A niche blog dedicated to the issues that arise when supplementary protection certificates (SPCs) extend patents beyond their normal life -- and to the respective positions of patent owners, investors, competitors and consumers. The blog also addresses wider issues that may be of interest or use to those involved in the extension of patent rights. You can email The SPC Blog here

Wednesday, 3 April 2013

IPO consults on extending 'Appointed Person' facility to SPC appeals

The United Kingdom Intellectual Property Office (IPO) has published a consultation paper on whether to extend the use of Appointed Persons from trade mark law to to patents. At present, trade mark appeals from the decisions of IPO hearing officers may be made to the High Court (of which the Patents Court forms part) or to a specially designated Appointed Person. In the former case, further appeals may be made to the Court of Appeal and Supreme Court, while in the latter case -- as a means of preventing the costs of an appeal from spiralling upwards -- the decision of the Appointed Person is final and no appeal may be made on substantive legal grounds. According to the IPO:
"This discussion document takes a look at the issues surrounding introducing an Appointed Person appeal route for patents matters (and, by extension, matters relating to supplementary protection certificates)".
It is difficult to imagine why proprietary pharma companies and their generic counterparts would wish to opt for an appeal against which there is no appeal in an area of law which is so complex and uncertain -- but we won't know for a while what the outcome of this consultation will be, since the closing date for the submission of responses is 21 May 2013.

Click here for a little more background
Click here for the consultation paper


Anonymous said...

The AP can make referrals directly to the CJEU, so this appeal route might be attractive if there was an understanding that the AP would be pro-reference if ever minded to refuse. Otherwise it seems too risky.

Anonymous said...

I agree - think of Arnold at first instance saying Neurim was acte clair and refusing the appeal.