DLP Ltd, Re UK Intellectual Property Office Decision

An appeal under the statutory scheme for Comptroller’s opinions is a substantive appeal which the Patents Court should hear, even though the opinion and review decision are non-binding. The court’s task is ordinarily to review the Hearing Officer’s decision, with appropriate respect for the nature of the examiner’s opinion and the material available. The court should intervene only where the examiner made an error of principle or reached a clearly wrong conclusion, and the Hearing Officer failed to recognise that error. The court should not determine the underlying infringement question afresh or merely substitute its own reasonable view.

DLP Limited requested an opinion under Patents Act 1977, section 74A, on whether the supply of a third party’s shower tray would infringe its patent. The examiner concluded that it would not. On review, the Hearing Officer set aside parts of the reasoning but upheld the overall conclusion. DLP appealed under section 74B.

The appeal raised whether the review decision was appealable, whether the court should decline to hear an appeal concerning a non-binding opinion, and what standard of review applied. On the merits, the issue was whether the installed tray included a trough within the meaning of claim 1.

1. Appealability and jurisdiction. The Hearing Officer had decided that no reason had been shown to set aside the examiner’s overall conclusion. Section 97 of the Patents Act 1977, read with section 74B and rule 77K, conferred a right of appeal where the review decision upheld an opinion wholly or in part. The appeal therefore lay as of right.

2. Non-binding opinions. The principle in Sun Life Assurance Company of Canada v Jervis [1944] AC 111, concerning academic appeals where no live controversy remained, did not require the court to decline jurisdiction. The statutory scheme expressly provided for review and appeal by a patent holder. The question whether the opinion had reached the wrong conclusion was a living issue, notwithstanding that the resulting opinion was non-binding.

3. Standard of review. Applying CPR 52.11 and Du Pont Trade Mark [2003] EWCA Civ 1368, an appeal under rule 77K was a review of the Hearing Officer’s review of the examiner’s opinion. The examiner’s opinion might reasonably differ from another view because it was based on material submitted for the opinion procedure and often incomplete. The Hearing Officer should find the opinion wrong only for an error of principle or a clearly wrong conclusion. The appellate court should reverse only where the Hearing Officer failed to recognise such an error or clearly wrong conclusion.

4. Construction and infringement. The examiner correctly directed himself under section 125 of the Act and Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9. The core conclusion that claim 1 required the shower tray itself to include a trough was a reasonable view and was not clearly wrong. Although installation formed a trough from the tray and surrounding flooring or ramp, that did not make the trough part of the tray for the purposes of the claim.

5. The appeal was dismissed. The court declined to revisit the underlying infringement question merely because it might have preferred aspects of the detailed reasoning.

1. UK Intellectual Property Office: An examiner issued an opinion on 20 October 2006 that the third party’s shower tray did not infringe. On 26 April 2007, the Hearing Officer set aside parts of the reasoning but decided that no reason had been shown to set aside the overall conclusion.
2. High Court (Patents Court): The appeal under section 74B of the Patents Act 1977 was dismissed.