal regime in section 55 of the Access to Justice Act 1999 and CPR rule 52.13, or to the particular appeal procedure in section 97(3) of the Patents Act 1977. The answer determined both who could grant permission and the applicable permission threshold.

1. The application for permission to appeal was granted. The proposed appeal fell within section 97(3)(a) and (b) of the Patents Act 1977. The Comptroller's decision had been made under section 72, and the proposed grounds alleged that the Patents Court had erred in law by misconstruing the patent or the prior art.

2. Section 55 of the Access to Justice Act 1999 and CPR rule 52.13 did not apply. Section 97(3) was a particular statutory procedure for patent appeals. It allowed either the Patents Court or the Court of Appeal to grant permission. It had not been expressly repealed or amended by the later general legislation.

3. Nor had section 97(3) been impliedly repealed, amended or limited. Applying section 55 would cancel or deprive of practical effect the Patents Court's statutory power to grant permission. Clear words were required for that result. The express repeal in Schedule 15 Part III to the 1999 Act of a comparable appeal provision in section 42(3) of the Courts and Legal Services Act 1990 supported the conclusion that Parliament had not intended section 55 alone to displace every earlier particular procedure.

4. The court applied the general principles concerning implied repeal discussed in Henry Boot Construction (UK) Ltd v Malmaison Hotel (Manchester) Ltd [2001] QB 388. Although the arbitration decisions were distinguishable because only the High Court could grant permission under section 69(8) of the Arbitration Act 1996, their general treatment of implied repeal remained valid.

5. The decision did not affect appeals governed by section 11 of the Tribunals and Inquiries Act 1992. Under McNicholas Construction Co Ltd v Customs & Excise Comrs [2001] 1 WLR 17, such appeals are second appeals governed by section 55 and CPR rule 52.13. The Patents Comptroller was not among the tribunals specified for that purpose.

6. The ordinary permission standard in CPR rule 52.3 therefore applied. The proposed patent appeal had a real prospect of success, so permission was granted without deciding whether it raised an important point of principle or practice.

1. Court of Appeal (Civil Division): Held in [2005] EWCA Civ 1357 that the particular procedure in section 97(3) of the Patents Act 1977 remained applicable. Permission to appeal was granted.

2. High Court, Chancery Division, Patents Court: Lewison J allowed the appeal from the Comptroller and set aside the Hearing Officer's order that proposed claim 1 was invalid for lack of novelty. No citation is stated.

3. Comptroller of Patents: The Hearing Officer held that proposed claim 1 of UK Patent 2,335,687 was invalid for lack of novelty.