The Patent Review 2013 - 2014: Central Amendment before the EPO

14 April 2015

Neil Jenkins, Audrey Horton

The European Patent Convention (EPC) allows a patentee to have the claims of its granted patent limited or to have the whole patent revoked, in either case for all designated states. Such a central amendment or revocation is deemed to have effect from the grant of the patent. Section 77(4) of the Patents Act 1977 gives effect to these provisions.

Samsung Electronics Co Ltd v Apple Retail UK Ltd [2014] EWCA Civ 250, Court of Appeal

In the global dispute between Samsung and Apple relating to the iPhone and the iPad, Samsung had commenced patent infringement proceedings against Apple in respect of various of Apple's 3G enabled devices. The trial of the action had been divided into two parts and two separate Judgments were issued on the first two patents and the third patent.

Samsung had made unconditional applications to amend the patents before the trial. The Judge had found that each of the patents was not entitled to its claimed priority date and as a result was invalid for anticipation or obviousness by reason of a disclosure in an intervening piece of prior art and was otherwise invalid for obviousness.

Samsung appealed against the Judge's decision. At the same time, Samsung also filed applications for amendment centrally at the EPO (the EPO amendment applications). Samsung then applied to adjourn the appeal pending the determination of the EPO amendment applications. The EPO amendment applications were expedited and at the hearing of the application for an adjournment a decision from the EPO was expected within a few months. Samsung explained the delay in making the EPO amendment applications in the first place on the basis of the need to co-ordinate with parallel proceedings (in Germany, Italy and France).

Apple made a cross-application for an order that, unless Samsung undertook to take no further steps in the EPO amendment applications proceedings, then the permission to appeal should be set aside, the appeal struck out and the patents revoked, in effect forcing Samsung to choose between the appeal and the EPO amendment applications.

The Court of Appeal commented on the fact that:

  • the Patents Act 1977 specifically contemplated the possibility of concurrent opposition or central amendment proceedings in the UK and in the EPO;
  • save where opposition proceedings were pending, there was no prohibition on the filing of a central amendment application while infringement or revocation proceedings were pending, or in the period between a first instance judgment and an appeal in such proceedings, in any designated state; and
  • any decision by the EPO on a central amendment application would be directly effective in every designated state and that if allowed, the bundle of European patents would be deemed always to have been in their amended form.

In this case, the Court of Appeal decided that because the EPO amendment applications were likely to be concluded in the relatively near future, Samsung’s pursuit of the EPO amendment applications was not an abuse of the process of the court nor was it an activity with which the court could properly interfere for any other reason. The EPO amendment applications might or might not be successful and it could not be predicted with any certainty what form the amendments would take if allowed, since their final form might depend on the dealings between Samsung and the EPO during the central amendment proceedings. They decided that an adjournment would not cause Apple any significant prejudice whereas a refusal of the adjournment might have resulted in the appeal proceeding on what might turn out to have been a false basis, with consequential waste of costs and time.

Accordingly, the Court of Appeal granted the application to adjourn the appeal until the outcome of the EPO amendment applications was known.