NIPC Law

S.13 of the Patents Act 2004 inserted two new sections into the Patents Act 1977 . S.74A provides as follows: " 74 A Opinions as to validity or infringement (1) The proprietor of a patent or any other person may request the comptroller to issue an opinion— (a) as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent; (b) as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied. (2) Subsection (1) above applies even if the patent has expired or has been surrendered. (3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so— (a) in such circumstances as may be prescribed, or (b) if for any reason he considers it inappropriate in all the circumstances to do so. (4) An opinion under this section shall not be binding for any purposes. (5) An opinion under this section shall be prepared by ...

This article was prompted by the decision of Mr. Phil Thorpe in Farr v Orbis Corp. (No. 2) BL/0/469/11 23 Dec 2011 where the hearing officer refused to award the defendant costs off the scale published in Tribunal Practice Note ("TPN") 2/2000 as amended by TPN 4/2007 against a litigant in person.  As the time for appealing has not yet run out, and as I represented the claimant at the costs hearing, it would be wrong for me to say anything more about that particular case. Rather I wish to explore the Comptroller's jurisdiction to award costs for proceedings in the Intellectual Property Office. S.107 (1) of the Patents Act 1977  provides: "The comptroller may, in proceedings before him under this Act, by order award to any party such costs or, in Scotland, such expenses as he may consider reasonable and direct how and by what parties they are to be paid." In Rizla Ltd.'s Application [1993] RPC 365 Anthony Watson QC confirmed that that section confers ...