Journal

The Comptroller in the Courts

Ensuring consistency and clarity are among some of the factors that see the IPO appearing in court. Julyan Elbro explains.

The recent Emotional Perception[1] case has drawn attention for several reasons, but there is one particular way it is unusual – the Court of Appeal judgment resulted from an appeal by the Comptroller-General from the High Court.

It is not that unusual for the Comptroller to find himself in the Court of Appeal. In an average year, the patents (and supplementary protection certificates) hearing officers in the Intellectual Property Office (‘IPO’) issue about 100 decisions. A small proportion of these are appealed to the High Court, and a small proportion of unsuccessful appellants appeal further to the Court of Appeal. In these cases, the IPO (as respondent to the appeal) is simply defending the decision it previously made, which the High Court has agreed with, to ensure justice is done in that individual case.

There are also a few cases (which do not originate in the IPO but start in the High Court) where a party has appealed a judgment of the High Court but the originally successful party does not want to defend the decision. In these instances, the IPO is asked by the appellate court to do so in their stead. This can happen, for example, where an alleged infringer successfully defends their position on the basis that the patent is invalid. They may accept a settlement from the patentee and have no further interest in the case, but there is a strong public interest in the patentee not to be able to restore a putatively invalid patent to the register and so the IPO is asked to make the case for the continued invalidation of the patent. Here, the IPO’s role is to ensure justice in the individual case by making sure the argument for invalidity is properly advocated, enabling the appellate court to make the right judgment.

What is unusual is for the Comptroller to have chosen to bring an appeal to the Court of Appeal. In this short piece I hope to give some insight into why the IPO may choose to take this course of action, and why it is a relatively rare occurrence. As the case in Emotional Perception is potentially still ongoing, with the possibility of the Supreme Court hearing a further appeal, I will write in general terms about the factors we consider rather than giving a view on what applies in that specific case.

The first and most important point to bear in mind is that the IPO is not invested in the specific outcome of a particular case in terms of wanting to ‘win’ for winning’s sake. We care that justice is done. What that means is that the facts and law are properly considered and determined, and the facts applied to the law. If, in an individual case, the judge agrees with us, we will defend that position on further appeal because, put simply, we think it is right. If the judge disagrees with us, perhaps on a certain view of the facts, or how the law applies to those specific facts, we will generally just accept that outcome, and not appeal it. We add it to our understanding of the law, change IPO practice if we need to, and move on.

But there are occasions when the implications of a particular judgment’s interpretation of the law can mean that we feel we need to take the matter further. These situations generally come in two flavours – which can overlap. Firstly, we try to ensure that the interpretation of the law fits with what Parliament intended, and secondly, we need to understand clearly how to apply the law in our day-to-day work.

Taking the second of these first, possibly one of the most important things about an effective patent application process is clarity over likely outcomes. In particular, the decisions our examiners and hearing officers make need to be consistent, applying a clear understanding of the law. In some ways, this may be more important than us actually being right – if we are wrong in a consistent manner, the courts can correct us (and then we can start being consistently right!), but if we are inconsistent in our decisions then applicants simply face a lottery.

Consistency is not always an easy thing to achieve! The courts deal with only so many cases in a year, and our hearing officers not many more, but our examiners deal with thousands of applications. We need to be able to “fill in the gaps” between the law and the case law so our examiners can make the right objections – and only the right objections. If a court judgment gives us an unclear test, or we have a number of court judgments which appear inconsistent with each other, then we may appeal a judgment in order to seek clarity from the Court of Appeal in the form of a more definitive view.

And beyond clarity, it is also important to us that the balances Parliament has struck in patent law are maintained, and that the system is able to function effectively. We all recognise patent law is an intervention in the market to encourage innovation, but that it must guard against intervening too much and being counterproductive. Thus, the patentee is required to do certain things to secure protection, some things are excluded from patentability, prior publication prevents patenting, and so on. If we see a risk that a certain interpretation of the law shifts this balance – one way or the other – in a way that Parliament did not intend, then we may feel compelled to ensure this is further considered.

Equally, it may be that a particular interpretation in a judgment will pose practical challenges to how the system functions. A particular example might be large divergence from the EPO’s practice. A situation where the EPO routinely granted patents which are in law invalid in the UK, or refused patents which would be perfectly valid[2] would be difficult to deal with in practice.

Ultimately, of course, the courts have the power to make judgments which might raise challenges of principle or practicality, but our aim would be to make sure the implications were fully understood.

Our role at the IPO is to fairly administer the system, doing justice to individual applicants, and to be guardians and advocates for the patent system as a whole, so it encourages and fosters innovation and growth for the future. Our approach to how we interact with the courts, and what cases we take to appeal, reflects this.

Julyan Elbro is the Divisional Director in charge of Patent Examination in the Intellectual Property Office, with overall responsibility for the patents service.

Notes and references

[1] Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825

[2] Although this would be less of an issue as protection could at least be obtained in the UK via the IPO, but still less than ideal.