APPEALS
Last major update: July 2009
| Right to appeal | 7.01-7.04 |
| Nature of the appeal | 7.05-7.07 |
| Period for appeal and extension thereof | 7.08-7.09 |
| Office procedure | 7.10-7.16 |
| Recovery of comptroller's costs | 7.17-7.20 |
| Further appeal | 7.21-7.23 |
| Judicial review | 7.24-7.28 |
| Appeals to the Registered Designs Appeal Tribunal | 7.29-7.39 |
| Period for appeal and its extension | 7.33-7.38 |
| Judicial review | 7.39 |
| Annex - Format for brief to counsel | |
Previous chapter: Chapter 6
Next chapter: Chapter 8
RIGHT TO APPEAL
7.01As explained in Chapter 5, almost all decisions of the comptroller in respect of patents and design right are subject to appeal. Under section 97(1) of the Patents Act 1977 and the Patents Rules 2007, however, the following are expressly excluded from the right to appeal:
- - adequacy and reframing of the abstract under section 14(7);
- - omission of matter from a specification under section 16(2);
- - directions in respect of security and safety under section 22(1) or (2);
- - decisions under rule 106 (remission of fees)
- - decisions under rule 88 (proceedings in Scotland)
- - decisions under rule 100 to set an opinion aside
7.02Appeals from decisions in respect of patents and of those design right matters referred to the comptroller under section 246(1) of the Copyright, Designs and Patents Act 1988 lie to the court, whilst appeals from decisions under sections 247 and 248 of the 1988 Act on the settlement of the terms of a design right licence of right lie to the designs Appeal Tribunal - see section 97(1) of the Patents Act 1977 and sections 249 and 251(4) of the 1988 Act. This chapter is concerned mainly with the principles and procedures governing appeals to the court. Where they differ, those relating to appeals to the Tribunal are explained further below under "Appeals to the Designs Appeal Tribunal".
7.03Following the entry into force of Part 63 of the Civil Procedure Rules 1998 on 1 April 2003, patent appeals go to the Patents Court and design right appeals to the court go to the Chancery Division in accordance with rule 63.17. In both cases appeals are governed by the general procedural rules for appeals in Part 52 of the Civil Procedure Rules and its associated Practice Direction 52. The provisions are explained in Tribunal Practice Notice 1/2003 (Revised) [2003] RPC 46.
7.04Any decision of the comptroller for which there is no formal appeal route is still open to judicial review - see below.
NATURE OF THE APPEAL
7.05Generally, under rule 52.11 of the Civil Procedure Rules 1998, the appeal is limited to a review of the comptroller's decision (unless the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a re-hearing) and the court will not receive oral evidence or evidence that was not before the comptroller. Explaining the nature of a review under rule 52.11, the Court of Appeal in REEF Trade Mark [2002] EWCA Civ 763, [2003] RPC 5 confirmed that findings of primary fact would not be disturbed unless the hearing officer made an error of principle or was plainly wrong on the evidence: the factors to be considered included the nature of the evaluation required, the standing and experience of the fact-finding tribunal and the extent to which it had been necessary to assess oral evidence. As stated by Robert Walker LJ, where no oral evidence had been heard, the court should show "a real reluctance but not the very highest degree of reluctance to interfere in the absence of a distinct and material error of principle". In the patents case Hartington Conway Ltd's Patent Applications [2003] EWHC 1872 (Ch), [2004] RPC 7 Pumfrey J, following REEF, considered that it would be necessary to produce a compelling case for revisiting findings of fact made by the lower tribunal. It would also seem necessary following the Court of Appeal's decision in Merck & Co Inc's Patents [2004] EWCA Civ 1545, [2004] FSR 16 that a ground of appeal that the hearing officer erred "in principle" should actually identify the principle and not be used simply to mask a complaint about the assessment of evidence by the hearing officer.
7.06The above reasoning applies to reviews of opinions, as was confirmed by Kitchen J in DLP Limited [2007] EWHC 2669 (Pat), and would seem to apply to appeals from ex parte as well as inter partes decisions - see Dyson Ltd's Trade Mark Application [2003] EWHC 1062 (Ch), [2003] RPC 47, where Patten J held that Article 6 of the European Convention on Human Rights did not compel the court to conduct a re-hearing in such a case.
7.07In accordance with rule 52.10 of the Civil Procedure Rules, the court can exercise any power that could have been exercised by the comptroller. For patents, this applies in any case by virtue of section 99 of the Patents Act 1977.
PERIOD FOR APPEAL AND EXTENSION THEREOF
7.08Since an appeal to the court from a decision of the comptroller on patents or design right constitutes a "statutory appeal" within the meaning of paragraph 17.1 of Practice Direction 52, the period for the appellant to file his notice of appeal with the court is 28 days. In accordance with paragraphs 17.3 and 17.4, this period runs from the date of the decision or, where a statement of reasons is given later than notice of the decision, from the date on which the statement is received by the appellant. The comptroller would appear to have no power either to extend or to shorten this period: any application to vary the period should be made to the court under rule 52.6(1) of the Civil Procedure Rules and paragraphs 5.2 and 5.3 of Practice Direction 52 and should be lodged with the Chancery Clerk of the Lists. The parties cannot themselves extend the period by agreement. In inter partes proceedings, the respondent may also file a notice and must do so where he wants the court to uphold the decision of the comptroller for different or additional reasons. Unlike the appellant's notice, the period for filing is not governed by Practice Direction 52, and so the comptroller would appear to have the seemingly anomalous power to direct the period under rule 52.5(4) for filing the respondent's notice (see Smith International Inc v Specialised Petroleum Services Group Ltd BL O/009/05).
7.09This differs from the procedures under the superseded Practice Direction 49E, where the appeal period depended on whether or not the decision was on a matter of procedure and could be extended by the comptroller at the request of a party. However, similar provisions still govern appeals to the designs Appeal Tribunal and appeals to the Court of Session in Scotland - see below, and also Chapter 8.
OFFICE PROCEDURE
7.10The appellant and (if filing a notice) the respondent must each serve a copy of their respective notices on the comptroller as soon as practicable and in any event not later than 7 days after it is filed with the court - see rules 52.4(3), 52.5(6) and 63.17(3) of the Civil Procedure Rules 1998 and paragraph 17.5 of Practice Direction 52. When an appeal is lodged, the hearings clerk will send the file to the hearing officer and his or her assistant for information and comment, and will send an electronic copy of the decision to the court.
7.11In ex parte cases where the appellant requests a hearing on the papers, the hearing officer should consider whether, if the matters are straightforward, to accede to the request, or whether in more complex cases it would assist the court for the comptroller to be represented. In such cases, the comptroller should be represented by counsel (normally a junior barrister specifically appointed as Comptroller's Counsel), instructed by the Treasury Solicitor. The hearings clerk will make the necessary arrangements for instructing counsel.
7.12 The notice of appeal will go first to the Divisional Director, head of patent litigation. He or she will decide who should take the lead in handling the appeal. This may be a particular Deputy Director who is responsible for the subject matter and is familiar with previous appeals and with counsel's past experience. The original hearing officer will be kept fully informed and may assist. Once the hearings clerk has been given the date on which the appeal will be heard, the lead hearing officer should prepare an explanatory brief for counsel, if appropriate arranging for the original hearing officer to assist or take a major role in its preparation. A suggested format is shown in the Annex to this chapter. It should include the warning that the appeal must not be held in open court where an application is not open to public inspection. If the hearing officer thinks that the original decision is sufficient for this purpose, the brief should merely state that there is nothing to add to the decision. However, a fuller brief should be prepared when it is desirable to emphasise or elaborate on some point in the decision or to indicate some matter on which it is felt that a stand should be taken. It can be assumed that counsel will not depart from the line indicated by the decision and brief, although a change of approach may become necessary because of a point raised during the course of the court hearing. On a particularly tricky or important issue, either the hearing officer or counsel may request a briefing meeting.
7.13If the issue at stake is a particularly important one on which a number of other cases depend, Treasury Solicitors should be asked (via the hearings clerk) to approach the court and seek to have the appeal speeded up.
7.14Normally, the comptroller is not represented on appeal in inter partes proceedings. However where he has an interest, or a point of law is at stake which affects his jurisdiction, it may be appropriate. In Goddin and Rennie's Application [1996] RPC 141 the comptroller was represented solely to resist a claim by one party for an award of costs against the comptroller. In Luxim Corp v Ceravision Ltd [2007] EWHC 1624 (Ch), [2007] RPC 33, the comptroller was represented at an appeal concerning the circumstances in which he should decline to deal with entitlement references, and in Yeda Research and Development Company Limited v Rhone-Poulenc Rorer International Holdings Inc and others [2007] UKHL 43 the comptroller intervened in the House of Lords hearing since this case concerned a) whether a claim to entitlement must necessarily rest on a breach of some other rule of law and b) the extent of the comptroller's powers to allow amendment of pleadings.
7.15The hearing officer should not attend the appeal hearing. However, he or she should always arrange for someone from the Office (eg the hearing officer's assistant) to attend the appeal hearing for an ex parte case, and will usually do this for a inter partes case too.
7.16After the appeal decision has been handed down, the hearings clerk will circulate the case to the hearing officer and others for information. The hearing officer should recommend whether the case should be reported and make sure that any necessary further action is taken. For example, if the Office decision called for amendments to be made to a patent specification and the appeal was dismissed, the hearing officer may now need to make further directions to ensure the amendments are made.
RECOVERY OF COMPTROLLER'S COSTS
7.17It is the normal practice for the comptroller to ask for costs where an appeal on ex parte proceedings is dismissed. It is open to the comptroller not to press for an award of costs to be paid where the party is likely to suffer some form of hardship if a costs award is made against them; where a significant point of general legal interest is involved; if it appears that the likelihood of recovering costs is negligible or if the expense of recovery is likely to outweigh the amount of the award. Any decision not to press for an award, or not to pursue recovery of an award that has been made, should be made in conjunction with Finance Directorate.
7.18When costs are awarded to the comptroller, the hearing officer or hearing clerk should notify both the Finance Directorate and the officer in Litigation Section responsible for authorising payments to the Treasury Solicitor so that the recovery of the debt can be monitored. (A record of who has been notified should be made on the case file to avoid inadvertent multiple notifications.)
7.19Costs may be awarded against the comptroller where an appeal against an ex parte decision is upheld (Associated British Combustion Ltd's Application [1978] RPC 581; Omron Tateisi Electronics Co's Application [1981] RPC 125).
7.20For an appeal against an inter partes decision, it is not appropriate for the comptroller to seek an award of costs on appeal even if he is represented as amicus curiae, since he is not party to the proceedings. For the same reason, any claim for an award of costs should be resisted, as was successfully done in Goddin and Rennie's Application [1996] RPC 141.
FURTHER APPEAL
7.21For patents, under section 97(3) of the Patents Act 1977 further appeal lies to the Court of Appeal only under certain sections of the Act, mainly those dealing with ownership, validity and infringement, or where the decision of the Patents Court is alleged to be wrong in law. Leave to appeal must be obtained by applying directly to the Court of Appeal or to the Patents Court. In Smith International Inc v Specialised Petroleum Services Group Ltd [2005] EWCA Civ 1357, [2006] 1 WLR 252 the Court of Appeal held that there had been no express or implied repeal or amendment of the procedure in section 97(3) by section 55 of the Access to Justice Act which requires permission for a second appeal to be given by the Court of Appeal. For design right, leave to appeal from the decision of the High Court must be obtained from the Court of Appeal in accordance with rule 52.3 of the Civil Procedure Rules and section 4 of Practice Direction 52.
7.22Any further appeal to the House of Lords requires leave. Note that as from October 2009, the judicial functions of the House of Lords will be exercised by a new supreme court, as part of the changes introduced by the Constitutional Reform Act 2005.
7.23The procedures within the Office - eg for briefing counsel - are much the same as for the original appeal. Practice Directions and Standing Orders applicable to civil appeals in the House of Lords are to be found in the "Blue Book". However, the Office often gets little or no warning of when the appeal is to be heard.
JUDICIAL REVIEW
7.24Judicial review is another route by which decisions of the comptroller can be challenged. It is a procedure whereby the High Court (namely a Divisional Court of the Queen's Bench Division) can exercise its supervisory jurisdiction over the proceedings and decisions of inferior courts, tribunals or other persons or bodies which perform public duties or functions.
7.25Applications for judicial review are subject to the leave of the court. The main grounds on which leave might be granted are that:
- - there were no powers to make the decision in question, or the powers were not being used for their proper purpose or in a proper way;
- - the procedures by which the decision was reached were unfair;
- - the decision is one that no reasonable body could come to;
- - the decision was reached in breach of the Human Rights Act 1998 or the rules of natural justice.
7.26The court will not normally grant leave for judicial review where there is another avenue of appeal. This means that generally only decisions of the comptroller in respect of which no appeal is available are likely to be subject to judicial review (including decisions under the PCT - see Chapter 8). In Omron Tateisi Electronics Company's Application [1981] RPC 125 the High Court refused to exercise its discretion to grant an application for judicial review on the grounds that there were positive advantages in deciding the matter by way of appeal. However, the court observed that a litigant was under no obligation to exercise a right of appeal to the Patents Court from a decision of the comptroller before having recourse to the Queen's Bench Division for judicial review. For example, where the error alleged was obvious on the face of the decision and went essentially to jurisdiction (rather than to error of law not going to jurisdiction), judicial review to quash might be cheaper, quicker and more appropriate.
7.27The legal basis for judicial review comes from section 31 of the Supreme Court Act 1981, which provides for the following remedies:
- - Certiorari - an order quashing a decision or subordinate legislation that the court has found to be unlawful;
- - Mandamus - an order telling a body to do something it had previously unlawfully refused to do;
- - Prohibition - an order telling a body not to perform a particular act that the court has held to be unlawful;
- - Declaration - a declaration by the court of what the law is (eg that a decision was unlawful);
In practice, only certiorari and mandamus are likely to be relevant to proceedings before the comptroller, although in theory prohibition could also be. The court also has the power to issue an injunction or order damages to be paid.
7.28The relevant rules of court are contained in Part 54 of the Civil Procedure Rules. The procedures within the Office are essentially the same as in the event of an appeal.
APPEALS TO THE DESIGNS APPEAL TRIBUNAL
7.29Under section 249 of the Copyright, Designs and Patents Act 1988 appeal from a decision of the comptroller on the settlement of the terms of a design right licence of right lies to the designs Appeal Tribunal. The constitution of this tribunal is prescribed by section 28 of the Registered Designs Act 1949 as amended by paragraph 17 of Schedule 3 to the 1988 Act: it is normally composed of a High Court judge. It may exercise any power that could have been exercised by the comptroller - see section 28(7) of the 1949 Act and section 249(2) of the 1988 Act.
7.29.1 The Tribunals, Courts and Enforcement Act 2007 provides in section 143 for this Appeal Tribunal to be abolished and for appeals to be referred instead to the High Court or the Patents County Court. However that provision has yet to be brought into force: a series of commencement orders, of which the most recent is the Tribunals, Courts and Enforcement Act 2007 (Commencement No. 7) Order 2009, which have provided for commencement of other sections of the Act on a timetable up until 6 April 2009, do not yet apply to section 143.
7.30The procedural rules governing the Tribunal are contained in the Registered Design Appeal Tribunal Rules 1950 as amended in 1970. In the absence of any subsequent amendment to cater for design right appeals, it would seem that they apply to these by virtue of section 28(8) of the 1949 Act and section 249(2) of the 1988 Act.
7.31The Rules do not make clear whether the appeal to the Tribunal is a review of the comptroller's decision (as explained above for appeals to the court) or a full re-hearing. However in Masterman's Design [1991] RPC 89 at page 103 the Tribunal decided afresh whether to refuse registration of a design.
7.32In accordance with rule 2, the appellant should serve a copy of the appeal notice on the comptroller within 2 days of filing it with the Tribunal.
Period for appeal and its extension
7.33Rule 1(2) prescribes a period for appeal of 14 days for a decision on a matter of procedure and six weeks otherwise. In accordance with rule 4, the comptroller has the power to extend - but not shorten - this period upon request, provided the request is made before its expiry. Any request outside the prescribed period (which would include a request for a second extension within the period of the first extension) can only be granted by leave of the Tribunal, and should be lodged with the Registrar of the Tribunal at the Royal Courts of Justice.
7.34Corresponding provisions applied to patent appeals under the now superseded Practice Direction 49E (see "Right to Appeal" above). The procedure and case law developed under that Direction would therefore seem to apply mutatis mutandis to appeals from the comptroller to the Tribunal.
7.35Thus, it is for the hearing officer to determine whether the decision is on a matter of procedure (and that determination is itself a decision on a matter of procedure), and accordingly this must be stated in the decision. This can conveniently be done by a final sentence along the lines:
As this decision is [is not] on a matter of procedure, any appeal must be lodged within ....
The term "procedure" in this context should be interpreted as meaning steps to be taken in the proceedings in suit as distinct from the substantive result of the proceedings.
7.36Extensions of the period for appeal under rule 4 are discretionary and will not be granted lightly by the comptroller. As explained in Tribunal Practice Notice 3/2000, in deciding whether to grant an extension the hearing officer should have full regard to the same overriding objectives of rule 1.1 of the Civil Procedure Rules 1998 (see Chapter 1), one of which is to deal with cases expeditiously and fairly. Thus extensions should be granted only if there is a reason which is sufficiently strong to outweigh the potential harm to other parties and the public that may be caused by further delay.
7.37Like any other request for an extension of time (see Chapter 2), a request for extension of the appeal period must give full, detailed reasons. Before deciding the matter, the comptroller must give the other party an opportunity to make submissions. The parties must also be given the opportunity to be heard if they so wish, though normally they are content with written submissions.
7.38Some guidance as to reasons which might be allowable may be obtained from patents decisions under Practice Direction 49E prior to 1 April 2003 - see eg Clear Focus Imaging Inc v Contra Vision Ltd BL O/137/00, Takeda Chemical Industries Ltd's SPC Applications BL O/005/02 and Robinson and Brooks' Application BL O/262/02 allowing extension and Nachf's Application [1983] RPC 87 refusing one. However, each case must be assessed on its merits, because a reason that might be persuasive in one case might not be persuasive in another if the surrounding circumstances are different. An extension may be granted either for a specific period or for a period whose length is dependent on some other event.
Judicial review
7.39There is no right of appeal from decisions of the designs Appeal Tribunal, since an appeal to the Tribunal is not a proceeding in the High Court. However, decisions of the Tribunal are subject to judicial review, which would be heard in the High Court - see, for example, Ford Motor Co Ltd's Design Applications [1994] RPC 545.