Shower trays - a matter of contested opinion

Last Friday, 16 November, Mr Justice Kitchin gave a ruling on a most unusual case, DLP Ltd's appeal in relation to a decision of a Hearing Officer of the UK Intellectual Property Office, [2007] EWHC 2669 (Pat) dated 26 April 2007 pursuant to section 74B of the Patents Act 1977

DLP owned a UK patent for shower trays, specifically low level shower trays which could readily be accessed by infirm or disabled people while seated in a wheelchair. DLP had sought a non-binding opinion opinion from the Comptroller of Patents, under section 74A of the Patents Act 1977, as to whether a shower tray made and sold by a third party infringed its patent. In accordance with the statutory scheme for the giving of non-binding opinions -- which is designed to facilitate the swift and cheap settlement of disputes by giving a party a better idea as to the strength of its case -- the examiner issued an opinion that the shower tray in issue did not infringe. Unhappy with this adverse ruling, DLP requested a review of that decision under section 74B. The Hearing Officer ordered certain parts of the original opinion to be set aside, but nonetheless concluded that no fault could be found with the overall conclusions of the examiner. Still unhappy with this, DLP sought to challenge that decision under section 97 of the Act and rule 77K of the Patent Rules 1995, SI 1995/2093.

Before Kitchin J various issues fell to be determined: (i) had there been a decision against which there lay a right of appeal? (ii) if there had, did the fact that it was inherent in the procedure that it could only lead to a non-binding opinion or decision preclude the court from hearing the appeal; (iii) if not, should the appeal in the instant case be allowed?

The learned judge ruled as follows:

* it was clearly the intention of the Patents Act 1977 and the Rules that there was an appeal, where it related to part of an opinion that had not been set aside on review.

* DLP had an appeal as of right against the review decision of the Hearing Officer.

* Both the Act and the Rules provided a regime for the provision of non-binding opinions which were potentially of great value to all. They also provided for an application, by the patent holder, for a review of an unfavourable opinion and for an appeal as of right against an unfavourable decision on such a review. Such an appeal did not involve an academic question. On the contrary, it involved a living issue: was the opinion the patent holder was entitled to wrong?

* in an appeal, the Hearing Officer's review should be reversed only if it was shown that he had failed to recognise an error or wrong conclusion when conducting the review of the original opinion or decision.

* in this case both the examiner and the Hearing Officer had directed themselves correctly in law and had properly considered the patent in suit in the light of the specification and through the eyes of the skilled person. In those circumstances, the opinion was not one which had been clearly wrong.

The IPKat mourns the fact that a non-binding opinion could have inspired two appeals, which must have cost DLP a pretty penny or two that it could have spent in suing (or negotiating licence terms with) the alleged infringer in the first place.

More from the IPKat on non-binding opinions here