By Reuben Jacob

 

The UK Intellectual Property Office (UKIPO) can issue non-binding opinions on whether a patent is valid and/or infringed. The procedure allows an opponent to test validity or infringement issues without initiating full inter partes proceedings, but doesn't entirely avoid the risk of costs being awarded. This service has been available since 2005. There were 31 such requests in 2016, of which 21 were requests for opinions on validity, 9 on infringement and 1 on validity and infringement. Numbers for 2017 to date are similar.

 

Anyone can ask for such an opinion, but the patentee can request a review of the opinion.

 

In Decision O/318/17, our Reuben Jacob successfully petitioned for review of one such opinion, and a modest costs award was made.

 

The UK IPO Hearing Officer reviewed Opinion 23/16 and concluded that the Examiner had made an error of principle and had been wrong to conclude that UK patent GB 2478028B was invalid. We represented Linpac Packaging Limited ("Linpac"), the patent proprietor.

 

The patent concerned containers suitable for use in packaging, storage, transportation and/or display of a product, such as fresh food or a medical product. A process for making a container was also claimed. Ingenium IP Limited had requested an opinion on validity in light of nine patent documents which included document D2 (listed on the search report for the PCT application, but not considered in detail) and document D9 (not previously considered).

 

The invention provided a solution to the difficulty of attaching an effective sealing film to a container made from polyethylene terephthalate (PET), without the need for complex sheet structures (expensive and difficult to recycle) and minimising the risk of food contamination. This was achieved by providing a layer of adhesive only to the upper surface of the flange of a PET tray in order to seal a multi-layer film comprising a polypropylene (PP) and/or PE seal layer. The figure below shows a cross-sectional view of a typical container according to the invention: The one independent claim (claim 1) of the patent was the only claim discussed during the hearing (reproduced below, with the hearing officer's emphasis):   A container comprising a base and a continuous side wall extending substantially perpendicular to the base with a peripheral flange formed along the upper,inuse,edge of the continuous side wall, wherein the base and the continuous side wall consist essentially of polyethylene terephthalate (PET) wherein a layer of adhesive is located on an upper,inuse,surface of the peripheral flange and said layer of adhesive does not extend onto the vertical, in use, surfaces of the continuous side wall and does not extend onto the base wherein the container further comprises a lidding film which may be sealed to the peripheral flange to create a sealed space between the base, continuous side wall and lidding film; and wherein the lidding filmis a multi-layer film comprising a seal layer and the seal layer comprises polypropylene (PP) and/or PE.

 

 

The pertinent issues before the Hearing Officer related to:

• the construction of "substantially perpendicular" and "vertical" in the examiner's opinion; and
• whether D9 (US4538651A) clearly disclosed a sealing layer comprised of PP and/or PE.

 

An additional issue was raised, namely whether the examiner had been correct to disregard a machine translation (into English) of D2, but this was found to be irrelevant as an Australian equivalent of the D2 patent was available and had been considered.

 

The construction of "substantially perpendicular" and "vertical"

 

The Examiner had applied the 'Windsurfing' test for inventive step, construed claim 1 of Linpac's patent and concluded that the terms "substantially perpendicular to the base" and "vertical, in use, surfaces" simply meant surfaces which extended away from the base to create a space. However, the Hearing Officer found that the Examiner had erred in his construction of these particular terms. As the Hearing Officer noted, "perpendicular to the base" would mean an angle of 90° between the side wall and the base, and "substantially" introduced a range either side of 90°. The Examiner's construction would encompass an extremely broad range of angles (such as 30° or 45°), which would include embodiments with side walls that could not be described as 'vertical' or 'substantially vertical' on any reasonable interpretation.

 

Based (at least in part) on his construction, the Examiner had concluded that D2 demonstrated a lack of inventive step in the patent. Noting that the side walls of the container shown in figure 1 of D2 (below) appeared to be 30° to the vertical, the Hearing Officer had significant doubt as to whether the Examiner would have formed the same opinion in relation to D2 had he not erred in his construction of the patent claim.