PriorPatentApplication

29 June 2002

Calum Smyth

Re Woolard's Patent Application, High Court, Mr Justice Laddie, April 12, 2002

In this decision, the High Court has aligned the UK with the European Patent Office approach towards de­ciding when patent applications are considered "state of the art" for the purpose of an anticipation attack.

Mr Justice Laddie overturned the earlier decision of the UK Comptroller General of Patents on the inter­pretation of Section 2(3) of the UK Patents Act 1977 (the "Act") and Article 54(3) of the European Patent Convention (the "EPC"), from which it derived. He ruled that a patent application which was filed before the priority date of the application in suit, and which was published after that date, should be considered as "state of the art" for a novelty attack against the later ap­plication only if the previous application was still in ex­istence (i..e. had not been withdrawn) at the time of its publication.

The Court accepted that the language of Article 54(3) and section 2(3) is ambiguous and sought guid­ance from the travaux préparatoires (preparatory papers) of the EPC as to the purpose of Article 54(3) EPC. It concluded that the objective of the legislation was to prevent the co-existence of two patents for the same subject matter (i.e., double patenting). If the earlier appli­cation is withdrawn, then the possibility of double pat­enting is eliminated and it should not be treated as prior art against the later application.

Background

Mr Woolard filed a patent application in December 1995. Due to a lack of funds, he subsequently instructed his patent attorneys to abandon the application in March 1997, retaining his right to apply afresh in the future. However, the request was mistakenly overlooked until the patent agent received a Notice of Publication from the UK Patent Office on 8 May 1997, stating that the application would be published on 4 June 1997.

On 12 May 1997, the UK Patent Office received a letter from the patent agent requesting the application be withdrawn for all purposes. On 3 June, a fresh appli­cation relating to largely similar material was filed on behalf of Mr Woolard. The first application was pub­lished a day later, as the request for withdrawal had been made too late in the publication cycle for it to be prevented.

The issue which came before the Comptroller at first instance was whether Mr Woolard's first application be­came part of the state of the art for the purpose of sec­tion 2(3) of the Act, i.e., for the purpose of an anticipation attack.

The Law

Both Section 2(1) of the Act and Article 54(1) EPC state that an invention shall be considered as new if it does not form part of the "state of the art". Section 2(3) of the Act also reflects Article 54(3) EPC, which states:

“... the content of European patent applica­tions as filed, of which the dates of filing are prior to the date [of filing of the European patent appli­cation in question] and which were published ... on or after that date, shall be considered as com­prised in the state of the art."

At First Instance

Before the Comptroller, the patent agent argued that the first application should not count as state of the art for the purposes of Section 2(3) of the Act because:

  1. An "application" ceases to be an application under Section 2(3) once the request for a grant of a patent is withdrawn;
  2. The purpose of Section 2(3) is to prevent "double patenting"; and
  3. Section 2(3) of the Act derives from Article 54(3) EPC, and accordingly, an "application" should be inter­preted in line with the European Patent Office as a "valid" and existing application.

In support of this third point, the patent agent re­ferred to:

  1. Guidelines for Examination in the EPO, Part C, Chapter IV, Paragraph 6.1(a); and
  2. Legal Board of Appeal Decision J 05/81.

The Comptroller refused the application, following a previous decision of the UK Comptroller in Zbinden's Application (13 June 2001).

Zbinden's Application contained a similar set of facts and applied the principle in Unilever Limited (Davis's) Application that words should be taken to mean the same throughout a statute where there is no express provision to the contrary. In Unilever, the Hearing Offi­cer pointed out that "application" is used in several in­stances in the Patents Act 1997 to embrace both "live" and withdrawn applications. Accordingly, in the present case the term "application" could not be used to mean exclusively "live" applications as put forward by the pat­ent agent.

Zbinden's Application also examined the EPO exami­nation guidelines, which state that "Article 54(3) must be interpreted as referring to the publication of a valid application, i.e., a European Patent Application in exis­tence at its publication date" (emphasis added). In Zbinden's Application this guideline was not regarded as persuasive, as it was based on a European Legal Board of Appeal decision, J 05/81, which dealt with the obliga­tion to publish late withdrawn applications rather than deciding the question as to whether Article 54(3) should apply only to applications which were still in ex­istence at the time of publication.

The Comptroller agreed with the conclusion in Zbinden's Application that the comments of the Board of Appeal on the application of Article 54(3) were strictly obiter dictum (an opinion expressed on a point that is in­cidental to the decision of the case) and could therefore be discounted.

On Appeal to the High Court

On appeal, Counsel for the Applicant relied on the travaux préparatoires of the EPC to support the argument that the real purpose of Article 54(3) was to prevent double patenting, the risk of which disappears once the request for one of the two co-pending patents is withdrawn.

Counsel for the Comptroller referred to a House of Lords decision, Asahi Kasei Kogyo KK’s Application, which examined "the whole contents approach" as to what should be considered state of the art. In that case, Lord Jauncey confirmed the basis for this approach as that set out the Banks Committee Report, i.e.:

“... not only that the Crown should not grant the same monopoly twice but also that it is against public interest to grant a patent for subject matter which has already been publicly disclosed in an earlier application, notwithstanding that the dis­closure was not public until after the priority date of the latter application or that no patent may be finally granted on it. In other words, only the first person to take steps to disclose such subject matter to the public by means of a patent application has the right to a monopoly for it."

Counsel for the Comptroller argued that once a per­son has taken steps to disclose to the public the subject matter of a patent application, they should be treated as though they had achieved publication at that time rather than on the actual publication date.

However, Laddie J queried the "whole contents ap­proach", as it seemed to provide no basis for limiting Article 54(3) to disclosure made through a prior patent application as opposed to another method of disclosure to the public. Laddie J highlighted the following incon­sistencies that would arise if the "whole contents ap­proach" applied:

there was no reason why the deemed early publication under the whole contents should ex­tend only to anticipation (under Article 56 EPC) and not to obviousness; and

if the desire was to provide for deemed early disclosure to the public, why should Article 54(4) EPC limit the publication to instances where the co-pending applications are only designated in the same Contracting State?

The Judge concluded that rather than accelerating the publication of the earlier patent application, the real purpose of the legislation was to prevent double patent­ing. It then made sense to have a requirement that the two applications be made in the same country and that the earlier publication should only prevent patenting of the same material rather than obvious developments of it.

In allowing the appeal, Laddie J looked to the prepa­ratory materials of the EPC for guidance on the inten­tion behind Article 54(3), and in particular the Proceedings of the Patents Working Party, which emphasised the basic idea that only one patent could be granted for one invention.

The Judge also disagreed with the first instance deci­sion to discount the Legal Board of Appeal decision in J 05/81 as obiter dictum and confirmed that the Legal Board of Appeal and the practice set out in the Guide­lines for Examination in the EPO applied a proper pur­posive construction to Article 54(3). It was, he said, "desirable, where possible, to adopt an interpretation of the EPC which is consistent with the interpretation ap­plied in the EPO and I think we should do so here in relation to the interpretation of s2(3) of the Act."

Conclusion

This Judgment is a move towards aligning this area of UK patent law with the practice of the European Pat­ent Office, and should provide potential applicants with more legal certainty and uniform case law within the EU.

Laddie J's examination of the EPC preparatory ma­terials illustrates a willingness - where appropriate - to apply a purposive construction to relevant sections of the Patents Act and to limit inconsistent national law; which may previously have been justified by the use of different drafting styles in order to incorporate national administrative concerns and dependent secondary legislation.

As a practical matter, before citing prior applications in a novelty attack against a patent, practitioners should check whether the application was withdrawn before the publication date.

Also published in the June 2002 edition of WIPR.