Othman Bin Ahmad v The Comptroller-General of Patents, Designs and Trade Marks

An action challenging patent examination, deemed refusal and alleged misconduct by the Comptroller may be struck out where it discloses no legally viable cause of action. A challenge to the substance of an examination decision must ordinarily proceed by appeal under section 97 of the Patents Act 1977, subject to the applicable time limit. Acts and proceedings connected with examination and investigation attract the statutory immunity in section 116. A patent application treated as refused under section 20(1) can be reinstated only on a timely request satisfying section 20A and rule 32 of the Patents Rules 2007. The court may also grant summary judgment where the claim has no real prospect of success and no compelling reason for trial.

The claimant, resident in Malaysia, applied for a UK patent entitled “Optimum Hybrid Vehicle”. Following examination reports raising lack of novelty and lack of inventive step, the application was treated as refused after the claimant failed to pursue the application within the prescribed period. He later alleged delay, corruption, missing documents and unlawful conduct, and sought damages, an injunction and effectively the grant of a patent.

The Comptroller applied to strike out the claim under CPR 3.4(2)(a) and, alternatively, for summary judgment under CPR 24.2. A second application sought a retrospective one-day extension for filing the first application.

1. Disposition. The claim form and statement of claim were struck out under CPR 3.4(2)(a). Summary judgment would also have been granted under CPR 24.2. The action was certified totally without merit. The claimant was ordered to pay the defendant’s costs, summarily assessed at £20,000, within 28 days.
2. The allegations of malicious delay, bias, corruption and improper examination were unsupported and meritless. Even assuming the pleaded facts in the claimant’s favour, the pleadings disclosed no reasonable grounds for bringing the claim.
3. Under section 20(1) of the Patents Act 1977, an application not determined to comply with the Act and rules before the prescribed period ends is mandatorily treated as refused. The provision involved no discretionary decision by the Comptroller on the facts presented.
4. A complaint about the substance of the examiner’s objections should have been brought by appeal under section 97. No such appeal was formulated or brought within 21 days, and the challenge would in any event have failed because lack of novelty was independently fatal.
5. Under section 20A and rule 32 of the Patents Rules 2007, reinstatement required a request complying with the rules and made within twelve months of termination. That period was fixed and non-extendable. No timely reinstatement request was pleaded.
6. Section 116(b) conferred broad immunity on the Comptroller and relevant officers for liability connected with examinations, investigations, reports and consequent proceedings under the Act. The claimant therefore had no cause of action concerning the conduct of the patent examination.
7. The defendant’s one-day delay in filing its application was remedied retrospectively under CPR 3.1(2)(a). Applying the Denton principles, the breach was neither serious nor significant, inadvertent, promptly corrected and caused no prejudice.