Some more equal than others! – EP (UK) patent not always the same as a UK patent
23 June 2014
In the latest judgment in the ongoing dispute between Virgin Atlantic Airways (Virgin) and Zodiac Seats UK Ltd (Zodiac), ( EWCA Civ 1713) the Court of Appeal has ruled that the validity (or otherwise) of patents based on the process of examination and grant in the EPO is not open to challenge in the English Courts.
Virgin is the owner of a series of European patents EP1495908 (the 908 patent), EP2272711 (the 711 patent) and EP2289734 (the 734 patent), which relate to seating systems for passenger aircraft in which the seats are arranged in an inward-facing herringbone configuration and in which each seat converts into a lie-flat bed.
The seat was designed by Virgin and later manufactured by Zodiac. Zodiac subsequently started making and selling a competing product to other airlines.
A number of disputes relating to the patents and the aircraft seats followed, including an infringement action against Zodiac, in which the Court of Appeal ruled that Zodiac infringed the 908 patent, and opposition proceedings at the EPO, following which the 908 patent was maintained in amended form.
Virgin brought further infringement proceedings under the 908 patent against Delta, Air Canada and Jet and, in each case, Zodiac as the manufacturer and supplier of the seat. Virgin also alleged that Zodiac threatened to infringe the 711 and 734 patents.
The 908 patent was challenged on the ground that designation of the UK in the European patent application was an error which invalidated the patent at least in so far as it includes the UK. At the UK IPO, the EPO and the High Court this challenge was dismissed. Zodiac, Delta and Air Canada raised this point by way of defence to the infringement actions.
In 2012, Floyd J (as he was then) handed down a judgment stating that:
- the 908 patent, as amended, was valid but had not been infringed;
- the 734 patent was valid and Zodiac had threatened to infringe it; and
- the grant of the 908 was not a nullity so far as it purported to include the UK as a relevant territory.
In this case, the Court of Appeal considered each party’s appeal against this judgment but decided to dismiss the appeals.
As a consequence of the finding that the 908 patent, as amended, was valid but had not been infringed and that the 734 patent was valid and Zodiac had threatened to infringe it, Virgin is unable to recover damages for the historical infringement (of the 908 patent), but Zodiac is prevented from manufacturing or selling its seats in the UK.
The third issue raised an interesting question regarding the English Courts’ ability to question the validity of a European patent.
The Court of Appeal concluded that whilst the 1977 Patents Act recognises a granted European patent as if it were a national UK patent, this does not create a “jurisdictional” link meaning that English Courts do not have the power to review the validity of grant of patents by the EPO on grounds not specified in the EPC, for example procedural errors that occurred during the examination and grant procedure.
Whilst the grant of a national UK patent by the UK IPO may be contested on grounds of procedural errors in prosecution using the judicial review process, it would appear that it is not possible to challenge the validity of a European patent in the same way using the English Courts.
Advanced Engineering Group
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© Withers & Rogers LLP, June 2014