Patent Attorneys off the hook

Until recently, a defendant found to infringe a patent could escape having to pay damages if the patent had been amended, and the patent attorney who had made the amendments was found not to have acted with good faith and reasonable skill and knowledge (“GFRSK”). This could put patent attorneys and their patentee clients in adversarial positions, even though the patent attorneys would normally be working to help prove the patentees’ case.

However, the UK Patents Act 1977 was amended with effect from 1st October 2005 and, in a case in the Patents Court, Nokia v IPCom [2011] EWHC 3460 (Pat), Floyd J noted that the amendments made to Section 63(2) of the Patents Act 1977 meant that a lack of GFRSK was no longer an absolute bar to relief. The judge held that the court only had to take GFRSK into account when awarding relief. In addition, the judge held that the alleged infringers, Nokia, had to establish that there had been a lack of GFRSK in order to rely upon it.

At the trial of the main issues the judge had held that the amended claim of the patent at the centre of the dispute included added matter. The claim had previously been amended to replace reference to comparison with a random number by reference to an “evaluation” of a value without any reference to the random number. At trial the random number comparison feature was put back in the claim. Nokia’s main case on lack of GFRSK was that no reasonably competent patent attorney could have drafted a claim without the deleted feature, and reasonably believed it to be valid.

Floyd J rejected this submission. He noted that an Examiner at the EPO had accepted the claims even though third party observations had been filed by Nokia raising the precise point. In addition, the same point raised by five opponents had been rejected by the EPO in opposition proceedings. Given that the EPO is not know to apply a liberal approach to added matter, the judge thought that this was not the expected fate of claims which, according to Nokia, were so clearly and unarguably invalid.

“It follows that the issue in the present case has to be approached on the basis that a reasonably competent patent attorney could put forward claims in the form in which they were before amendment and reasonably believe them to be valid. That finding is important in its own right, and not merely because it removes the cornerstone of Nokia’s pleaded case.”

Accordingly the judge found that there was no lack of GFRSK.