Nokia Oyj (Nokia Corporation) v Ipcom GmbH & Co KG

For the purposes of Patents Act 1977, section 63(2), an allegation that patent claims were drafted without good faith or reasonable skill and knowledge requires more than proof that an amendment added matter. The question is whether the claims were drafted without the requisite standard of conduct. A reasonably competent patent attorney may advance claims and reasonably believe them valid even where a court later finds added matter. Patent prosecution may properly seek the widest coverage supportable by the known facts. Privileged communications need not be disclosed where the requested information would reveal communications with patent attorneys or their transmission to the draftsman.

The patent had been held infringed by two Nokia devices. Nokia then alleged that IPCom’s claims had been drafted without good faith or reasonable skill and knowledge, relying on the removal of a random-number comparison feature and its subsequent reinstatement by amendment. The court had permitted further information before deciding the issue. Nokia sought striking out of the damages claim for alleged non-compliance or, alternatively, a finding that the patent had been drafted without the required standard. IPCom relied on privilege and disputed the substantive allegation.

1. The court rejected Nokia’s application to strike out the claim for damages and costs. IPCom’s answers adequately identified the persons responsible for instructing and drafting the patent. Its reliance on privilege did not breach the order for further information.

2. Although knowledge of an external fact is not generally privileged, questions concerning IPCom’s knowledge of the legal objection to claim breadth would inevitably engage privileged communications with its patent attorneys. The information sought was not relevant independently of knowing what was communicated to the draftsmen.

3. A finding that deletion of a feature added matter did not establish that no reasonably competent patent attorney could honestly or without negligence have proposed the claims. The EPO examiner had accepted the claims despite the objection, and the same objection had provisionally been rejected in opposition proceedings. The material therefore supported the conclusion that a reasonably competent patent attorney could have advanced the claims and reasonably believed them valid.

4. The duty of a patent attorney is to obtain the widest coverage available consistently with what can properly be advanced on the known facts. Seeking broad claims is not equivalent to seeking invalid claims. On the material before the court, it was impossible to conclude that the claims had been drafted without good faith or reasonable skill and knowledge.

5. The court declined to decide the alternative issue of whether there was a sufficient nexus between any lack of good faith or reasonable skill and knowledge and Nokia’s damages or costs. That question was left for a case in which it arose directly. The court found no lack of good faith or reasonable skill and knowledge and directed that the form of order be addressed.