European and UK Patent Offices

EPO decision of validity not final; UK Patent Office decisions

In last year’s Patent Review we reviewed Beloit v Valment and Lenzing in which the English Court held that it could revoke a European Patent (UK) while proceedings were continuing in the EPO; and that revocation of a patent by the EPO was final

Buehler AG v Chronos Richardson Limited shows that an EPO decision of validity can be overturned by the English Court. In that case, in opposition proceedings in the EPO the Defendant had, unsuccessfully, tried to have the Appellants patent declared invalid.

Subsequently infringement proceedings were started in the Patents County Court. The Defendant counterclaimed for revocation on the same grounds as before the EPO. The Patentees objected on the grounds that the decision of the EPO rendered the attack “res judicata”. The Court held that for res judicata to apply the judgment of the earlier Court, in this case the decision, must finally and conclusively decide the validity of the patent. That it did not do. Validity is finally decided in revocation proceedings by the Court of a Contracting State. It therefore followed that no cause of action estoppel arose from the decision of the Opposition Division.

The court also stated that issue estoppel can arise where a plea of res judicata cannot be established because the causes of action are not the same. But it cannot arise unless the judgment relied upon as giving rise to the estoppel was a final judgment. That being so, no issue of estoppel arose either in this case.

The UK Patent Office’s role

Two decisions of the UK Patent Office have highlighted the Office’s role in handling patents and patent applications.

In Tristram’s Patent Mr Tristram, the registered proprietor of a patent, sent his renewal fees to the DTI rather than to the Patent Office. The Patent Office failed to follow their standard procedure of writing to him warning him that his patent would lapse if renewal fees were not paid; and the office subsequently advertised that the patent had lapsed. Subsequently there was an investigation and Mr Tristram paid the Patent Office the correct fees so that the patent would be reinstated; but refused to accept the terms required by the Patent Office allowing third parties who had begun in good faith to do an act which would constitute an infringement of the patent during the period of lapse to continue those activities (and see comments under “prior use” above).

The Hearing Officer confirmed that the third party terms must be accepted as a condition of reinstatement.

In Spectra-Tech’s Patent Application Spectra-Tech applied for a UK patent. Subsequently their patent agent asked for the application to be withdrawn and this was done. The agent then discovered that the request for withdrawal had been made in error. He wrote immediately retracting the withdrawal; and on a hearing contending that the withdrawal was conditional upon the repayment of the Patent Office fees.

The Hearing Officer held that the clear and natural meaning of the words in Section 14(9) of the 1977 Act was that a withdrawal, once made, was not susceptible of cancellation or retraction. The Comptroller did not have the power to override a withdrawal properly made.