Want to Amend Your Patent? “Put up in time, or shut up.”

The recent decision of the England and Wales Court of Appeal in Nokia v IPCOM has highlighted the importance for patent proprietors to apply early if they wish to amend the claims of their patent during a trial.  The Court of Appeal upheld a decision of the High Court to refuse two applications by IPCOM, made pre-trial and post-trial respectively, to amend the claims of its patent.

First Application to Amend

The patent in question, EP(UK)1,186,189, concerned technology which had been found to be essential for compliance with the 3G telecommunications standard and as such was potentially important.  Three days before the trial date, IPCOM, the patent proprietor, applied to amend the patent claims in order to “further distinguish” the claims from a new prior art citation which Nokia, alleging the existing claims to be invalid, had applied to introduce into the proceedings six days previously. The new prior art citation was a previous version of the GSM recommendations which were already under consideration. The application by Nokia to formally introduce the new prior art into the proceedings was withdrawn at the beginning of the trial.  However, despite the apparent reason for the amendments being removed, IPCOM did not withdraw  its application to amend the claims.

Nokia objected to IPCOM’s amendment application, arguing that introduction of the amended claims at such a late stage would be procedurally unfair.  The trial judge, Floyd J, agreed, noting that the application had been made so late that Nokia would not be in a position to deal with the amended claims adequately without an adjournment.  The trial went ahead on the basis of the existing claims, with Nokia successfully alleging the claims to be obvious and causing the patent to be revoked.

Second Application to Amend

In appealing to the Court of Appeal, IPCOM renewed its application to amend the patent claims.  In support of its second application, IPCOM indicated that its first application for amendment had been responsive to validity arguments developed by Nokia only shortly before the trial and therefore could not have been made earlier.  The trial judge had therefore been wrong to consider it to be ‘late’.

Nokia again argued that the application for amendment should be refused.  It submitted that to allow the amended claims to be introduced would essentially be to allow IPCOM a second bite at the cherry, requiring a whole new trial on the patent’s validity.

In its decision to dismiss the appeal, the Court of Appeal agreed with Nokia by noting that procedural fairness requires a party to put forward the whole of its case before trial in order to avoid the expense, delay, uncertainty and double vexation suffered by the successful party.  In particular, Jacob LJ’s judgment explicitly rejects IPCOM’s submission that the first amendment application was not ‘late’ and notes that the reason given for the application, i.e. the new prior art applied for by Nokia, had ceased to exist following the withdrawal of Nokia’s new prior art application at the beginning of the trial.

Conclusion

Article 138(3) of the European Patent Convention (EPC) provides that:

“the proprietor of [a] patent shall have the right to limit the patent by amending the claims.  The patent as thus limited shall form the basis for the [revocation] proceedings”.

This decision makes it clear, however, that the proprietor’s right to amend its patent under Article 138(3) EPC is overridden by the principle of procedural fairness.

Jacob LJ ends his judgement by noting with approval the trend across Europe to make parties put their cases in time for them to be dealt with fairly at the pre-arranged trial date.  According to his penultimate paragraph, the message is “put up in time, or shut up”.

John Chettle 12 May 2011

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