Dealing with technical prejudice - and spurious TRIPs points

The Court of Appeal for England and Wales has firmly squashed the somehow alarming notion that an automatic right appeal against the revocation or cancellation of a patent was guaranteed in all countries that are Members of TRIPs (the Agreement on Trade-related Aspects of Intellectual Property). It did so in Pozzoli SPA v BDMO SA and others [2007] EWCA Civ 588 (available here in full on BAILII), a ruling on Friday 22 June 2007. The Court consisted of Lords Justices Mummery, Keene and Jacob - the last-named of whom delivered the judgment of the court.

Pozzoli patented a form of packaging for multiple CDs (a 'container for a plurality of discs, particularly compact discs'). The invention involved partially overlapping discs, with offset axes, so that the discs were physically separated. The prior art included a 'two-to-one tray' (this being a tray with recesses for accommodating two CDs side by side). While a tray made to accommodate one CD was virtually square, a tray made to accommodate two had dimensions in the ratio two-to-one, with the result that the two-to-one container was higher than that for a single CD. Pozzoli's design enabled two or more CDs to be packaged in a container of reduced height.

When Pozzoli sued for patent infringement; the defendants said the patent was invalid since the idea of overlapping the CDs in order to reduce the height of the container was obvious to anyone skilled in the art. Not so, said Pozzoli: the industry was prejudiced against overlapping CDs. At the trial, Mr Justice Lewison held that no long-felt demand for a container of intermediate height had previously remained unsatisfied by reason of prejudice: the invention was obvious and the patent invalid. Pozzoli appealed.

The Court of Appeal dismissed the appeal. First, the Court stated that the test for inventive step needed tidying up and clarifying - presumably in the wake of all the recent cases in which the test of inventive step has been tidied up and clarified.

Thus the required approach as to whether an invention is obvious starts with the following steps: (i) identify the notional 'person skilled in the art'; (ii) identify the relevant common general knowledge of that person; (iii) identify the inventive concept of the disputed claim or - if that couldn't readily be done - try construing it. The crucial issue, the court emphasised, was to discover the difference between what the patent claimed and the prior art.

At this point, the court's advice became more generalised and more reminiscent of homespun philosophy than hard and fast rules to be applied by patent examiners and lower courts. Thus don't worry if disagreement about the inventive concept of a claim gets too involved: if it does, just forget it and simply work on the features of the claim. Sometimes you don't need to get bogged down in finer points of construction since, even without them, the inventive concept was fairly apparent. In yet other cases, even trying to identify the inventive concept was an impractical exercise. In any event, the court said, identification of the concept was not the place where one took into account the prior art.

After all this, one must still identify what, if any, differences existed between the state of the art and the inventive concept of the claim. Only once reaching this point does it become necessary to consider whether those differences constituted steps which would have been obvious to the person skilled in the art, or whether they would have required any degree of invention.

The Court of Appeal then considered the relevance of the "technical prejudice" argument to a finding that there was an inventive step. It correctly observed that the prejudice that a particular idea would not work or was impractical was as much a part of the state of the art as any other part of the state of the art and, if that prejudice were shown to exist, the prior art would be viewed through the eyes of the person skilled in the art who shared that prejudice. A patentee who had shown that, contrary to the mistaken prejudice, the idea would work or be practical had shown something new. His contribution was novel and non-obvious and he deserved his patent. Where, however, the patent merely covered an old idea that was thought not to work or which was seen as being impractical but did not explain how or why, contrary to the prejudice, it did work or was practical, things were different. Such a patent contributed nothing to human knowledge and could not be justified. In thist case the notional person skilled in the art was someone who might wish to package discs, or make or design packaging for them. Such a person would know about common forms of packaging CDs, including the two-to-one tray. This being so, Lewison J was entitled to reject the suggestion that there was a prejudice in the industry against overlapping CDs.

The IPKat says, the bit I liked best about the decision comes right at the start: it's the argument that TRIPs requires an automatic right of appeal against the revocation or invalidity of a patent:

"Mr Mellor QC for Pozzoli, initially raised a point about the TRIPs Agreement, (Annex 1(C)) to the Treaty establishing the World Trade Organisation made at the Uruguay Round of the GATT talks in April 1994. He submitted that the effect of TRIPs is that we must give permission – even if there is no real prospect of success (the criteria for permission provided by CPR 52.3(6)(a)). It was a startling proposition, one which called for no reply and with which I can deal briefly.

The argument ran like this:

(i) Art. 32 of TRIPS provides: "An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available".
(ii) This means that a full judicial hearing on the merits is called for. A preliminary screening system for weeding out cases with no real prospect of success as now provided by the Rules will not suffice for this purpose.
(iii) Although TRIPs is an international Treaty and so does not itself form part of UK law, wherever it is possible for our courts to act so that the UK is not in breach of an international Treaty, they should do so. [I add that TRIPs is to be regarded as a Community Treaty as defined in s.1(2) of the European Communities Act 1972 (by virtue of SI 1995 No. 265) and so falls to be construed as it would be construed by the ECJ. That involves a purposive and teleological rather than literalist approach].
(iv) Thus the other possible ground for granting permission to appeal, namely "some other compelling reason" (CPR 52.3(6)(b)) is brought into play. The compelling reason is that if permission is not given, the UK will be in breach of its Treaty obligations.

A major flaw in the argument is simple: a decision by a Court of Appeal judge or judges (whether made on the papers or following an oral argument or both) as to whether or not to grant permission to appeal from an order for revocation is a judicial decision. It is a "judicial review" as called for by Art. 32. Nothing in TRIPs requires a member state to provide that its courts of appeal should hear cases which have been judicially determined to have no real prospect of success.

It may well be there is another flaw which may bring in the ECJ approach to construction to get a sensible result. Consider a case where a national Supreme Court, contrary to all decisions below, for the first time holds a patent invalid. Does Art.32 really require that there be a means of judicial review of this? Mr Mellor was forced to so submit. He postulated that the way round this would be for the Supreme Court having reached the decision that the patent is invalid to remit the case to the lower court so that it would be that court which actually revoked the patent so that there could be an appeal to the Supreme Court all over, thus complying with the Art. 32 requirement of a judicial review. Keene LJ aptly described this as a "dog's breakfast" solution.

The problem would not arise if one read Art. 32 as applying only to administrative or political decisions. Mr Mellor sought to rebut such a reading by reference to other provisions of the Treaty. These were Art.62.3 (requiring that certain "final administrative decisions [which include revocation of a patent] shall be subject to review by a judicial or quasi-judicial authority.") and Art. 41(4) (providing that "parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions, and … of at least the legal aspects of initial judicial decisions on the merits of the case"). Mr Mellor submitted that Art. 32, in referring to "any decision to revoke" must include judicial decisions to revoke, not merely administrative or other decisions because these other Articles recognise the distinction between administrative and judicial decisions.

If right, his submission means the Treaty requires the "dog's breakfast" solution or something similar. I doubt that, but it is not necessary to go into this further. The major flaw I have spelt out is quite enough to dispose of the TRIPs point here. It would be daft to require the grant of permission to appeal in a case where a court of appeal had judicially determined that the appeal had no real prospects of success".

European Patent Office guidelines on overcoming technical prejudice here
Pride and Prejudice here