Recent high profile appointments and developments will strengthen the UK’s reputation as a forum for solving complex patent litigation
It was recently announced that veteran intellectual property attorney (IP), James Mellor QC, has been appointed as a High Court Judge for the Chancery Division. His appointment will take effect February 8, 2021 and there is no doubt that given his very strong patent experience and technical background, he will be properly assigned to the patent court.
The English patent court has long enjoyed a good reputation (nationally and internationally) as an attractive forum for hearing technically complex patent disputes. It is a specialized court with specialized judges who have extensive experience in patent matters and deliver coherent, well-founded judgments that make a significant contribution to global patent law.
It was an eventful year for judges and former patent court judges. Here we examine some of these recent developments as well as part of the history of the court’s reputation as a center for hearing patent disputes.
Advantages and disadvantages
What are the pros and cons of using a specialized court like the patent court to hear disputes?
Specialized courts are considered to be far more effective and efficient in dealing with a specific area of law than general courts (especially when it comes to a complex area of law like intellectual property). This applies to the streamlining of the procedure; Dedicated judges will spot fact patterns and issues more quickly, allowing them to make effective case management decisions to focus on key issues (e.g. the patent court’s pragmatic approach to disclosure in the light of Positec v Husqvarna and Illumina v Premaitha). This also applies to the implementation of experiments in which less time is required to explain technical concepts and the judges experienced in this area are more familiar with the competent authorities. For litigants, this means knowing how to best frame their cases at the beginning of the lawsuit and how to best focus the evidence and arguments. When negotiating, there is seldom a need to build the case from scratch.
In the case of specialized courts, the reliability and coherence with higher quality decisions by experienced judges should be increased, which should lead to more predictable results. Consistent decision-making is important for the users of the court. Inconsistencies lead to a lack of trust and a reduced appetite of the litigants to use the court. This loss of confidence was seen in the early years of the Patent County Court (now IPEC (Intellectual Property Enterprise Court)) when most of the decisions on appeal were overturned.
Some of the downsides are that specialist judges get caught up in a certain mindset or addressing certain issues without seeing the broader context. Generalistic judges can provide a breath of fresh air by addressing problems without prejudice. This can occur when a specialist judge feels familiar with technology based on a previous case in a similar area. Another problem that is sometimes raised is that the patent court can from time to time be harsh on patent owners. The answer to this is often that the UK system is not patent protection per se, but it is procedurally strict and can be unforgiving on weak patents. It doesn’t have the same presumption of validity as some other jurisdictions. In addition, the examination of data from decisions of the patent court in recent years shows that the patents examined have been confirmed as valid in most cases.
Constitution of the Patent Court
The Patent Court consists of a number of appointed Judges from the Chancery Division of the High Court. They are appointed by the Lord Chief Justice in consultation with the Lord Chancellor. In practice, patent judges are often, but not always, selected from very experienced patent attorneys (mostly patent attorneys) with technical, scientific or technical backgrounds. This has allowed the court to gain extensive experience in patent law and the ability to handle complex technologies (the court can appoint a scientific advisor, but this is quite rare in practice).
There are currently 17 chancellor judges, including six judges assigned to the patent court. Patent cases are categorized by reference to technical complexity ratings on a scale of one to five (with five being the most technically complex). In the past, Aldous, Jacob, Laddie, Pumfrey, Kitchin and Floyd JJ were able to listen to the most technically complex patent cases (as they did then). Currently, Birss and Meade JJ can hear cases with a technical difficulty level of four or five out of the six registrar judges assigned to the patent court. IP practitioners appointed as deputy high court judges are also on hand to hear patent proceedings to help clear bottlenecks when there are too many category four or five cases in the patent court.
Professional patent judge
Specialized patent funnels existed before the patent court was officially established under the 1977 Act. The first judge for such patents, Judge Lloyd-Jacob, was appointed in 1950 under the previous 1949 law. Previously, patent matters in the Chancery Division of the High Court were usually dealt with by any chancery judge. The lack of specialist judges has been a factor that has resulted in lengthy patent litigation, with considerable time being spent explaining the technology of the invention to judges and relevant authorities known to patent practitioners. It was recommended (by the Swan Committee in 1946, implemented in the 1949 Act) that two judges with appropriate technical or scientific qualifications, and preferably some experience in patent litigation, be appointed to hear patent claims. A second patent judge, Mr. Justice Graham, was appointed in 1969 (he had no scientific background but was experienced in patent matters at the bar).
As a result, it was recognized that a specialized court was needed to handle patent disputes more efficiently and effectively. This recommendation was made in 1970 by a government committee (the Banking Committee) set up to review the patent system, and was eventually incorporated into reforms introduced by the Patent Act 1977 (which the UK updated and adapted to aspects of other national European patent systems and is the current cornerstone of UK patent law).
The appointment of James Mellor QC is the latest news among patent judges in recent years.
In 2018 the patent court already had a very strong line-up with Arnold, Birss and Henry Carr JJ, who could hear all cases in category four or five. On the appeals court, we had former high-ranking patent court judges, Lords Justices Kitchin and Floyd (and Lewison LJ, who is also experienced in hearing patent matters at the bank). At the Supreme Court we had Lord Neuberger, who studied chemistry at the university and had extensive experience of hearing patent matters throughout his career as a judge. During that time there was strength at all levels of the judiciary. It was reminiscent of the bank strength that existed between the mid-1990s and mid-2000s when Jacob, Laddie and Pumfrey JJ were judges in the patent court with Aldous LJ on the appeals court and Lord Hoffmann in the House of Lords.
In June 2018 it was announced that Lord Justice Kitchin would be appointed Supreme Court Justice (effective October 1, 2018). In July 2019, we heard of the tragic loss of Mr. Justice Henry Carr. A few days before this sad news, it was announced that Judge Arnold would be raised to the appeals court. That appointment took effect on October 1, 2019, but Lord Justice Arnold was still hearing patent and legal proceedings in the High Court as of April 2020 (when he delivered the Akebia Therapeutics v Fibrogen judgment).
In July 2020, it was announced that Mr. Justice Birss would be appointed to the Court of Appeal (his appointment will take effect if vacancies arise from autumn 2020). While this was great news and added to the patent strength in the appeals court, there was very real concern about the vacuum created by their departure. When decisions are unreliable in the first instance, it adds costs to businesses and unduly delays the process. Who would fill the void and would we still have the same caliber of judges in the first instance?
The welcome relief came in September 2020 when it became known that Richard Meade QC was appointed Registrar and has since been assigned to the Patent Court (it is likely that he will be the “competent judge of the Patent Court”). if Mr. Justice Birss is officially increased). Mr. Justice Meade was an outstanding patent attorney with particularly strong expertise in the most complex areas of technology. This news, combined with the latest appointment of Mr. Justice Mellor, is excellent news for users of the patent court.
The appointment of Judges Mellor and Meade JJ ensures continuity of strength for IP cases at all levels of the judiciary. We will have Floyd, Lewison, Arnold and Birss LJJ as patent specialists on the Court of Appeal and Lord Kitchin on the Supreme Court. So far, Lord Kitchin has heard only a single patent complaint as a Supreme Court Justice (Shanks v Unilever on Compensation for Inventions with outstanding benefits) since his appointment took effect despite the relatively high volume of patent complaints in the Supreme Court of late, a few Years. This is partly due to the timing of his appointment and partly due to his previous involvement as a judge on the appeals court in patent cases that were later filed in the Supreme Court (e.g. Regeneron v Kymab and Unwired Planet v Huawei).
With these recent judicial appointments, the UK Patent Court is well on its way to continuing to set a strong example of the benefits a specialized court can bring to intellectual property owners, other users of the court and consumers.