Patent Amendment - Tehrani v Bonaduz AR
Intellectual Property Enterprise Court (HH Judge Jacon) Tehrani v Bonaduz AR and others [2022] EWHC 1031 (IPEC) (18 Feb 2022)
S.75 (1) of the Patents Act 1977 provides:
"In any proceedings before the court or the comptroller in which the validity of a patent may be put in issue the court or, as the case may be, the comptroller may, subject to section 76 below, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the court or comptroller thinks fit."In Tehrani v Bonaduz AR and others [2022] EWHC 1031 (IPEC) (18 Feb 2022), the patentee sought to change the words "for a next breath of the patient" to "for the next breath of the patient" in one of the claims and consequential amendments of the body of the specification. The problem with the application is that it was sought after the court had held the patent to be invalid for want of novelty. in Tehrani v Hamilton Bonaduz AG and others [2021] EWHC 3457 (IPEC) (22 Dec 2021). I discussed that case in Patents - Tehrani v Hamilton Bonaduz AG and others on 26 Jan 2022.
Although s.75 (2) appears to give the court or comptroller a very broad discretion in handling amendment requests, Lord Briggs noted at para [114] of Warner-Lambert Company LLC v Generics (UK) Ltd and another [2019] Bus LR 360, [2019] 3 All ER 95, (2019) 165 BMLR 14, [2018] RPC 21, [2018] UKSC 56 that the Court of Appeal had imposed restrictions on the exercise of that discretion:
"[114] ........ In Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906, it drew a sharp distinction between (a) pre-trial patent amendments, (b) post-trial patent amendments to delete claims which had been found invalid, and (c) post-trial patent amendments designed to set up a new claim which had not been adjudicated upon at trial. If a type (c) amendment would provoke a validity challenge which required a further trial then, generally, both the principle in Henderson v Henderson [1843] 3 Hare 100 and the Overriding Objective in the Civil Procedure Rules would militate against giving permission to amend, if the new claim could have been put forward by amendment in time for the first trial.
[115] In Nokia GmbH v IPCom GmbH & Co KG [2011] EWCA Civ 6, the Court of Appeal took the opportunity to consider whether either Johnson v Gore Wood & Co [2002] 2 AC 1 or article 138 (3) of the EPC (as amended in 2000) required the principles laid down in the Nikken case ("the Nikken principles") to be reconsidered. Jacob LJ held, at paras 108-109 that there was nothing in Johnson v Gore Wood inconsistent with the Nikken principles. Although the test was one of abuse of process and the onus on the person alleging abuse, vexing a defendant with two trials about the same patent by means of a post-trial amendment was prima facie abusive, if the amendment could have been made in time for all issues about the patent to be adjudicated upon at a single trial. As for article 138 (3), the creation of a right to amend was simply designed to ensure that all contracting states provided for amendment of patents. It was not designed to override the national law of each state about the timing, grant or refusal of amendments, and certainly not to legitimise what would otherwise be the abuse of a contracting state's process: see paras 127-129".
"[114] ........ In Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906, it drew a sharp distinction between (a) pre-trial patent amendments, (b) post-trial patent amendments to delete claims which had been found invalid, and (c) post-trial patent amendments designed to set up a new claim which had not been adjudicated upon at trial. If a type (c) amendment would provoke a validity challenge which required a further trial then, generally, both the principle in Henderson v Henderson [1843] 3 Hare 100 and the Overriding Objective in the Civil Procedure Rules would militate against giving permission to amend, if the new claim could have been put forward by amendment in time for the first trial.
[115] In Nokia GmbH v IPCom GmbH & Co KG [2011] EWCA Civ 6, the Court of Appeal took the opportunity to consider whether either Johnson v Gore Wood & Co [2002] 2 AC 1 or article 138 (3) of the EPC (as amended in 2000) required the principles laid down in the Nikken case ("the Nikken principles") to be reconsidered. Jacob LJ held, at paras 108-109 that there was nothing in Johnson v Gore Wood inconsistent with the Nikken principles. Although the test was one of abuse of process and the onus on the person alleging abuse, vexing a defendant with two trials about the same patent by means of a post-trial amendment was prima facie abusive, if the amendment could have been made in time for all issues about the patent to be adjudicated upon at a single trial. As for article 138 (3), the creation of a right to amend was simply designed to ensure that all contracting states provided for amendment of patents. It was not designed to override the national law of each state about the timing, grant or refusal of amendments, and certainly not to legitimise what would otherwise be the abuse of a contracting state's process: see paras 127-129".
Judge Hacon held that the application was for a post-trial patent amendment designed to set up a new claim which had not been adjudicated upon at trial. Amending the patent in the way requested would almost certainly provoke a validity challenge which would require a new trial. Such a new trial would contravene the rule in Henderson v Henderson. He, therefore, dismissed the application.
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