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European IP Bulletin, Issue 2, May/June -
Patents
Patents
Amendment: The Patents Act 1977 (Electronic Communications) Order, 2003
The UK has amended the Patents Act, 1977 ("the Act") by SI 2003/512 made under the Electronic Communications Act, 2000 and Tribunals and Inquiries Act, 1992 with effect from 1st April, 2003.
S. 124A has been inserted after S. 124(3) of the Act, which gives the power to the Comptroller to make directions as to the form and manner in which documents may be delivered to her or the Patent Office in electronic form or using electronic communications. S. 130(1) of the Act has been amended to add the definition of ‘electronic communication’, being given the same meaning as that in Electronic Communications Act, 2000. The Comptroller or the Patents Office may treat a document as not having been delivered if the form and manner of its delivery does not comply with the directions. S. 124A (6) and (7), respectively, state that the Comptroller may make directions that the delivery of the document in electronic form or using electronic communications to her or the Patent Office would not be treated as delivered unless its delivery has been acknowledged. The Comptroller, under S. 124A (11), may vary or revoke any of her directions by a subsequent direction. Also, under S. 124A (13), when any document has been delivered by the Comptroller or the Patent office using electronic communication, the delivery shall be deemed to be effected by them properly addressing and transmitting the electronic communication. The UK Register of Patents has been kept in electronic form for some time and this is now complemented by the amendments, which should lead to cost reductions both for patent applicants and the UK Patent Office. More importantly, electronic communication would be a faster mode of communication, as compared to applications made by post or otherwise, when establishing priority is time critical.
Significance of Date of Withdrawal of Patent Applications
Haberman v Comptroller General of the Patent Office, [2003] EWHC 430 (Pat)
The Claimant, in Mandy Haberman v. The Comptroller General of the Patent Office and another, appealed against the refusal by the British Patent Office to furnish information concerning the date of withdrawal of her previous patent application under S. 118 of the Act.
The European Patent Office had revoked the corresponding patent in Europe (except the UK) in opposition proceedings because the claimed priority date could not be accorded under Article 4 of the Paris Convention, which allows a subsequent (new) application to be treated as the first application in a Paris Convention State provided the earlier application was withdrawn or abandoned without being published or leaving any rights outstanding before the date of filing of the subsequent application. It appeared from Patent Office records that in this case the Claimant had failed to withdraw her first application for patent protection (8th April, 1991) before filing the second patent application (7th April, 1992), thus losing the date of priority to subsequent inventors.
In her case the Claimant had asserted that Sub-Section (5) of Section 118 Patents Act placed an obligation on the Patent Office to provide information concerning the earlier application, and allow her to inspect relevant documents which would prove the earlier application was withdrawn in time. The Patents Court (Peter Prescott Q.C., sitting as a Deputy High Court Judge) dismissed the appeal. The Court held that the Comptroller General was to provide the information which was available from the Patent Office’s official record, and not any information which they did not possess. Thus, under S. 118 of the Act, the Comptroller General could only give information and not ascertain information through witnesses or otherwise. Furthermore, the Court went on to hold that S.118 (5) does not entitle any person to information relating to the unpublished application as this could potentially lead to access to confidential information of business rivals. Instead Section 118 (5) was intended to deal with divisionals and other split applications which need to be accessible to third parties after publication. Although, since June 2001, the British Patent Office has recorded the dates of withdrawal of patent applications, it would be prudent for an applicant also to keep a proper detailed record, when an application is withdrawn.
Coflexip Sa and Coflexip Stena Offshore Ltd v Stolt Offshore MS Ltd., [2003] EWCA Civ 296
The Court of Appeal (Chancery Division) (Aldous, L.J., Kay, L.J. and Jonathan Parker, L.J.) held that Coflexip was required to re-plead its claim for damages for economic loss that were associated with a previous successful patent infringement litigation.
Background:
In a previous action, Coflexip sued Stolt for infringement of its European Patent (UK) No. 0478742, which protects a device and process for unrolling of flexible tubular conduits essentially vertically. Laddie J. had held that there was infringement and that the patent was valid. This judgement was appealed and upheld in the Court of Appeal. A petition for an appeal to the House of Lords was refused. In the enquiry as to damages, Coflexip filed Points of Claim that were amended, and which were answered by Stolt. Stolt then sought to strike out the amended Points of Claim seeking damages for loss of profits. On the 30 July 2002, following a first application by Stolt, Jacob J held that the pleading of Coflexip was insufficient and that they should re-plead the claims to loss of profits. It was also held, after a second application by Stolt, that Coflexip should also re-plead their claims relating to reduction of prices.
Coflexip appealed.
Judgement:
The Court of Appeal held that for both heads of damage, loss of profit and reduction of price, the same issue of law arose. Coflexip argued that it only needed to prove that the acts of the defendant caused the plaintiff to lose profits and to reduce their prices because of the Defendant’s wrongful acts. Conversely, in the view of Stolt, the plaintiff had to go further and prove a causal link between the infringement of the patent itself and the economic losses alleged to have been suffered.
The Court of Appeal, held that the claims for damages for economic loss should be re-pleaded by Coflexip. The pleading did not contain sufficient precision to establish a causal link between the infringement and the economic loss.
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