Monkey Tower Limited v Ability International Limited

The Comptroller’s discretion under section 75(1) of the Patents Act 1977 to permit post-decision amendment is not exercised automatically. It must be guided by procedural fairness and the overriding objective.

Relevant considerations include the resources already devoted to the proceedings, the extent and likely cost of any re-litigation, the likelihood that a valid amendment can be proposed, and prejudice caused by delay. The restrictive approach applicable after a fully contested trial does not invariably apply to shorter, paper-based revocation proceedings before the Comptroller.

This was an appeal by Monkey Tower Limited from a decision of the Hearing Officer acting for the Comptroller concerning revocation of Ability International Limited’s patent under section 72(1)(a) of the Patents Act 1977.

The Hearing Officer found several claims invalid but considered that an allowable amendment might be possible. He therefore gave the patentee six weeks to request further amendments under section 75(1), failing which the patent would be revoked. The central issue was whether that further opportunity was procedurally unfair and contrary to principles governing post-trial validating amendments.

1. The appeal was dismissed. The Hearing Officer had been entitled to give the patentee an opportunity to request amendments.

2. The Comptroller’s procedural practice remains subject to scrutiny on appeal. It must accord with procedural fairness and the overriding objective contained in Rule 74 of the Patents Rules 2007. Principles explained by the Senior Courts, including those in Nikken Kosakusho Works v Pioneer Trading Co [2006] FSR 4, Vector Corp v Glatt Air Techniques [2008] RPC 10 and Nokia GmbH v Ipcom [2011] FSR 15, must be taken into account.

3. An opportunity to amend after an interim decision is not granted as a matter of course. The discretion under section 75(1) must have regard to all relevant circumstances, including:

   • the resources already devoted to the proceedings;
   • the extent of any re-litigation and the likely time and cost of a further hearing;
   • the likelihood that a valid amendment can be proposed; and
   • whether delay will prejudice the revocation applicant.

4. The distinction between High Court infringement or revocation litigation and proceedings before the Comptroller may be relevant because the latter are often simpler, cheaper and less time-consuming. The court rejected the broader propositions in Smith International Inc v Specialised Petroleum Services Group Ltd [2005] EWHC 686 (Ch) that any scope for a validating amendment should ordinarily result in an opportunity to amend, and that revocation proceedings justify a more generous approach.

5. On the facts, the proceedings had been decided on short written submissions by consent, without an oral hearing. The patent and prior art were technically simple, and the Hearing Officer had identified a possible clear amendment avoiding anticipation and obviousness. Any further proceedings were likely to involve only short written submissions. The opportunity to amend was therefore procedurally fair.

• High Court (Patents Court): Monkey Tower Limited v Ability International Limited [2014] EWHC 18 (Pat) dismissed the appeal from the Hearing Officer’s decision.