Reaux-Savonte v Comptroller-General Of Patents, Designs And Trade Marks

An unsuccessful appeal against a patent refusal will ordinarily attract an award of costs to the Comptroller. A costs award may be withheld or reduced where hardship or a significant point of general legal interest is shown, but neither was established here.

Permission to appeal requires a realistic prospect of success. A proposed appeal seeking reconsideration of patentability law in the context of artificial intelligence was unsuitable where the decision below was confined to the specific application and existing law. Further amendments were refused where no proposal had been advanced and the case had already been decided.

The appellant appealed against the refusal of patent application GB1520019.9 under Patents Act 1977, s.1(2). The substantive appeal had been dismissed in [2021] EWHC 78 (Ch). This judgment addressed the consequential costs order, the appellant’s request for leniency, permission to appeal, and a possible amendment of the claims.

The issues were whether costs should be waived or reduced, whether the proposed appeal had a real prospect of success or raised a suitable issue for reconsideration of the law, and whether amendment should be permitted after judgment.

1. The appeal was formally dismissed. The Comptroller was entitled to costs. Although the Patents Hearings Manual described it as normal practice for the Comptroller to seek costs after dismissal of an ex parte appeal, there was no basis here for withholding them. No undue hardship had been shown, and the appellant’s position that software-patent eligibility rules should be reconsidered did not establish a significant point of general legal interest.

2. The costs claimed were modest by patent-litigation standards. The appeal required substantial work because it concerned the computer-program exclusion, the claimed contribution, and the application of the relevant signposts to an unclear patent application. The appellant’s lack of representation also increased the work required of the Comptroller’s team. Costs were therefore summarily assessed at £8,000, payable under the confidential schedule agreed between the parties.

3. Permission to appeal was refused. The appellant accepted that the application should technically be refused under the existing law, and the appeal had no real prospect of success. The substantive decision did not establish that artificial-intelligence inventions were generally unpatentable or provide general guidance under section 1 of the Patents Act 1977. It was confined to the contribution disclosed in this particular application. Any wider reconsideration of the Act in light of artificial-intelligence developments was unsuitable for determination in this case.

4. Further amendment was also refused. The decisions had properly proceeded on the patent application as a whole and the contribution identified in it. No amendment proposal or application had been advanced, and it would not have been procedurally appropriate to entertain amendments at that stage.

• High Court (Chancery Division): The earlier substantive appeal from the hearing officer’s patent-refusal decision was dismissed in [2021] EWHC 78 (Ch). The present judgment formally dismissed the appeal, determined costs, and refused permission to appeal.