I mention Wragg v Donnelly BL O/280/10 9 Aug 2010 not because I was in the case or even because I won but because it is to the first time in my 30 years at the intellectual property bar that a hearing officer has sat in Manchester. Mr. Elbro, the senior hearing officer, heard this application for a declaration of non-infringement under s.71 (1) of the Patents Act 1977 at the Asylum and Immigration Tribunal in Piccadilly Plaza. It is not every case before the Comptroller that gets a hearing. A lot are disposed of on paper. And since the Intellectual Property Office moved to Bloomsbury it has not been all that easy to get a hearing in London. As often as not the parties are offered a video link to Newport. So to get a hearing before Mr. Elbro in my home town was something special.
The case was not exactly rocket science though it was one that the other side took sufficiently seriously to brief a leading silk. The invention was a safety device for central heating boilers. Its purpose was to deflect hot water and steam from a boiler against the external wall of the building in which the boiler was installed.
“an apparatus for expelling fluid to the external environment from a boiler situated internally of a building, the apparatus comprising a conduit connectable at its first end to a pressure relief valve on said boiler and having its second end open, in use, to the external environment, the conduit having an end portion connected to its second open end, said end portion being adapted to intercept fluid expelled from the second open end of the conduit, characterised in that the end portion is substantially cup-shaped and has its concave inner surface facing the open end of the conduit.”
The claimant had attacked my client’s patent on grounds of obviousness and anticipation and argued that the end portion of his device (which the photo shows as saucer shaped) fell within the description of “substantially cup-shaped and has its concave inner surface facing the open end of the conduit”. He more or less abandoned lack of novelty at the hearing as his prior art related to ventilators but he argued that the skilled man in central heating would know all about ventilation, a proposition that I attacked on the grounds that ventilators and boilers are installed by completely different tradesmen. The real battle was whether cup meant something mug shaped or whether it could connote something shallower. The hearing officer agreed with me that on a purposive construction a cup could include something like the device shown in the picture.
The case decided one point of law which may impact on the value of advisory opinions under s.74A of the Patents Act 1977. The claimant had sought an advisory opinion on the validity of our patent and we had sought one on whether it had been infringed. On both we had been successful. I argued that the other side should have called it a day then and that we should therefore get off-scale costs. Mr. Elbro did not agree. He said:
“The purpose of the opinions service is to provide a way, short of full litigation, for parties to get an impartial view of the dispute between them. In many cases, this will be sufficient for the parties to be able to come to a resolution. But in those cases where it is not possible, a party should not be punished for wishing to have the matter fully explored in a way which is simply not possible under the opinions service, with its procedural restrictions such as lack of cross-examination.”
The reason I made that argument is that I had been in on the consultations at the Patent Office (as the “IPO” was then known) on whether there should be US style re-examinations for which Richard Gallafent had argued or advisory opinions as Peter Hayward had proposed. Much of the discussion focussed on the attitude of the judges to these opinions and the general view was that if the judges did not think much of them neither would the public. Of course, different considerations apply to litigation since the costs are so much higher and it may well be that the judges will treat parties who take no notice of examiners’ opinions in much the same way as they penalize parties who refuse to mediate. But we shall have to wait and see.
Two other bloggers have taken an interest in this case. My friend, Peter Groves, in “Cups and Saucers, Patent Office Opinions and Costs in Manchester” in his Ipso Jure blog on 16 Aug 2010 and Professor Jeremy Phillips in “Bye Bye London” in Solo Independent IP Practitioners on 18 Aug 2010.