The Case

The case involves a dispute over patent entitlement in the field of biotechnology. Dr Hill claims she is entitled to be a joint proprietor of some of Touchlight’s patents and patent applications as she had only assigned part of her inventions set out in the patent filings to Touchlight.

 

The dispute considered at this Case Management Conference was whether the court should appoint a scientific advisor (a ‘SA’, as Dr Hill contended) or order the exchange of expert evidence (as Touchlight contended). In determining the dispute, the judge considered the dividing line between the role of a SA and the role of expert evidence.

 

The Scientific Advisor

The Patent Court has power to appoint a SA under s.70(3) of the Senior Courts Act 1981 and CPR rule 35.15 to assist the court in proceedings under the 1949 and 1977 Patents Acts.

 

The appointment of a SA is relatively uncommon and only occurs in specific circumstances. In a short judgment on the utility and purpose of having a SA, Birss J ([2016] EWHC 881 (Pat)) noted that in the majority of patent cases the combined efforts of the legal teams and the expert witnesses are sufficient to ensure that the court understands the material on which the expert opinions are based and the reasons for them, “but experience in this case shows that sometimes the further step [of appointing a SA] is useful and proportionate.”

 

Touchlight provided the court with a spreadsheet showing all reported cases where a SA had been appointed from 1972 to 2016. These cases showed that:

 

• Most SAs had been appointed to assist appeal courts when there had not been a SA at first instance,
• The few cases of a SA at first instance were because the case was complex and the judge was not a Cat4/Cat5 patent judge,
• In all cases where a SA was appointed, their role was to provide a tutorial or teach-in on the technology or explain the more technical material in a non-partisan way. It was not to address any issue in the proceedings, and
• There was no case of a SA being appointed without there being expert evidence.

 

Submissions of the parties

Counsel for Dr Hill submitted that the court should direct the appointment of a SA and not any expert evidence as what mattered was Dr Hill’s subjective state of mind which is not the natural province of expert evidence. The SA could ensure that the court fully understood the complex technology.

 

Touchlight submitted that the appointment of a SA, but no expert, would be unprecedented and inappropriate, as well as contrary to the authorities. Expert evidence was required to address the matters in dispute, which was not the role of a SA. The Patents Court does not permit the role of experts to be usurped by a SA whose communications with the court take place in practice and are not subject to cross-examination. Further, Touchlight would not be able to respond to new technical points raised in Dr Hill’s cross-examination without the benefit of expert evidence.

 

The judge’s decision

The judge noted that there is a clear distinction between the roles of a SA and expert evidence. While the purpose of both is to educate the court in the relevant technology, “a SA is not there to address any technical disputes, that is the province of expert evidence, to the extent that expert evidence is appropriate and admissible.”  The SA is, therefore, not a substitute for expert evidence but a supplement to it, in the most technically difficult cases.

 

The assessments which the trial judge is likely to have to carry out in this case are highly likely to involve technical disputes, some of which may only emerge in the course of Dr Hill’s answers in cross-examination. If he directed a SA but no expert witness, it is unclear how such technical disputes would be resolved. The trial judge would inevitably be placed in the position of going to ask questions of the SA to help resolve the disputes, whilst avoiding having the SA address the issues in dispute.

 

The judge consequently found that “the appointment of a SA (without expert evidence) does not appear a sufficient or satisfactory way to address the technical issues in this case. He agreed with Touchlight’s submission that the appointment of a SA without expert evidence would be unprecedented, inappropriate and contrary to authority.  On that basis he gave permission for expert evidence and did not appoint a SA.

 

Learning points

• The Patents Court has the power to appoint scientific advisors to assist the court in patent proceedings.
• A Scientific Advisor is a supplement to expert evidence, in the most technically difficult patent cases, not a substitute for it.
• As a SA cannot address any technical disputes, the court is likely to direct expert evidence where it anticipates that there will be technical disputes between the parties.