English Patents Court rejects attempt to rely on ‘modern principles of private international law’ to impugn decision made under European Patent Convention

03/08/12

The Patents Court (Floyd J) has given judgment in a case raising important issues on the interface between the European Patents Convention ("EPC") and the Patents Act 1977.

Virgin Atlantic alleged infringement of three European patents. One of these was known as patent 908, concerned with a seating system for passenger aircraft in which the seats are arranged in an "inward facing herringbone" configuration.  That patent was granted in May 2007 and had been the subject of an opposition in the European Patent Office ("EPO").

Air Canada submitted, supported by the other defendants, that the purported grant of the 908 patent, so far as it designated the UK, was a nullity, since Virgin Atlantic either never designated or unequivocally elected to withdraw the designation of the United Kingdom in its application for that patent.  The defendants contended that decisions of the EPO were justiciable in the English courts under modern principles of private international law, relying on Divisional Court and Court of Appeal cases such as Campaign for Nuclear Disarmament v The Prime Minister [2002] EWHC 2759 and Republic of Ecuador v Occidental Exploration and Production Company [2006] QB 432.  It was contended that the ‘nullity' of the EPO's decision to grant the European Patent (UK) flowed through to the registration by the UK Intellectual Property Office of the 908 patent, which was also of no effect.

Floyd J accepted Virgin Atlantic's submissions that these arguments were incorrect.  He held that the acts of the EPO which the defendants sought to attack were the acts of an international organisation set up by international treaty.  He concluded that the defendants' reliance on Republic of Ecuador was misplaced.  The member states of the EPC had expressly delegated the grant procedure for European Patents to the EPO.   Following the approach of Jacob J in Lenzing AG's European Patent (UK) [1997] RPC 245, the Court held that it cannot have been envisaged that contracting states could superimpose on the Convention scheme their own notions of what amounts to an invalid exercise of the power to grant.  The Judge also accepted Virgin Atlantic's submission that the defendants' inability to challenge the designation of the UK in the national court did not violate their Article 6 rights.

The judgment is here.