Rigcool v Optima Solutions - some confusion over dates

How do you calculate a "period of two years beginning with the date of grant"? Does this period include the anniversary date of the date of grant or not? This was the essence of the recent case of Rigcool Limited v Optima Solutions Limited, which resulted in a pair of decisions issued on 5 May (BL O/149/11) and 1 June 2011 (BL O/182/11).  Following these decisions, the period may well not be what you previously thought it was.  This could have rather interesting (if not worrying) consequences for other periods specified in the UK Patents Act and Rules.

Applications were made by Rigcool (which was termed the pursuer because the hearing was held in Scotland by request of both parties) under sections 37 and 72 on 27 August 2010 in relation to a GB patent granted on 27 August 2008 to Optima (the defender). The issue to be decided was whether the applications had been filed out of time, because both sections specify a time limit of "the end of the period of two years beginning with the date of grant".

However, according to section 130(7), both sections were framed to have, as nearly as practicable, the same effects as Article 23.3 of the Community Patent Convention (CPC), which states that legal proceedings "may be instituted only within a period of not more than two years after the date of grant". The defender submitted that the two year period ended on the day before the second anniversary of grant, which would mean the applications were filed out of time. The pursuer did not disagree, but argued that the wording of the CPC should be worked from directly. The hearing officer agreed that, if the CPC were to be followed, the anniversary date would be included.

The pursuer argued that applying the CPC directly was consistent with Bristol Myers Squibb v Baker Norton Pharmaceuticals [1999] RPC 253, in which Jacob J (as he then was) stated that "save in the rare event of a specific contention that a provision of the 1977 Act has a different meaning from a corresponding provision of a Convention, it will be better [...] to work on the basis that the corresponding provisions of the Conventions are of direct effect" (paragraph 4). From this, however, the hearing officer considered that the case was in fact one of those rare events where the UK Act did have a different meaning from a corresponding provision in the CPC. The CPC did not therefore have direct effect.

Reference was also made to the judgment in Yeda Research and Development v Rhone-Poulenc Rorer International Holdings [2007] RPC 9, in which Jacob LJ stated that the court should construe section 37(5) to have the same meaning as the provision in the CPC about bringing entitlement more than 2 years after grant. In that case, however, the hearing officer noted that the argument was not about the precise start and end date of the two year period, and any difference did not appear to have been considered. The hearing officer therefore concluded that, once such a difference had been identified, the court must take a different view of the draftsman's re-writing. The wording of the Act should therefore be followed rather than the CPC in relation to the end date of the two year period. It followed that the pursuer's applications had been filed out of time, resulting in a need for the revocation action to be ruled inadmissible and no order being possible as a result of the entitlement proceedings.

The hearing officer allowed the parties to make further submissions on the question of whether, in this case, rule 107 should apply, i.e. whether the comptroller should extend the period by one day for the purpose of the proceedings. In the subsequent decision the hearing officer then considered whether the conditions for exercising discretion under rule 107 applied. According to the Court of Appeal in M's application [1985] RPC 249, the applicant had to show that the Office was guilty of an error, default or omission, that this had contributed to the failure to meet the time limit, and that the contribution played a significant part in the applicant's failure. The pursuer argued, in light of previous decisions by the Office and the Office's litigation manual and manual of patent practice, and the fact that practice in relation to trade marks had been revised in 2010 in relation to the same issue, that the Office had contributed to a general understanding that the period included the anniversary. The defender argued against the discretion being used, since there had been no error on the part of the Office and, as the manual of patent practice stated (MPP 123.10), the power should not be applied too readily but only in cases where it was warranted and only in accordance with the case law.

The hearing officer considered that the passages cited from the litigation manual and MPP did not support the pursuer's argument as much as they proposed, but neither did they support the defender's view, with the result that the manuals did not clearly point out that the second anniversary date was excluded. The hearing officer accepted that it had not been clearly Office practice to regard the second anniversary date as being outside the two year period. The Office had therefore contributed in part to the failure of the applications being filed out of time. The irregularity could therefore be rectified by extending the period by one day in the particular case. The hearing officer ordered accordingly.

It is fairly clear from this case that the IPO will need to revise their stated practice to indicate clearly that the two year period expires on the day before the anniversary date, so as to prevent this sort of thing happening again.  The issue does, however, seem to raise the fundamental question of whether the IPO have got their calculations right for other periods, because the same form of wording is used in several other places in the Act and Rules.  Here are a few examples:

• Section 2(4): 6 month period for a breach of confidence disclosure;
• Rule 30: the compliance period;
• Rule 12(3): provide name and address;
• Rule 12(9): file a translation into English (or Welsh);
• Rule 28(2): request substantive examination;
• Rule 32: request reinstatement;

If the IPO is correct in their interpretation of the 2 year period under Section 37(5), does this mean that the same interpretation should apply to all the other periods where the same wording is used?  If so, why does the IPO not follow this rule in practice (an example being the date given for requesting examination)? If not, how can the same wording be interpreted differently for different purposes? Alternatively, is the IPO wrong in their calculation of the 2 year period? Either way, something serious seems to be wrong and needs to be sorted out.

Update: Thanks to Filemot for pointing me to the trade marks tribunal practice notice that was referred to in the first of these decisions. This states in part:

"4. The term 'beginning with' requires that the publication date be included in the calculation of the opposition period (as opposed to periods starting ‘from’ where the day of the initiating event is excluded from the calculation). Explanations of the interpretation of wording in respect of time periods can be found in Trow v Ind. Coope (West Midlands) Ltd CA [1967] 2 QB 899 and Zoan v Rouamba [2000] 2 All ER 620, at paragraph 24.

5. According to the Interpretation Act 1978 a month means a calendar month. It appears from Halsbury's Laws of England that:

"When the period prescribed is a calendar month running from any arbitrary date the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts: save that, if the period starts at the end of a calendar month which contains more days than the next succeeding month, the period expires at the end of the latter month."

6. Consequently, where an opposition is made under section 38(2), or an extension is requested to the opposition period under Rule 17(3), the opponent should ensure that it is filed, at the latest, on the day immediately preceding the day corresponding to the date two months after the date of publication. For example, a trade mark advertised in the trade mark journal on 24 September 2010 would have a latest date of 23 November 2010 by which to file an opposition on a TM7 or request an extension to the opposition period on a TM7a."

The inference from this, as applied to all other periods in the Patents Act where the words "period beginning with" are used, is that almost all are interpreted wrongly as a matter of course, in particularly by the UKIPO themselves.

Update 1/7/11: As expected, the Manual of Patent Practice for section 37 has now been updated (see here).  New section 37.20.1, in relation to the two year period under s37(5) now states:

"The reference must be made by, at the latest, the day before the second anniversary of the date of grant. This was confirmed by the Hearing Officer in Rigcool Ltd v Optima Solutions UK Ltd BL O/149/11. In this case, the reference was made two years to the day (27 August 2010) from the date of grant (27 August 2008). The Hearing Officer held that the words “the period of two years beginning with the date of the grant” meant that the period included the date of grant, and ended the day before the second anniversary of the date of grant – i.e. 26 August 2010 in this case. This is consistent with the way the Office interprets the words “beginning with” in s.25(1), relating to the term of the patent (see 25.04.1). However, the corresponding Art.23(3) of the CPC [1989] provides that entitlements proceedings may be instituted only “within a period of not more than two years after” the date on which the patent is granted. The Hearing Officer held that the plain meaning of this provision of the CPC is that the period would end on the second anniversary of the date of grant, rather than the day before. He decided that in this case where there was a clearly different meaning of the Act compared with the corresponding provision of the CPC, he was obliged to follow the wording of the Act".

There is, however, no mention of what this means for all the other places where the same wording is used.

Musion v Activ8-3D - tea making and joint tortfeasance

Once enmeshed in a patent dispute, it can be very difficult to extract yourself from it, even if the validity of the patent in question is illusory and you only admit to making the tea and doing a bit of light stapling rather than infringing the patent. This is something that all of the parties are in the process of finding out in the case of Musion Systems Ltd v Activ8 -3d Ltd & Ors, an interim decision relating to which was recently handed down by HHJ Birss in the Patents County Court.

The patent in question, GB2427708, related to a variation on a very old trick known as 'Pepper's Ghost', the principle of which dates back to Victorian times. The variation claimed in the patent related to a way of generating an illusion by projecting an image on an inclined and tensioned transparent screen (rather like in the picture shown on the right).  The patentee, Musion Systems, alleged that the four defendants, which included their rivals Activ8-3D, along with one of their directors, had been infringing the patent by making and selling systems falling within its scope.  All parties had at one point worked together but, through one reason or another, had fallen out with each other.  To add to the complications, the defendants had also fallen out with each other and gone their separate ways in producing and selling projection systems.

Two of the defendants (C2R Limited and David Dutton) did not dispute that they had done the acts claimed by the patentee, while the other two (Activ8-3D and Simon Humphreys, one of their directors) denied infringement.  Systems argued by Musion to fall within the scope of the patent had been made and installed at various times, but not necessarily by all of the defendants in each case.  It was arguable in at least some of the cases whether there had been an "offer for disposal" or the product had been made, in accordance with section 60(1)(a). The issues to be decided, as far as HHJ Birss was concerned, were whether the defendants were working together and whether two of them (Activ8 and Simon Humphreys) were liable for the acts of the third (David Dutton), but not whether the reverse was true.

A large amount of material in the form of witness statements and other evidence was gone through, which I will not go into in detail.  One key point was that David Dutton had worked with Activ8, but had then (surreptitiously, as it appears to have turned out) gone off to make and sell products under his own new company, C2R.  The question was then whether Activ8, in particular through the actions of their director Simon Humphreys, could be said to be a joint tortfeasor with Mr Dutton through assisting in the installation of any of the products argued by Musion to be infringements.  In relation to one particular installation (the 'Trilogix' installation), Mr Dutton had been assisted by Mr Humphreys, who apparently helped with some woodworking, light stapling and tea making.  HHJ Birss found that, although the installation was directed by Mr Dutton and invoiced by his company, the acts relating to the relevant Pepper's Ghost systems "were carried out pursuant to a common design between David Dutton, Simon Humphreys and Activ8" (paragraph 97 viii)).  The idea that the installation was independent of Activ8 and Mr Humphreys made no sense to HHJ Birss, and he rejected it.  As a result, the acts were carried out such that Activ8 and Mr Humphreys would be liable as joint tortfeasors if these acts turned out to be torts (which, of course, depended on the patent being valid, which was left to be decided).

All of this inevitably led to the defendants being unfortunately unable to extricate themselves from the question of whether they could be liable for infringement, leaving them with little option but to attack the patent itself for being invalid, which I gather they will be doing in the near future.  Fortunately for them, the patent, which has as yet not been tested, appears to be on ground that is not entirely steady.  For those interested in delving further, it is worth noting that a corresponding European application granted last year with narrower claims than the earlier granted GB patent has now been opposed by Activ8.  It will be interesting to see what happens once validity comes into play in the UK.  Given HHJ Birss' track record, it seems likely that the matter will be disposed of before the EPO get going. I suspect that this is one I will be coming back to after not too long.

UPDATE 10 July 2016: Goodness me, things can take an awfully long time at the EPO. Oral proceedings on the corresponding European patent have been scheduled for 28 November 2016.