Manual of Patent Practice

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Section 97: Appeals from the comptroller

Section last updated: January 2016.

97.01

This section provides for appeals to the court from decisions of the comptroller. It applies, with certain exceptions (see 97.03), to all such decisions under the 1977 Act and rules.

97.02

[deleted]

 
Section 97(1)
Except as provided by subsection (4) below, an appeal shall lie to the Patents Court from any decision of the comptroller under this Act or rules except any of the following decisions, that is to say -
(a) A decision falling within section 14(7) above;
(b) a decision under section 16(2) above to omit matter from a specification;
(c) a decision to give directions under subsection (1) or (2) of section 22 above;
(d) a decision under rules which is excepted by rules from the right of appeal conferred by this section.

Appeals to Patents Court

97.03

r.51 CPR 52.11

Except in the case of proceedings held in Scotland by the comptroller see 97.10, an appeal lies to the Patents Court from any decision of the comptroller under the Act or rules thereunder except as follows. The exceptions are decisions under s.14(7) regarding the abstract; decisions under s.16(2) to omit disparaging or offensive matter from a specification or from any document made available for public inspection under s.118; decisions to give directions under s.22(1) or (2) prohibiting publication of information for security or safety reasons; and other decisions under rules which are excepted by rules from the right of appeal, ie under rule 106 remission of fees by the comptroller, see 123.16, rule 88 directions by the comptroller that proceedings should be held in Scotland, see 123.25 to 123.30 and rule 100(3) (certain decisions on review of a Patent Office opinion). An appeal to the Patents Court 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. In the REEF Trade Mark case [2003] RPC 5, the Court of Appeal considered the extent that a decision of a tribunal should be reviewed. The Court confirmed that findings of primary fact would not be disturbed by a court unless the hearing officer made an error of principle or was plainly wrong on the evidence, and held that there was no error of principle simply because a judgment or decision could have been better expressed. In considering how reluctant an appellate court should be to interfere with the evaluation of, and conclusion of the primary facts of the case, there was no single standard to lay down, but the most important variables included the nature of the evaluation required, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence. Where no oral evidence had been heard by a tribunal, Robert Walker LJ held that “the appellate 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”. The guidance from this judgment was taken into account in the appeal to the Patents Court in Hartington Conway Ltd’s Patent Applications [2004] RPC 7 heard after Part 63 of the Civil Procedure Rules came into effect. In finding no error in the approach of the hearing officer either to the assessment of the witnesses or to the evidence before him, Pumfrey J held that this was a case where the highest degree of reluctance should be felt in revisiting the findings of primary fact. It would also seem necessary following the Court of Appeal’s decision in Merck & Co Inc’s Patents [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. Furthermore, in Dyson Ltd’s Trade Mark Application [2003] RPC 47, Patten J held that Art.6 of the European Convention on Human Rights did not compel the court to conduct a re-hearing in the case of any appeal from an ex parte decision; the power to order a re-hearing was present under CPR 52.11(b) and could be exercised in rare cases in order to allow justice to be done.

97.04

The Patents Court confirmed, in Omron Tateisi Electronics Co’s Application [1981] RPC 125, that the right to appeal under the Patents Acts and Rules against decisions of the comptroller is a general one to which the only exceptions are those in s.97(1), see 97.03. It is therefore applicable to administrative decisions under the Patents Acts and Rules such as exercise of the comptroller’s power under r.110 to grant a certificate that there had been a general interruption in the postal services. The court used its right under s.99 to exercise any power which the comptroller could have done see 99.01 to itself grant such a certificate.

97.04.1

There is no appeal from decisions of the Office in its capacity of receiving office under the PCT. However, such decisions are open to judicial review (R v Comptroller- General of Patents, ex parte Archibald Kenrick & Sons Ltd [1994] RPC 635, R v Comptroller- General of Patents, ex parte Drazil [1992] RPC 479, R v Comptroller-General of Patents, ex parte Celltech Ltd [1991] RPC 475, R v Comptroller-General of Patents, ex parte Penife International Ltd [2004] RPC 37).

97.05

The procedure for appeals to the Patents Court from decisions of the comptroller is prescribed by Rule 63.16 of the Civil Procedure Rules (CPR) which in turn directs that CPR Part 52 (and its Practice Direction) applies to appeals from decisions of the comptroller.

[ See chapter 7 of the Patent Hearings Manual for procedure relating to such appeals. ]

 
Section 97(2)
For the purpose of hearing appeals under this section the Patents Court may consist of one or more judges of that court in accordance with directions given by the Lord Chief Justice of England and Wales after consulting the Lord Chancellor.

97.6

Appeals to the Patents Court under s.97 are heard by one or more of the Patents Court judges, see 96.05 and 96.06.

97.7

[deleted]

 
Section 97(3)
An appeal shall not lie to the Court of Appeal from a decision of the Patents Court on appeal from a decision of the comptroller under this Act or rules -
(a) except where the comptroller’s decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or
(b) except where the ground of appeal is that the decision of the Patents Court is wrong in law;
but an appeal shall only lie to the Court of Appeal under this section if leave to appeal is given by the Patents Court or the Court of Appeal.

Appeals to Court of Appeal

97.08

An appeal lies to the Court of Appeal from a decision of the Patents Court on appeal from a decision of the comptroller under the Act or rules where (a) the comptroller’s decision was under any of certain specified sections of the Act; or (b) the ground of appeal is that the decision of the Patents Court is wrong in law. The specified sections are s.8, 12 or 37 (entitlement), s.18 or 20 (whether the application complies with the Act and rules within the prescribed period), s.27 or 75 (amendment of specification after grant), s.40 (compensation of employee inventor), s.61 (infringement) or s.72 or 73 (revocation). In Smith International Inc’s Patent [2006] FSR 25, the relationship between s.97(3) and s.55 of the Access to Justice Act 1999 was considered by the Court of Appeal. Unlike s.97(3), the latter provision requires permission for a second appeal to be given by the Court of Appeal and it sets special stringent requirements to grant such permission. The Court of Appeal held that there had been no express or implied repeal or amendment of the particular appeal procedure in s.97(3) for patents by s.55 of the Access to Justice Act 1999, and thus the Patents Court could grant leave to appeal further.

97.09

The procedure for appeals to the Court of Appeal is prescribed by Part 52 of the Civil Procedure Rules and its Practice Direction.

[ See chapter 7 of the Patent Hearings Manual regarding such appeals. ]

 
Section 97(4)
An appeal shall lie to the Court of Session from any decision of the comptroller in proceedings which under rules are held in Scotland, except any decision mentioned in paragraphs (a) to (d) of subsection (1) above.

Appeals from decisions in proceedings in Scotland

97.10

r.88 is also relevant

Where there is more than one party to proceedings, a party to those proceedings may request the comptroller to direct that the hearing or hearings, if any, in such proceedings should be held in Scotland, see 123.25 to 123.30. Where, as a result, proceedings are held in Scotland, an appeal lies to the Court of Session from any decision of the comptroller in those proceedings except any decision mentioned in the second sentence of 97.03.

 
Section 97(4)
The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under subsection (2).

97.10.1

A further subsection (4) was added by the Constitutional Reform Act 2005 allowing for the Lord Chief Justice of England and Wales to nominate a judicial officer holder to exercise his functions in nominating High Court judges to sit in the Patents Court.

 
Section 97(5)
An appeal shall not lie to the Inner House of the Court of Session from a decision of an Outer House judge on appeal from a decision of the comptroller under this Act or rules -
(a) except where the comptroller’s decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or
(b) except where the ground of appeal is that the decision of the Outer House judge is wrong in law.

97.11

Decisions of the Outer House judge of the Court of Session from decisions of the comptroller (see 97.10) cannot be appealed to the Inner House unless the comptroller’s decision was under any of certain specified sections of the Act (the same as those mentioned in 97.08) or the ground of appeal is that the decision of the Outer House judge is wrong in law.

[ See chapter 8 of the Patent Hearings Manual regarding appeals in Scotland.]