Ch2001 App 992
Neutral Citation Number: [2002] EWHC 535 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 12 April, 2002
B e f o r e :

THE HONOURABLE MR JUSTICE LADDIE
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IN THE MATTER OF Patent Application No GB 9711337.7 by Leslie Adrian Alfred WOOLARD
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Mr Peter Prescott QC (instructed by Gordons for the Appellant, Mr Woolard)
Mr Daniel Alexander (instructed by Treasury Solicitor for the Comptroller General of Patents)

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Hearing dates: 11 March 2002

APPROVED JUDGMENT

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.	

Mr Justice Laddie: 
1.	 This is an appeal from a decision of Mr D J Jerreat acting for the Comptroller concerning the correct interpretation of s 2(3) of the Patents Act, 1977. The facts are not in dispute and can be taken from the skeleton argument prepared by Mr Peter Prescott QC, who appears on behalf of Mr Leslie Woolard, the appellant.
2.	Mr Woolard filed an application for a patent (95-24633) on 1 December 1995. Because of shortage of money, he decided to abandon that application while retaining his right to apply afresh in the future. On 26 March 1997 he orally instructed his patent attorneys to abandon 95-24633. The telephone call was taken by a secretary who duly produced a note which she placed on the desk of the partner in charge. At that point in time the application had not been published neither had preparations for its publication been completed.
3.	Owing to an oversight, the partner did not see the telephone note and did not appreciate the situation until 8 May 1997. By this time, preparations for the publication of 95-24633 had been completed, although publication had not yet taken place. On 9 May 1997 the patent attorneys wrote to the Patent Office abandoning application 95-24633 for all purposes and leaving no rights outstanding. That letter was received on 12 May and became effective on that date. On 3 June 1997, a fresh application (GB 9711337.7) was filed. That is the application in suit on this appeal. Unfortunately the process of publication of application 95-24633 within the Patent Office had reached a stage which was regarded by the Office as being beyond the point of no return. On 4 June 1997, application 95-24633 was published. 
4.	As a result, the contents of application 95-24633 are not part of the state of the art within s 2(2) of the Act. This means that it cannot be used as the basis for an obviousness attack  against application GB 9711337.7. The issue which came before Mr Jerreat and which I have to decide is whether application 95-24633 became part of the state of the art for the purpose of s 2(3), that is to say for the purpose of an anticipation attack. There is no other issue in the case. The later application is otherwise in order for acceptance. 
5.	According to s 130(7) of the Act, s 2 is one of those sections intended to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of  the European Patent Convention (“EPC”). The equivalent provision in that is Article 54 which, in so far as material, provides:
“(1)	An invention shall be considered to be new if it does not form part of the state of the art.
(2)	The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
(3)	Additionally, the content of European patent applications as filed, of which the dates of filing are prior to the date referred  to in paragraph 2 and which were published under Article 93 on or after that date, shall be considered as comprised in the state of the art.
(4)	Paragraph 3 shall be applied only in so far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published.”
6.	S 2(3) mirrors Article 54(3). Before me the parties have been content to argue the case on the basis of the wording in Article 54. I will do likewise.
7.	At its simplest level, the dispute between the parties can be summarised as follows. Mr Prescott argues that what Article 54(3) requires is the existence of a prior application which is published after the priority date of the later application. However if the prior application has been withdrawn, as application 95-24633 had been in this case, there is no “application” in existence at the time of publication. What is published is a former application, not an application. In other words, according to Mr Prescott, the earlier application must be in existence at the relevant date, a withdrawn application will not do. Mr Daniel Alexander, who appears for the Comptroller, argues that there is a two stage enquiry. First, was there an earlier application for protection and, if so, has it been published subsequently. The fact that the applicant for the earlier application decided not to pursue his application through to grant is irrelevant. What is published is still his application. Mr Prescott is advancing the proposition that what has to be published is an application, by which he means the documents associated with an existing legal procedure, namely a process for obtaining patent protection. Mr Alexander is advancing the proposition that what has to be published is an application, by which he means the bundle of  documents which had been filed when the applicant had originally initiated the process of applying for protection.
8.	Mr Jerreat followed an earlier decision of the Comptroller, Zbinden’s Application, 13 June 2001 and adopted the approach advocated by Mr Alexander. Since, for all practical purposes, the content of 95-24633 is the same as GB 9711337.7, Mr Woolard will obtain no patent protection, even though the Patent Office has been unable to find any other prior art which, in its view, which would invalidate it and even though, as is admitted, at the time of his application for GB 9711337.7, his own earlier application had been unequivocally abandoned and, because it had not been published, had not contributed to the fund of material available to the public.
9.	I accept Mr Prescott’s argument that the language used in Article 54(3) and s 2(3) is capable of being interpreted in a way which supports either of the arguments advanced on this appeal. Indeed, although Zbinden’s Application and Mr Jerreat have construed the relevant provisions in a way which is consistent with Mr Alexander’s submissions, the European Patent Office has construed them in a way which is consistent with Mr Prescott’s submissions. The question I have to decide is which of them is correct. 
10.	In addressing this issue, one has to have regard to the purpose behind Article 54(3). Mr Prescott argues that the purpose is apparent both from the Article itself and from the travaux préparatoires of the EPC. Mr Prescott took me through a considerable volume of this material. In my view it amply supports his argument that the purpose of the Article was to prevent double patenting. For present purposes it will be sufficient to refer to one of these documents, the Proceedings of the 10th Meeting of the Patents Working Party held at Brussels from 16 to 27 September 1963. The Chairman summarised the purpose of the provision which subsequently became Article 54(3) as follows:
“The Chairman then summarised the discussion stressing that the basic idea was that only one patent could be granted for one invention. He pointed out that duplicated patents did exists sometimes. It was not possible for the Offices to be aware of all the possible effects of a patent.”
11.	The objective of avoiding double patenting is also reflected in the provisions of Article 54(4) (c.f. s 2(4)). It is only when the two applications are both being pursued towards the grant of patent in the same Contracting State that the problem of double patenting can arise. It is only in those circumstances that Article 5(3) applies.  
12.	It appears that to avoid the possibility of double patenting, but without embarking on the difficult task of comparing the scope of the claims of two patent applications – something which we used to do in this country under our ‘prior claiming’ law – the simple expedient was taken of treating the first application as if it had been published so that its contents could be compared with the subsequent application. The nature of this expedient should not be allowed to hide the problem for which it was designed to be an answer.
13.	Mr Prescott argues that, if one approaches the construction of Article 54(3) with this purpose in mind, it strongly points towards his construction. If the vice aimed at by the Article is double patenting, it is only a potential problem if both the earlier and later applications are being pursued to grant. If at a suitably early stage the earlier application is withdrawn, the fear of double patenting disappears and with it the need to treat that the earlier application as if it had been a piece of prior art for the latter. 
14.	Mr Alexander accepts that the Article is designed to avoid double patenting, but he says that double patenting has a somewhat different connotation to that put forward by Mr Prescott. To this end he relies on the decision of the House of Lords in Asahi Kasei Kogyo KK’s Application [1991] RPC 485. He does not suggest that Asahi decides the issue in this case, but he does say that it indicates a preferable approach. In particular in Asahi he relies on the speech of Lord Jauncey who drew attention to Articles 4 and 6 of the Strasbourg Convention and said that both were designed to avoid double patenting. He identified the former as the origin of s 2(3), and said that it applied what is sometimes called the “whole contents approach”, and the latter as the origin of the old prior claiming jurisdiction. These he described as two different philosophies. He noted that the Banks Committee Report described the object of the whole contents approach as being:
“… not only that the Crown should not grant the same monopoly twice but also that it is against the public interest to grant a patent for subject matter which has already been publicly disclosed in an earlier application, notwithstanding that the disclosure was not public until after the priority date of the latter application or that no patent may be finally granted on it. In other words, only the first person to take steps to disclose such subject matter to the public by means of a patent application has the right to a monopoly for it.” (paragraph 306)
15.	Based on this, Mr Alexander argues that the major objective of Article 54 is really that set out in the last sentence of this extract from the Banks Report. Once a person has taken steps to disclose subject matter to the public by means of a patent application, he should be treated as if he had achieved publication as soon as he took the steps, rather than when publication actually occurred. A subsequent application will therefore be invalidated on the basis of this deemed earlier publication. 
16.	I am not persuaded by this argument. If this is really the purpose of Article 54(3), it is difficult to see why it should be limited to deemed early publication of patent applications. If another inventor has taken steps to disclose subject matter to the public before someone else has applied for a patent, why shouldn’t that count even if the method of disclosure he chose was not through an application for a patent? Furthermore, if this is really the purpose behind Article 54(3), there appears no good reason why the effect of the deemed early publication should extend to anticipation and not to obviousness. As Mr Prescott puts it, if the purpose of Article 54(3) is simply to treat as published applications which have been held up in the Patent Office, then logically they should be treated as published for all purposes. As I understand it, Mr Alexander accepts this to be an anomaly, but he says that it is only an example of imperfect drafting of the legislation. Similarly, if this is the purpose behind Article 54(3), why does Article 54(4) limit its application only to those cases in which both the earlier and later applications are designated in the same Contracting State? Once again, if the purpose is to achieve the effect of earlier publication where another inventor has planted his flag earlier, why should it matter that he planted it in any particular country? In other words why do Articles 54(3) and (4) exist? If deemed accelerated publication of all patent applications was the objective, that could have been achieved by simply expanding the provisions of Article 54(2):
“The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application together with everything published after the latter date but included within an application for a patent made before that date.”.
17.	In my view these anomalies are only created if the purpose of the legislation was designed simply to speed up, or treat as speeded up, the publication of earlier patent applications. If, on the other hand, the purpose was to avoid the potential co-existence of two patents for the same subject matter, it makes sense that the deemed earlier publication should only be effective to prevent subsequent patenting of the same material, rather than obvious developments of it. It also makes sense that the two applications need to be made in the same country, because it is only if they are in the same country that double patenting in Mr Prescott’s sense can occur. It follows that if the earlier application is withdrawn before it is published, it should not be treated as prior art for any purpose. It was not in fact part of the state of the art available to workers in the field and there is no reason why it should be treated otherwise.
18.	In addition to these points, Mr Prescott argues that we should construe the legislation in a way which is consistent with the construction placed on it by the European Patent Office. In relation to this Mr Prescott relies on the fact that the construction he advocates is the one which has been adopted in the Guidelines for Examination in the EPO: 
“Further it is required that the conflicting application was still pending at its publication date (see J 5/81, OJ 4/1982, 155). If the application has been withdrawn or otherwise lost before the date of publication, but published because the preparations for publication have been completed, the publication has no effect under Art. 54(3), but only under Art. 54(2). Art 54(3) must be interpreted as referring to the publication of a “valid” application, ie a European patent application in existence at its publication date.” (Part C, Chapter IV, paragraph 6.1a)
19.	This cross refers to a decision of the Legal Board of Appeal in J 05/81, [1982] OJEPO 155 in which the Board said:
“There are general considerations which weigh against an obligation on the EPO to publish patent applications discontinued after the key date. Thus, a published European patent application becomes part of the state of the art under Article 54(3), with retrospective effect as from its filing date or priority date, in assessing applications filed after that filing date or priority date but prior to its publication. However, this should only apply if such a “prior publication” is still in existence at the time of publication.” (paragraph 3)
20.	Both Mr Jerreat in the decision under appeal and Mr Alexander before me have categorised this statement as being obiter. I am not sure that that concept really has any application to a tribunal which does not apply the principles of stare decisis. In any event, the issue of whether Article 54(3) applied when the earlier application had been withdrawn was one which was raised before the Board and the above passage was part of the Board’s reasoned response. I do not think it can be ignored or discounted on the basis that it was obiter. It appears to me that the decision of the Legal Board of Appeal and the practice as set out in the Guidelines apply a proper purposive construction to Article 54(3). It is desirable, where possible, to adopt an interpretation of the EPC which is consistent with the interpretation applied in the EPO and I think we should do so here in relation to the interpretation of s 2(3) of the Act.
21.	In the result I will allow this appeal.