Too late, Tulane: appeal dismissed

Tulane Education Fund v Comptroller General of Patents [2013] EWCA Civ 890 is a ruling delivered yesterday by the Court of Appeal for England and Wales. The court had a somewhat unfamiliar line-up, featuring one specialist IP judge in Lord Justice Kitchin, plus Sir Terence Etherton -- Chancellor of the High Court -- and Lord Justice Underhill. The name Underhill is better associated with hobbits and with a football stadium with a notoriously sloping pitch from which North London team Barnet FC was ignominiously driven, than with anything to do with patent-related appeals.

This was an appeal against the decision of Roger Wyand QC (sitting as a Deputy High Court judge) in July 2011 (noted on The SPC Blog here) to uphold the rejection by the Intellectual Property Office (IPO) hearing officer of Tulane's application to reinstate its supplementary protection certificate (SPC), following its failure to pay the prescribed fees in time.

In short, the basic patent upon which the SPC application relied expired on 10 July 2008, the SPC being due to come into effect the next day. Tulane instructed Dennemeyer & Co to pay the SPC fees within the period for making payment which was prescribed under the Patents Act 1977, but this did not happen. Dennemeyer did try to pay the fee immediately following the prescribed period, using the electronic renewal system for patents, at the same time as it made payments for over 3,000 other patent renewals. Unfortunately, the system attempted to read the SPC number as if it was a patent number; since the number was not recognised as a valid patent number, the payment was rejected. Dennemeyer was confused by the reference in the rejection report to a patent number which it did not recognise, and took no further action. The error was only realised after the period for late payment of the prescribed fee had expired, which meant that the SPC lapsed on the date of expiry of the basic patent.

At this point, Tulane then applied to the IPO for (i) a correction of an irregularity under the Patents Rules 2007 r.107 or (ii) reinstatement of the SPC under s.20A of the Patents Act or (iii) restoration of the SPC under s.28 of the same Act. However, both the hearing officer and Roger Wyand QC concluded that Tulane had failed to pay the prescribed fee in due time and that accordingly the SPC, although properly applied for and granted, never came into effect.

On appeal, Tulane submitted that the judge fell into error in failing to find that the fee regime in sch.4A para.5 of the Patents (Compulsory Licensing and Supplementary Protection Certificates) Regulations 2007 (SI 2007 No 3293) was ultra vires, since Regulation 1768/92 art.13 contained a mandatory requirement that the SPC would take effect at the end of the lawful term of the basic patent, which was not contingent on any fee being paid. Tulane further argued that the judge should not have found that the reference to the 1992 Regulation in s.128B could be construed as a reference to Regulation 469/2009.

The Court of Appeal dismissed Tulane's appeal.  According to the Court:

• An SPC could be granted quite some time before it was due to take effect and the maximum term of each SPC would vary, subject to the requirement that the duration of the certificate could not exceed five years from the date on which it took effect. The Patents (Fees) Rules 2007 r.6 provided that the fee increased as the number of years for which the SPC was to have effect increased, and that an applicant was not required to take an SPC for the whole permitted period, but could do so for a shorter time and then only pay a fee in respect of those years for which he had elected.
• The requirement imposed by r.116 of the 2007 Rules, that the fee had to be paid before the SPC could take effect, did not mean that the fee ceased to be an annual fee. Nor did the fee cease to be an annual fee because the Rules imposed an obligation to pay it all at once. The Rules were not in conflict with art.13. So long as the fee was paid within the prescribed period, the SPC would automatically take effect on the day after the expiry of the basic patent.
• Section 128B explicitly defined the SPCs to which it applied as including certificates issued under the 1992 Regulation. It was thus beyond doubt that Tulane's SPC was granted under the 1992 Regulation and was therefore an SPC to which s.128B applied. Section 128B had not been repealed or amended.
• Tulane's SPC remained an SPC granted under the 1992 Regulation; the mere fact that the 1992 Regulation had been repealed could not change its status as an SPC granted under the 1992 Regulation. For that reason, the only provisions of the 1977 Act which applied to it were those set out in sch.4A (para.61).