The UK Intellectual Property Office (UK IPO) has launched a consultation on whether it would be appropriate to introduce an “Appointed Person” appeal route. An appeal to the Appointed Person would be instead of an appeal via a UK court for patent decisions made by the UK IPO. This route is already available for appeals from UK IPO decisions on trade mark matters. Extension of the system to encompass patents would potentially impact anyone who applies for, owns or has any other interest in UK patent or supplementary protection certificate (SPC) cases.
The UK IPO is keen to get input from all relevant parties before they decide how to proceed. A discussion document outlining the proposed change is available from the UK IPO. Anyone wishing to file comments in response to the document must do so by 21st May 2013.
Presently, the route of appeal from a patent decision by the UK IPO is generally to the Patents Court (part of the High Court in England and Wales), or in Scotland to the Court of Session. As noted above, UK IPO trade mark case decisions can be appealed either to the court or to an Appointed Person. Unlike an appeal to the court, the Appointed Person’s decision on trade mark cases is final – there is no further appeal, although references on important points of law can be made to the Court of Justice of the European Union. The Appointed Person can decide to refer trade mark cases to the court, but in practice rarely does so. Despite the inability to appeal, this has proven a popular route for many trade mark cases.
The proposal for a patents Appointed Person has been criticised by some as inappropriate. They say that patent issues are often too complicated to be dealt with by a single individual from whom there is no appeal available. This could be a particular problem for high-value patents and SPCs.
On the other hand, the Appointed Person route has been well used for trade mark cases. The system is thought to provide a quicker, less expensive and more informal route than the Court.
Do you have views about the introduction of a patents Appointed Person? If so, let the UK IPO know by 21st May 2013!
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.