This briefing note is only intended as a general statement of the law and no action should be taken in reliance on it without specific legal advice.

Inside IP: Court of Appeal confirms permission to appeal no more likely in patent cases than other cases
09 January 2017

Inside IP: Court of Appeal confirms permission to appeal no more likely in patent cases than other cases

The Court of Appeal has formally disapproved the notion that permission to appeal should be more readily given in patent cases – in its decision in Teva v Boehringer, it has confirmed that the approach suggested by the Court of Appeal in Pozzoli, that the technical complexity of a case is a factor in favour of granting permission, should no longer be followed. Whilst the Patents Court and Court of Appeal have not, in practice, routinely specifically adopted the Pozzoli approach, permission to appeal is routinely given in patent cases. The Court's decision to lay the Pozzoli approach to rest is therefore welcome. Whilst it will remain prudent to assume that a losing party in a patent dispute will likely be given permission to appeal, a more rigorous filter may now be applied, thereby introducing a greater prospect of finality for parties at an earlier stage than is currently the case. 

Permission to appeal in patent cases

There is no automatic right to appeal for a losing party in a civil dispute. The general approach adopted by the Court when deciding whether to grant permission to appeal is whether the appeal would have a real prospect of success or whether there is some other compelling reason why the appeal should be heard. However, in patent cases, since Jacob LJ's judgment in the Court of Appeal in Pozzoli, a different approach has been said to apply, namely the so-called 'one hour rule'. Jacob LJ said:

"Unless the case is very clear and can be understood sufficiently readily in an hour or so, the better course is normally for permission to be granted by the trial judge. For, unlike the trial judge, the Court of Appeal judge(s) who have to decide whether permission should be granted (where the trial judge has refused it) will not be immersed in the technology and evidence in the same way as the trial judge. Faced with but an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission, even if it later discerns that the case is indeed clear."

In summary then, the approach laid down in Pozzoli is that (1) in highly technical cases a trial judge should grant permission to appeal more readily; and (2) this technical complexity may make an appeal judge more ready to grant permission to appeal where the judge has refused it. 

Disapproval of one hour rule

In Teva v Boehringer, Floyd LJ decided it is now time to revisit the Pozzoli approach.  In particular, he has identified the following considerations which mean it is no longer valid:

  1. In the comparable jurisdiction of the Technology & Construction Court, which also deals with technically complex cases, the practice is that permission is granted more sparingly for appeals on questions of fact. 
  2. Whilst the Pozzoli practice has never been disapproved of, it has not in fact been applied by trial judges in practice (other than Servier v Apotex).
  3. Patent cases involve a public interest and this justifies a “painstaking analysis” of the issues, including the question of whether to grant permission to appeal. However, this does not justify a more lenient approach to the question of whether to grant permission to appeal. 
  4. The procedural rules relating to appeals were revised in October 2016. In particular, the Court of Appeal will determine permission applications on paper, unless the judge considering the paper application directs an oral hearing, in which event the parties may be directed as to the issues that their submissions should focus on. Accordingly, this means that the Court of Appeal is well placed at the permission stage to obtain assistance from the parties in considering any points of technical or other complexity. 

Floyd LJ went on to refuse Boehringer permission to appeal, noting that the trial Judge had given full reasons for his decision to refuse permission. Floyd LJ concluded that Boehringer was seeking to “deconstruct the judge’s overall evaluative judgment” on the question of obviousness, but that the grounds it relied upon did not have a real prospect of success.  

It will be interesting to see if, in practice, the Patents Court and Court of Appeal will now apply a more robust approach when considering whether to grant permission to appeal in patent cases. The words of Lewison LJ in the Court of Appeal in a passing off case, Fage v Chobani, are a useful reminder: "the trial is not a dress rehearsal. It is the first and last night of the show".