Relief for a Partially Valid Patent

1The expression ‘partially valid’ does not appear in the body of s 114 of the Patents Act. (Though the expression forms a part of the title to the section. ‘Partially valid’ appears in s 63(2) of the UK Patents Act 1977.) Where the court makes a finding with regard to the invalidity of a patent, the court may allow for the specification to be amended instead of revoking the patent. (Patents Act 1970, s 58(1).) The language of the Patents Act makes it clear that the provisions of s 114, like the corresponding provision in s 63 of the UK Patents Act, would apply only when the court has made a finding with regard to a valid claim while there being other invalid claims. (See Hallen Co v Brabantia (UK) Ltd [1990] FSR 134, p 138.) The court may grant the relief without an amendment or may require the patentee to amend the specification to the court’s satisfaction. Section 114 will not apply to a case where the patentee suggests amendments to a claim to overcome a judgment on invalidity, and argue that the claim has now become partially valid. (See Lubrizol Corpn v Esso Petroleum Co Ltd (1998) RPC 727, p 790 (CA).) Similarly, the provisions on partially valid specification cannot be attracted where the patentee has conceded that the patent is invalid. (See SmithKline Beecham Plc v Apotex Europe Ltd (No 2) [2005] FSR 24, para 21 (CA).)

2Section 114(2) requires the plaintiff to demonstrate two reasons for the invalid claim: (1) that the claim was drafted in good faith; and (2) that the claim was drafted with reasonable skill and knowledge. (These two requirements are same for amendments carried out under s 59(3) as well.) In determining whether the plaintiff (patentee) had framed the invalid claim in good faith and with reasonable skill and knowledge, the court shall ‘consider any mistake in the context of the whole specification, making due allowance for any difficulty that the draftsman has and of course the importance of the passage said to be mistaken’. (See Kirin-Amgen Inc v Transkaryotic Therapies Inc (No 3) (2003) RPC 3, para 150 (CA).) The court shall order damages or account of profits only if it is satisfied that the ‘specification as originally published was framed in good faith and with reasonable skill and knowledge’. (Patents Act 1970, ss 111(3) and 114(2).) The burden of proving these two elements is on the plaintiff. (See Kirin-Amgen Inc v Transkaryotic Therapies Inc (No 3) (2003) RPC 3, para 153 (CA).) “Elaborating this aspect, the Court of Appeal observed in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd:” ([1974] FSR 122, pp 166-67, (1975) RPC 203.)

On this question of good faith in framing a specification one is, we apprehend, basically in a field of inquiry whether the patentee or his agent knew something detrimental to the patent, as applied for in the form in which the specification was framed, which escaped the eagle eye of the examining officer in the Patent Office. If a patent agent puts forward something of which he has no knowledge, which suffers from some fatal imperfection in the patent field we do not consider that, when the patent office accepts it without demur, it can be said that it was framed otherwise than in good faith. It is, after all, the function of a patent agent to argue in honesty for the width of the application.

… On the question of good faith it is not to be expected that the patentee should in evidence first raise up and then exorcise the ghost of every possible defect in the unamended claim: if he destroys the defects that are suggested, that suffices. …

Section 59(3) does not speak of reasonable care but of ‘reasonable skill and knowledge’. This we take to be limited to the field of expertise peculiar to those concerned with framing specifications, and in no way to refer to mere commonplace slips which are from time to time the fate of those in many fields remote from patent expertise. A particular lack of reasonable care may in any given case exhibit a lack of reasonable relevant skill, but not in every case by any means, and certainly not in the case suggested.

3Good faith requires the plaintiff ’to prove that the specification was framed honestly with a view to obtaining a monopoly to which, on the material known to him, he believed he was entitled’. (See Hallen Co v Brabantia (UK) Ltd [1990] FSR 134, p 143.)

4‘Skill and knowledge’ relates to ’the competence employed in framing the specification and require the specification as framed to be in the form in which a person, with reasonable skill in drafting patent specifications and a knowledge of the law and practice relating thereto, would produce’. (Ibid.) The expression ‘knowledge’ will signify that the patentee had communicated his instructions and that the draftsman has followed the same. In this context, the Court of Appeal had observed in Kirin-Amgen: (See Kirin-Amgen Inc v Transkaryotic Therapies Inc (No 3) (2003) RPC 3, para 152 (CA).)

He submitted, rightly in our view, that what was important was that the specification should be framed with reasonable skill and knowledge. That must encompass the knowledge of the person which formed the basis of the information in the specification. It mattered not whether that knowledge was obtained using work done by a contractor. The issue had to be answered objectively and a patentee who used a contractor was not in any better or worse position than a patentee who did not. Thus, where a specification contained an obvious mistake due to work done by a contractor, however skilled, the patentee had to shoulder the burden of establishing that the specification was framed with reasonable skill and knowledge.

5The court has the discretion to award costs and determine the date from which damages or an account of profits should be reckoned. Such discretion shall be exercised taking into account the conduct of the parties in inserting such invalid claim in the specification or permitting them to remain there. The discretion of the court extends to allowing amendment of the invalid specification instead of revoking the patent. (Patents Act 1970, s 58(1).)