14 December 2005

Patents: Opinions on Validity and Infirngement

When Peter Hayard visited Leeds last month he left copies of the first two requests for opinions under s.74A with Jonathan Haines of BPP Law School. Jonathan very kindly arranged for them to be copied and distributed copies to everyone who was interested. Mine arrived yesterday.

The first request, which was lodged by Dr Robert Lind of the Oxford branch of Marks & Clerk on 18 Oct 2005, is for an opinion on whether European patent 1,351,732 granted to Novo Nordisk A/S is valid. The second, which was lodged the very next day by my friend Chris Hemmingway of Bailey Walsh LLP (who happen to be my personal patent agents), is a request for an opinion on infringement. Since they made their requests there have been two other applications.

Both requests are interesting. They are supported by concise and cogent written argument. Robert attacks Novo Nordisk's patent on grounds of anticipation and obviousness and he supports his argument on anticipation with a PCT application already in the regional phase in the EPO and a US grant. I have not yet had the time to read those specifications but I can see where he is coming from.

Although Chris is seeking formally an opinion on validity as well as infringement he concludes that no evidence has been provided by the alleged infringer or their solicitors, Osborne Clarke, to indicate that his client's patent is invalid. He lodges the international search report which seems to back him up. Neverthleless, he reserved the right to request an opinion on validity should it become a live issue in the proceedings.

The issue on infringement is quite narrow. The patent in suit is for a shower enclosure which fits into grooves in the sides of a bath. The issue appears to be whether Chris's client's patent actually requires a screen forming part of the enclosure to slide into the grooves. The Bristol argument, if I understand it correctly, is that the patent can be circumvented by attaching some sealing strip underneath the screen. The Yorkshire argument is that the correct interpretation of the claim is that the screen engages with the shoulder irrespective of which component part actually connects with the shoulder. I won't say what I think of either side's argument yet. I'll leave that to the hearing officer.

Peter Hayward was very pleased with these submissions and I am too. If more follow and if the opinions are upheld by Mr Justice Pumfrey, Mr Justice Kitchen and ultimately by the Court of Appeal there may well be a cheap and cheerful remedy for British patentees here in the UK. That would be good for the country.

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