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| Author Mark Stevenson Licence CC BY-SA 2.0 Source Geograph Britain and Ireland |
| Jane Lambert Sir Colin Birss was the guest of honour at last night's dinner meeting of The Intellectual Property Society of Yorkshire ("TIPSY") at the Double Tree by Hilton on Granary Wharf. He talked about two topics: plausibility in patent law and the Shorter Trials Scheme provided by para 2 of PD57AB—Shorter and Flexible Trials Scheme. "Plausibility" is a hot issue in IP law right now. It has given rise to a flurry of cases here and at the European Patent Office. Essentially, it means that a patent can be granted for an invention only if the invention works. Sir Colin explained his point by comparing a patent to a car. Just as a car needs a drive shaft to run, so a patent needs to be plausible. Sir Colin stressed that this was not a new doctrine. He said that it existed under the Patents Act 1949 in the requirement in s.4 (4) that a claim must be "fairly based on the matter disclosed in the specification" as well as clear and succinct. It had been an issue in the Molnlycke litigation in the 1990s though again it was not referred to as plausibility as such. Sir Colin talked about the English cases starting with the Supreme Court's decision in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (24 June 2020). He also mentioned the decision of the Enlarged Board of Appeal in G 0002/21 Syngenta Ltd v Sumitomo Chemical Co. Ltd 23 March 2023 which he said was also decided on the basis of fairness. That prompted a question from me because the Board held that evidence about the invention that had been posted after the date of the patent application could be considered in an assessment of the patent's validity which strikes me as anything but fair as it would greatly extend the patentee's monopoly, Sir Colin disagreed because the evidence would still have to relate to matter that had formed part of the original patent application. Sir Colin explained that the Shorter Trials Scheme was intended for cases that fell just outside Section V pf CPR Part 63. Trials have to be completed within 4 days. There are special requirements for pre-action correspondence, the content and exchange of statements of case, case management and costs. For those who want to study the topic more I wrote IPEC and the Shorter Trials Scheme Compared on 28 Feb 2022 in NIPC Law. Sir Colin warned that the Shorter Trials Scheme was a pilot scheme and that it might be withdrawn if no one used it. All the questions from the floor other than mine were on the Scheme. One attendee said that he would prefer costs management to costs cap. Another who had failed to persuade a district judge to transfer a case on copyright in type fonts from the County Court to IPEC because he thought a trial would take longer than 2 days asked whether she could have sought a transfer directly to the Shorter Trials Scheme. I enjoyed both parts of Sir Colin's talk. Although I have never been instructed in a matter in which plausibility has been an issue it is a topic upon which I have some knowledge. Just over a year ago, I gave a presentation on the subject to a large audience in Birmingham. My slides can be downloaded here and my accompanying notes are here. According to Andrew Clay, TIPSY had a record attendance at this event. Apparetntly over 80 turned up, Andrew did a lot to organize and promote the dinner meeting. Sir Colin described Andrew as a "good guy", a compliment that is well deserved. I met a lot of old friends at the dinner and made the acquaintance of many more Yorkshire IP practitioners. Anyone wishing to discuss this article may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at all other times. |
