Ipsofactoj.com: International Cases [2002] Part 9 Case 15 [Ch.D]



Clear Focus Imaging Inc

- vs -

Contra Vision Ltd


16 NOVEMBER 2001


Jacob J

  1. This is an appeal from a decision dated 6th September 2001 of Mr Sean Dennehey acting for the Comptroller of Patents. Both parties are now agreed that the appeal be conducted on the papers without a hearing. This is appropriate in the circumstances. However I must indicate that I think the manner in which the matter has come before the court is unsatisfactory: the wrong respondent is named and it has taken too long to reach agreement that the appeal is to be on the papers only.

  2. The case concerns an application by the patentee, Contra Vision, to amend the specification of its patent number GB2165292. The amendment is opposed by the current appellants, Clear Focus Imaging. As long ago as 3rd March 2000 the Hearing Officer made his first decision in the case. He refused the initially proposed amendments but indicated that revised proposals might be satisfactory. The patentee went along with that decision but the opponent did not, continuing to seek outright refusal. By another decision, of 7th November 2000, the patentees were allowed two months within which to submit revised proposals for amendment with a view to overcoming the deficiencies which the hearing officer had already found. That was done. But at the same time the patentee filed further evidence. In March 2001 the opponent filed comments and yet further evidence.

  3. The Office indicated that its preliminary view in these circumstances was that there should be no further evidence from either side all that should be done was to consider whether the proposals of the patentee complied with the earlier decision. The patentees accepted that there should be no further evidence. However the opponents seek the admission of two affidavits, one by a Mr Reeves and one by a Mr Leavitt. By the decision under appeal the Hearing Officer refused the admission of each of these affidavits. He also decided that there was no need for re-advertisement of the proposed amendments. That decision is also under appeal.

  4. In these circumstances it is obvious that the real respondent to the appeal is the patentee. But the Appellant's Notice names "the Patent Office" as the Respondent. The Notice does not appear to be addressed to the patentee at all. Plainly it should have been so addressed (see the form annexed to the Practice Direction supplementing CPR Part 49 and para. 16 of that Direction). The correct procedure is to serve the true respondent and also the "Comptroller General of Patents" (not, as named here, "the Patent Office").

  5. Whether these deficiencies contributed to the delay I do not know. The fact is that it was not until 12th November that the Court received a fax from the patentee's agents. It said that in view of the fact that the appellant did not want a hearing, the patentee did not want one either. By then arrangements had been made to list the appeal on a pre-set date arrangements instigated by the Court rather than either of the parties. All this was more than a waste of effort. It had the result that the day appointed for the hearing was unavailable for other parties. In future any appellant who considers that his appeal can be heard on paper ought, at least by the time of service of the Notice of Appeal, so to indicate to the respondent, the Comptroller and the Court. Both should respond timeously saying whether or not a hearing is wanted. If it is, then it can be fixed - normally in short order. This is of particular importance in the case of procedural appeals from the Comptroller otherwise the appeal process will slow down proceedings in the Office. Clearly there is a legislative intent that procedural matters should be dealt with particularly quickly that is why, unless extended, the period for appealing is only 2 weeks (see the Practice Direction paragraph 16.3(1) instead of the normal 6 weeks.

  6. I begin by reminding myself of the principles involved. It is undisputed that the Hearing Officer was exercising his discretion. By my decision in Thibierge et Comar v Rexham (9th November 2001) I held that an appeal from the Office relating to an exercise of discretion required that it should be shown that there was error of principle. It has to be shown that the decision maker below exercised his discretion under a mistake of law, or in disregard of principle, or under a misapprehension as to the facts, or that he took into account irrelevant matters or failed to exercise his discretion, or the conclusion which he reached in the exercise of his discretion was "outside the generous ambit within which a reasonable disagreement is possible". Each aspect of this case falls to be determined by applying that test.

  7. I turn to the question of the fresh evidence. The Hearing Officer said, "all of this evidence could have apparently been filed in the normal round preceding the hearing". The grounds of appeal accept that that is so as regards Mr Leavitt's evidence. I am not sure (because the "Grounds of Appeal are not explicit on the point) whether or not the appeal is maintained in respect of it. If it is, it manifestly untenable, I say no more about it.

    The Grounds of Appeal concentrate upon the position in relation to the evidence of Mr Reeves. They say:

    However, the opponents only became aware of the existence of Mr Reeves long after the hearing and the associated decision of 3rd March 2000. In fact the opponents only became aware of Mr Reeves' existence a short time before Mr Reeves' affidavit was executed and filed at the Patent Office by the opponent. The opponent would not therefore have been in a position to submit Mr Reeves' evidence any earlier than it did.

  8. Mr Dennehey said:

    there are strong reasons derived from the public interest in proceedings being handled justly and proportionately while fresh material submitted outside the prescribed evidence rounds, and therefore only admissible at the Comptroller's discretion, should not be admitted in evidence unless it is justified. Such justification would require compelling supporting reasons, for example as to why the material in question could not, or had not, been filed before and as to its weight or significance to the issues under consideration.

    I believe that to be an absolutely correct statement of the principles under which the Comptroller should act.

  9. I turn to the evidence of Mr Reeves. Apparently no material was placed before the Comptroller explaining its lateness. The first and only explanation appears to be that offered in the grounds of appeal. That in itself is a ground for dismissing the appeal. A party who wishes the Comptroller to admit late evidence must justify that before the Comptroller, not by evidence or by an assertion first provided on appeal.

  10. However even if the agent's assertion had been made to the Comptroller it would have been inadequate. It is not made out by any evidence it merely consists of the above laconic statement. An assertion by an agent is not evidence. Moreover, even if it had been provided by a sworn statement it would have been inadequate. It does not explain how the opponents came by the evidence. It is not enough to say that the opponents "only became aware of Mr Reeves' existence a short time before his affidavit was made". That may be so, but it may well be because they did not look in an obvious place. Mr Reeves describes himself as the owner of a prior art patent (Dunklin) already cited in the proceedings. He deposes to a prior use upon which the opponents wish to rely. There is no explanation as how he was located or why that could not have been done earlier, given that his (or his company's) patent was known to the opponents.

  11. Accordingly, it is not shown that the Office was offered any reason for the lateness of Mr Reeves' evidence, nor is it shown on this appeal that the evidence could not have been obtained without due diligence.

  12. There are yet further reasons for refusing to admit Mr Reeves' evidence. It seeks to prove that claims as proposed to be amended would be invalid by reason of the alleged prior use. But these proceedings are merely for leave to amend: validity as such is not in issue. Pure amendment proceedings should be short - they are not the place for a roving inquiry into validity, Great Lakes Carbon's Patent [1971] RPC 117. Nor, I would add, are they the place for a detailed collateral attack on validity. Invalidity of proposed amended claims goes merely to the Comptroller's discretion to allow amendment in pure amendment proceedings the exercise of that discretion on the grounds of invalidity should be limited to plain cases. Here the alleged prior use might well be subject to applications for disclosure and cross-examination. These proceedings would be drawn out even more if the evidence were admitted. It would be wholly wrong to allow this.

  13. Excluding the evidence will not, so far as I can see, prevent a frontal attack on validity. It is not a once and for all exclusion. But an attack should be launched properly and not come in by way of a sidewind, still less a very late sidewind, in this case.

  14. I turn to the question of re-advertisement. Whether or not an amendment application should be re-advertised when further amendments are proposed is pre-eminently a matter of discretion of the Hearing Officer. Moreover re-advertisement is not ordered in the interests of any existing opponent to the amendment: it is done to alert other potential opponents. It is a matter between the patentee and the public generally, not a matter between the patentee and an existing opponent. I am by no means convinced that such an opponent has any real interest of its own in re-advertisement of the modified amendments or any status to seek it.

  15. Assuming it does, however, is any error of principle in the Hearing Officer's decision identified? He said:

    The latest form of Claim 1 comprises the subject matter of Claim 1 as advertised, combined with the subject matter of Claims 14 and 26 of the UK patent, together with certain further limitations; the latest Claim 42 comprises the combined subject matter of Claims 82, 84 and 91 as advertised; and the latest Claim 45 comprises Claim 123 as advertised but refers to a "film material layer" rather than to a "material layer". Thus each of Claims 1, 42 and 45 as most recently proposed, appears to fall within the scope of claims that have already been advertised.

    Earlier he had concluded that it was only Claims 1, 42 and 45 which did not have a direct counterpart in the claims that already had been advertised. I cannot see any error of principle here. Not every proposal for amendment has to be advertised. What has to be shown is a significant shift in the proposed amendments: a shift such that one can fairly say that someone who decided not to oppose the original amendments might well have wanted to oppose those now sought. That would be the case, for instance, if the later proposed amendments would leave the claims significantly wider in scope than those originally proposed. Nothing of the sort is shown here.

  16. The notice of appeal further asserts (without evidence) that there may be new entrants into this field of business and that the new entrants might wish to oppose the amendment. That is a quite different point. Quite apart from the fact that it is wholly unparticularised or proved, it is bad. People who come late into a field of endeavour must take the patents that are there as they stand. The suggestion here is that a latecomer might, if he had been in the business earlier, have wished to oppose from the outset. That cannot be a relevant consideration to re-advertisement.

  17. Accordingly, I think the Hearing Officer was quite right. This appeal is dismissed. The matter should proceed as indicated in paragraph 19 of the Hearing Officer's decision. The parties were given one month from 6th September to request an oral hearing, or to indicate a willingness for the matter to be decided on the papers. So far as I can see, no stay was expressly ordered or even sought pending this appeal. It will be for the Office to decide whether to allow any further time. I would only say that if any is allowed it should be very short. It is well past the point that these amendment proceedings were brought to a close.


Thibierge et Comar v Rexham, 9th November 2001 Great Lakes Carbon's Patent [1971] RPC 117


Practice Direction on CPR Part 49


Appellant's Agents: Atkinson Burrington

Respondent's Agents: Wilson Gunn M'Caw

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