Actavis UK Ltd v Merck & Co Inc [2008] EWCA Civ 444, [2008] All ER (D) 290 (May)
Court of Appeal, Civil Division
Ward, Jacob and Rimer LJJ
21 May 2008
The Court of Appeal is free but not bound to depart from the ratio decidendi of its own earlier decision if it is satisfied that the European Patent Office Boards of Appeal has formed a settled view of European patent law inconsistent with that earlier decision; generally, the Court of Appeal will follow such a settled view.
Peter Prescott QC and Ian Karet (instructed by Linklaters) for the defendant.
Antony Watson QC and Thomas Hinchcliffe (instructed by Linklaters) for the defendant.
Simon Thorley QC and Piers Acland (instructed by Bird & Bird) for the claimant.
The claimant sought revocation of the defendant’s patent EP (UK) 0 724 444 on the grounds of novelty and obviousness. The judge ruled against the defendant, which appealed. The issue arose as to whether or not the Court of Appeal was bound by one of its earlier decisions if there was contrary authority of the European Patent Office Boards of Appeal. The defendant contended that it was not, and hence the court should recognise and apply a new exception to the general rules of precedent for the Court of Appeal laid down in Young v Bristol Aeroplane Co Ltd [1946] 1 All ER 98.
LORD JUSTICE JACOB: (GIVING THE JUDGMENT OF THE COURT):
His lordship accepted that the special circumstances arising from the creation of the European patent system and the central importance given to decisions of the Boards of Appeal required the Court of Appeal to recognise a further exception to the rules laid down in Young. The rule held that:
“…this court is bound to follow previous decisions of its own as well as those of courts of co-ordinate jurisdiction. The only exceptions to this rule…[are]: (1) The court is entitled and bound to decide which of two conflicting decisions of its own it will follow. (2) The court is bound to refuse to follow a decision of its own which, though not expressly overruled, cannot, in its opinion, stand with a decision of the House of Lords (3) The court is not bound to follow a decision of its own if it is satisfied that the decision was given per incuriam.”
The rule in Young, however much it had been endorsed by the House of Lords, was at heart a rule imposed by the Court of Appeal on itself. So ultimately it was for the Court of Appeal, exercising its powers in favour of legal certainty, to rule on whether there could and should be further exceptions to the rule. That could only be done by considering all the circumstances and practicalities of a proposed exception.
In that connection it was important to note that international influences had come to have great significance in our law. At the time of Young the English and Welsh system was what the physicists would call “closed.” The law was made by the judges as common law and by Parliament as statutory law. Outside sources were negligible. Now things had moved on. The UK was now a member of the European Union, was a party to the European Convention on Human Rights, and, of particular relevance to this case, was a party to the European Patent Convention.
It would be absurd to say the rule laid down for the closed system in 1944 necessarily had to apply in all those changed circumstances.
The court was therefore free to decide what it should do if it found that its earlier interpretation of the “European Law for the grant of pat-ents” was clearly inconsistent with a settled interpretation given by the Boards of Appeal of the EPO.
His lordship began by noting that the EPC sought to harmonise patent law for all members of the Union, now numbering 34. Article 1, headed “European Law for the grant of patents” provided: “A system of law, common to the Contracting States, for the grant of patents for invention is established by this Convention.”
And the Patents Act 1977 said in its preamble that it was an Act, “to give effect to certain international treaties” one of which was the EPC. Section 91 said that “judicial notice shall be taken” of “any decision of, or expression of opinion by, the relevant convention court on any question arising under or in connection with the relevant convention”.
By s 137, the EPO Boards of Appeal were included within that definition.
Judicial notice
Technically the expression “judicial notice” meant no more than the identified material could be received by the court without further proof. But there would be no point in that provision if the court, having admitted an expression of opinion of a Board of Appeal, could not consider it as an aid to reaching its judgment. So there was statutory backing on top of common sense and the high judicial authority all pointing one way: to the conclusion that UK courts should strive to follow the EPO’s interpretation of the treaty.
If the UK was out of line, it would either be going too far or not far enough; either recognising as valid patents which the EPO had held should not as a matter of law, be granted (that could happen, for instance, if the application were made to the UK Office) or holding invalid patents which the EPO considers were valid. Either situation would be bad for the European market.
Accordingly, there was a very limited exception to the rule in Young. The Court of Appeal was free but not bound to depart from the ratio decidendi of its own earlier decision if it was satisfied that the EPO Boards of Appeal had formed a settled view of European Patent law which was inconsistent with that earlier decision. Generally the Court of Appeal would follow such a settled view.
His lordship dealt with the appeal on the facts and held that it should be allowed.
