Paterson, Gerald

Hertford College, University of Oxford (Physics)

Call to the Bar
Gray’s Inn

Queen Elizabeth Building

Adam Scott; Michael Silverleaf; Christopher Floyd

Polaroid Corporation & Others v Eastman Kodak Company & Another [1977] RPC 379
American Cyanamid Co v Ethicon Ltd (No.3) [1979] RPC 215
American Greetings Corp’s Application [1984] 1 All E.R. 426

Further References
Gerald Paterson, A Concise Guide to European Patents: Law and Practice (Sweet & Maxwell, 1995)
Gerald Paterson, The European Patent System (Sweet & Maxwell, 1992)

Gerald Paterson: I read physics at Oxford but I didn’t like physics. I was quite clever at school, and at that time one had to go into either science or classics or languages. I went into science because my father thought science was the up and coming thing. I wasn’t very keen on that really, and the headmaster thought I was much better for classics, but anyway science it was. I took what were then called A-level and S-level exams. That’s advanced level and scholarship level. Then I entered Oxford and at that time, which was 1957, it was very difficult to go into Oxford without carrying on with your own background. I was always much happier with words than with mathematics and mathematics was crucial to the background of physics. But I ended up reading physics and wasn’t very good at mathematics. So I didn’t really enjoy it all that much. Anyway, I got a degree in physics. I went to the Appointments Board in Oxford and said I didn’t want to become a physicist and didn’t really want to be in physics too deeply and the man there said, “What about Patents?” So that’s how it all started. He said, “That’s something which mixes your scientific background with law and maybe that will suit you.” So I followed that up and was interviewed by two or three of the main patent agents, as they were called at that time, and joined a firm called Gill, Jennings & Every in Chancery Lane. So that’s how I started in the patent area.
Facilitator: Did you have to take exams ?
Gerald Paterson: Yes, there was an intermediate exam after two years and a final exam after four years. They were quite difficult really. I mean, a mixture of patent law and science, and going through all the disciplines that patent agents have to do such as drafting specifications, advising clients and so on. Anyway, I passed both of those but after two years we had cases going to court. We went to see Geoffrey Everington in particular. I went down to Queen Elizabeth Building with the patent agent that I trained under and maybe we had two or three High Court cases. I don’t remember if they ever got to court, but anyway, a career at the Bar seemed more exciting than remaining as a patent agent, and I liked the atmosphere of Queen Elizabeth Buildings and the style of Geoffrey Everington. So before I qualified as a patent agent I had the Bar very much in mind and at the time of qualification in 1964 I left Gill, Jennings & Every and read for the Bar exams during two years with a view to becoming a pupil at the Patent Bar and in due course Geoffrey Everington was the obvious man to apply to for pupillage. He was a junior at the time of course, and actually the records clerk in Gill, Jennings & Every was a great friend of Roy Nicholls, the head clerk in Queen Elizabeth Building. So there was a good connection there and I think I was recommended to the Chambers through Gill, Jennings. It took a little while to set up an interview with Geoffrey Everington. I had sent a very humble letter saying, I’m very, very interested and so on, but nothing happened at all. Months went by and I began to get worried that he was not the slightest bit interested in me. Eventually, I plucked up the courage to telephone Roy Nicholls, and he said, “Well, wait a minute. Let me go and see Geoffrey Everington.” Then he came back and said, “Why don’t you come down now?” So I did. Geoffrey Everington had my letter under his ash tray. I remember he smoked a pipe. And he said, “I had your letter here but I didn’t have time to deal with it. Why don’t you start soon?” – That’s how my pupillage began.
Facilitator: Who was at Queen Elizabeth Building when you arrived?
Gerald Paterson: Sir Lionel Heald was the Head of the Chambers. He was an ex-Attorney General et cetera, and still active in Parliament. Then there was Pat Graham and Geoffrey Everington. Pat Graham must have been a Silk by then. In my view, Geoffrey Everington and Stephen Gratwick were probably the two of the top Juniors at the Patent Bar at the time. Blanco was probably also quite top, but in a different sort of way. Anyway, during my pupillage Geoffrey Everington was ill at least half of the time. So I had quite a quiet pupillage and I don’t remember going into court with him very much. I did do something for Stephen Gratwick. Anyway, they accepted me at the end. Peter Ford was there too. He was the next senior to me then. Ronald Stanley was there as well, but he left some five years later. So when I joined the Chambers there were only six people: Lionel; Pat Graham; Geoffrey Everington; Ronald Stanley; Peter Ford; and I.

Facilitator: How different was pupillage in those days? Do you think it was more informal?

Gerald Paterson: Yes, it was very informal. And luckily, the Chambers had many good connections with companies like Phillips and ICI, the largest British chemical company at the time. So I was soon given Patent Office cases to argue. At that stage they were the way of introducing you to saying something in Court. Lloyd Jacob was the patent judge at the time. I remember the first time appearing before him very nervously, and he said, “You’re very vociferous.” That was quite early on. Then when he retired, Pat Graham became the Patent Judge.
Facilitator: What type of work did a pupil do at that time?
Gerald Paterson: Well, I didn’t do very much that I remember because for half of the 12 months I did as a pupil Geoffrey (Everington) was away ill. People like Stephen (Gratwick) would give me a case and ask me to write a report on it. , I remember Lionel Heald and Pat Graham doing that as well, because I was on my own quite a lot of the time. I only went into court maybe once or twice during my pupillage. Because I had a patent agent background, I had some work given to me by Gill, Jennings & Every. And again, because of that background I had been interviewed by a patent agent called Bushell, who was a senior partner in one firm, and they would send me small cases just to give me something to do. So it was all quite limited, to be honest. But at that stage I was one of the few recent pupils at the Patent Bar. I remember Robin Jacob coming to our chambers and being interviewed to be a pupil in our Chambers, so he hadn’t joined at that point. I was probably one of the first pupils there.
Facilitator: What do you recall about the dynamics inside Queen Elizabeth Building? How was the relationship between the clerks and barristers different from today? Is it true that clerks had greater power then?
Gerald Paterson: That’s right, yes. There was a head clerk called Walter, who died fairly soon after I joined. Then Roy (Nicholls) became head clerk and, as you say, they were more powerful. They controlled the work at court, and that worked quite well, I think. That did change over the years, but at the beginning I imagine that Roy would talk to Gratwick and Everington about what they thought of me. Having a patent agent background was a great help.
Facilitator: Did you have to pay the pupil master and the clerk when you were doing your pupillage?
Gerald Paterson: Yes. I think I paid my pupil master 50 pounds. Going back a bit, between leaving Gill, Jennings & Every and reading for the Bar I worked for Gill, Jennings & Every as a kind of freelancer just doing things that they would give me to have enough money for those two years. I lived in Kensington at that time, and through Kensington Public Library I found grants to apply for. There was a charity based in Gloucester Road that gave awards to poor students in Kensington. I don’t think there are many poor students in Kensington nowadays. But anyway, I went along there and qualified as a poor student in Kensington and they gave me 500 pounds a year for two years. It was a great help at that time.
Facilitator: So one of the obstacles to becoming a barrister was money.
Gerald Paterson: Yes.
Facilitator: And I believe it normally took 3 years to develop a practice.
Gerald Paterson: Yes, that’s right.
Facilitator: So how did you subsist during that time?
Gerald Paterson: Well, the work from Gill, Jennings & Every and the grant was alright for the two years until I became a pupil. I remember Roy Nicholls saying to me that most barristers had their own private income, and because I didn’t, he thought I was a bit different.. So yes, one was expected to be able to be more or less self-sufficient. But anyway, I think I was very fortunate in those first two or three years because I earned enough to live on from the grant and through my connections with patent agents.
Facilitator: And the patent bar in the 1960s was very small. Do you recall other chambers?
Gerald Paterson: Yes, Geoffrey Tookey. They were in Hare Court. It was Francis Taylor Buildings with Blanco White, was he head of chambers then? They were quite large. (They were) Kynric Lewis, Julian Jeffs…maybe one or two more.
Facilitator: Walton?
Gerald Paterson: Yes, Anthony Walton, that’s right.
Facilitator: And then Pump Court?
Gerald Paterson: Yes, they were basically Aldous senior, Aldous junior, Douglas Falconer, and that was all. Then David Young, who was at the same college at Oxford as I was but two years after me and then he became a pupil to William Aldous. And Simon Thorley a little bit after that.
Facilitator: And do you remember that other chambers with Joe Penny, Vivian Price?
Gerald Paterson: That was Whitford chambers.
Facilitator: Do you recollect some of the cases that you participated in in the ‘60s? I believe you were involved in the Polaroid case, for example.
Gerald Paterson: Well, Polaroid came a bit later, in the ‘70s. In the late ‘60s, I was lucky that Geoffrey Everington had been involved in a pharmaceutical case with a chemical company called UpJohn. That was in ’69, I think. It was a House of Lords case. I was called to the Bar in ’66 and finished my pupillage in ’67. By 1970 I had appeared once in the House of Lords and I took the opportunity to say something, which I’m sure was pretty hopeless. But they listened politely for half an hour and said, thank you very much. So that was nice.
Then there was a case with Stephen Gratwick, probably in the early first half of the ‘70s for Technograph. That went to the House of Lords. But yes, Polaroid v Kodak was a very big case for me in the middle of 1970s until that settled. So within two or three years after ending my pupillage, I was getting pretty big cases as a junior.
Facilitator: I think also the colour television patents as well.
Geoffrey Paterson: That’s right. It was Thorn... and a French company called Compagnie Francaise de Television.
Facilitator: But perhaps the most significant one for everybody practising was American Cyanamid. What do you recall of that case?
Gerald Paterson: Yes, that was in 1975, I think.
Facilitator: How long did the hearings last?
Gerald Paterson: The First Instance Court before Graham J went on for a few months. It just ground on. I think poor Pat Graham hated having to sit up there. And I must say it was not a very good advertisement for the way of dealing with patents in Britain. Both companies were very large and had a lot of money, but nevertheless, it was quite ridiculous in my view to spend months droning on with witnesses and so on.
Facilitator: Were you representing American Cyanamid?
Gerald Paterson: Ethicon.
Facilitator: Why did the case become so significant in your view? Was it to do with the decision afterwards in the House of Lords?
Gerald Paterson: Yes, it was. The case before Graham J was purely on patent infringementm quite a simple case. It was the interlocutory injunction application that went to the House of Lords and it went up through the Court of Appeal. What I really remember about the House of Lords was that previously interlocutory injunctions were decided on the basis of a sort of mini-trial. Each side would file affidavits and set out its case. The judge would take a relatively short view of the case, and that was that. He’d give judgment based on the preliminary merits of the case, that is, on a mini-trial of the case, When it went to the House of the Lords they decided that interlocutory injunctions should be decided on the “balance of convenience”. I don’t remember all the details but there was a whole sequence of stages that Diplock set out. What I do remember very clearly was that both sides argued the case on the mini-trial basis and the House of Lords went away and delivered a judgment which made all the arguments by the advocates on both sides totally irrelevant. They just said, “This is how interlocutory injunctions should be decided.” At the time everybody was a bit shocked but went away. However, later on when I was in Munich it struck me more and more what a travesty of justice it was because neither side knew the case they had to answer, that is,what the House of Lords were thinking of deciding, at the hearing before the House of Lords.
Facilitator: I think afterwards they limited the interpretation or the reading of American Cyanamid a little bit.
Gerald Paterson: Yes, they probably did. But it was interesting to see how the top court in the land could give a judgment which neither the parties nor the advocates had any chance of giving their respective views on.
Facilitator: Do you think it might have been due to the lack of specialist patent judges in the Court of Appeal and the House of Lords?
Gerald Paterson: I just think the House of Lords really were totally playing God. The European Convention on Human Rights states that everybody involved in a court case has to know the case against them, the case they have to answer. In the EPO it was a fundamental thing that all the parties were told in advance of any hearing what the point of the case was and what the preliminary view on the case was, in order to stimulate the parties to argue on the right points.
Facilitator: Regarding judicial decisions, you practiced in a time in which specialist judges were appointed for the first time. Lloyd Jacob was first, then Graham and then Aldous. Do you think it was a positive experience for patent law in the UK?
Gerald Paterson: Well, I think the Patent Bar was so much a law unto itself including the patent judges who were appointed like Graham and Whitford, that there wasn’t enough interaction with commercial law courts – with Chancery Courts in the broad sense, and their requirements for legal procedure, etc.
Facilitator: There is another case that I’m interested in, and that’s the Holly Hobbie case. I wanted to ask you if you have any particular recollection of that case.
Gerald Paterson: Yes. I was against Robin Jacob. I did that as a junior and I was very lucky really because I thought it was a dead winner from the start and that’s how it worked out. It was a question of merchandising and the meaning of some particular words in the Act which couldn’t really mean anything else except what the defendants were actually doing. Nobody could ever think of anything else that the words could have been intended to cover, except what Robin Jacob’s clients were doing.
Facilitator: And you were instructed by the Treasury on that case, weren’t you?
Gerald Paterson: Yes. I was Assistant Treasury Counsel, Treasury junior. I was appointed by an Attorney General called Sam Silkin. I enjoyed the case because it was easier to win than most cases, I suppose. I think I did six House of Lords cases altogether as a junior. I spoke in all of them and it was quite a good run really in 18 years.
Facilitator: Did you have a pupil in Chambers?
Gerald Paterson: Yes. The first one was called Adam Scott. He was not invited to join Chambers. He was a very clever man. I liked him. I still exchange Christmas cards with him every year. He had an interesting career; he first joined British Telecom, BT. And later on he became a Commercial Competition Court judge. He’s currently very busy and involved in European patent and commercial patent law conferences and so on.
Christopher Floyd was my pupil as well, and obviously he’s done very well. And then there’s Michael Silverleaf, who’s Head of Chambers. I remember Christopher Floyd towards the end of his pupillage, because Adam Scott had not been accepted, being worried that he wouldn’t be accepted either. Looking back as of now, his worry seems a bit ironic.
Facilitator: Do you remember the (chambers) move to Gray’s Inn?
Gerald Paterson: Yes. About 1975, I think. .
Facilitator: Was it problematic?
Gerald Paterson: No. I don’t think so. It all seemed to go very easily. From that time on I think we expanded Chambers more. Queen Elizabeth Building had large rooms. I mean, when I joined Chambers and before we went to Gray’s Inn – I was actually in an annex in Garden Court. I went down to the main Chambers for conferences and so on. Then when Lionel Heald died, it’s quite strange really, but I had his room. The very large room of the ex-attorney general. It was far too grand for me, really. But there weren’t any smaller rooms and nobody else wanted to change from their rooms.
Facilitator: Was that first floor or second floor?
Gerald Paterson: Ground floor, on the right.
Facilitator: And what was behind the move to Gray’s Inn? Was it due to Everington?
Gerald Paterson: He was a member of Gray’s Inn. I’m sure that must have helped. Stephen Gratwick was at Lincoln’s Inn. But I think it was just to have more space.
Facilitator: It’s where they are now. It’s still the same.
Gerald Paterson: Yes. And the Chambers opposite on the ground floor of Queen Elizabeth’s Building was where Andrew Bateson was, for example. They were quite well known. In fact there’s somebody called Desmond Browne there now who is a famous libel lawyer. The clerks were close by too, and so they moved up at the same time.
Facilitator: Was it a commercial set?
Gerald Paterson: No. Well, they were more libel and a high level of civil law, put it that way. Very good barristers.
Facilitator: I think at some point some commercial barristers participated in patent cases. For example, Sydney Kentridge or Patrick Neill.
Gerald Paterson: Yes. That’s right.
Facilitator: Did you work with (or against) them?
Gerald Paterson: I was in a case where Patrick Neill was leading me. I got on very well with him. I think he was an advocate in the General Tire case. There was another well-known general barrister in patent cases called Sydney Kentridge. He was South African, I think.
Facilitator: My feeling is that some of the commercial barristers came in because many Silks and patent barristers retired simultaneously in the late ‘60s due to changes in the tax regulations.
Gerald Paterson: Yes, income tax went to 98% or something like that. Yes.
So I think Aldous and Tookey…
Gerald Paterson: Yes. You’re probably right.
Facilitator: It might have been ’68 or ’69 when they retired.
Gerald Paterson: A bit later than that. I think it was the ’70s. But yes, and perhaps what I was saying a bit earlier, that the patent Silks didn’t interact very well with Court of Appeal judges. They were perfectly alright with the patent judges, who they knew very well. They were in the same Chambers and all that, and it was all very friendly and so on, but in the Court of Appeal and the House of Lords they sometimes went down like a load of bricks, as it were. I mean, I remember being led by Stephen Gratwick in a patent case. We went to the Court of Appeal and Stephen set off in his usual way presenting our case, and I remember Lord Justice Harman saying, “Mr. Gratwick, why are you talking all this jargon to me?” And Stephen was obviously very shocked.
Facilitator: It’s difficult, yes. It’s difficult to translate that to judges who may not have any experience in patents.
Gerald Paterson: Yes. It was quite a useful lesson for me because I tried thereafter to relate to them as human beings and not to get too technical. I think Hugh Laddie was very good at that as well. He didn’t bother too much with the technicalities, he’d try to sell his case on a human basis rather more.
Facilitator: Now that you mention Stephen Gratwick, many of the barristers we’ve interviewed suggested that he was perhaps the most impressive advocate of his time. He was also offered the chance to become a judge but turned it down. Do you have any personal reminiscences of Stephen Gratwick?
Gerald Paterson: Oh, a lot. Yes. I mean, I did many cases with him. In Technograph in the House of Lords, one of my earliest cases, he had Bateson on the other side and Bateson was very fluent, fluid and confident in front of the House of Lords. Stephen had to get up at 3 o’ clock in the afternoon. He started in his usual way and the House of Lords were totally hostile and blank and quite obviously not the slightest bit interested. I remember when Stephen and I went back to Chambers I said, ” I think you’ve got to start again in the morning with what you’re going to do, what you’re going to say, and why you’re going to say it. Just as simple as that.” Because he’d gone straight into the nitty-gritty of the technical patent case and they weren’t following him at all. So he did just that. He started again in a much more simple way and developed it and we won. Those two instances show that even with somebody as eminent as Stephen always was, even as a junior, nevertheless the interaction with the top judges just wasn’t there to begin with. Where Stephen was wonderful was before Lord Justices Buckley and Goff in the Court of Appeal. They lapped up everything that Stephen said to them. He had a great communication with them and he did very, very well for quite a period while Buckley was in charge of the Court of Appeal.
Facilitator: He was very good at cross-examination as well, I believe. I think at that point in the ’60s there were no skeletons so oral advocacy could be much more flexible.
Gerald Paterson: Yes. That’s right. Taking witnesses by surprise to a large extent, I think. Stephen (Gratwick) was probably almost alone at the Patent Bar in that he could deal with the technical side of the case at the same level as the expert witnesses. That was his great strength. Whereas somebody like Blanco White was not a cross-examiner.. Guy Aldous was probably stronger but he retired early. Douglas Falconer was a very good patent lawyer but he never really got deeply involved in the technical side of a case. Stephen was able to do that.
Facilitator: How do you think the relationship with solicitors has changed from the ’60s till today? I think for instance, that before all meetings were held in Chambers.
Gerald Paterson: Yes. Of course, I left the Patent Bar in 1985, so I was of the old school.
Facilitator: But I think by the ’80s changes had already started to become apparent.
Gerald Paterson: It was beginning. That’s right. Yes, one developed close rela
tionships and one had to be much more flexible and meet outside Chambers.
Facilitator: And I think that law firms didn’t have intellectual property departments until quite recently. Herbert Smith created theirs when they started litigating General Tire and they decided to hire Christopher Tootal, who was a patent agent before.
Gerald Paterson: Well, Christopher Tootal and I were both in Gill, Jennings & Every. I later shared a flat with him. He was my best man in my first wedding. He was approached through family connections by a senior partner in Herbert Smith called Higginson. They wanted him to qualify as a solicitor after he’d qualified as a patent agent and to be their patent solicitor. Christopher [Tootal] was I think already about to be a partner at Gill Jennings.. I remember that I encouraged him to become a solicitor. So that’s how it happened with him. But anyway, Herbert Smith was the first City firm to set up a patent department, and it was Christopher [Tootal] who set that up. Then I remember Karl Arnold, Sam Cooke, Richard Price, but Bristows was always the most important firm.
Facilitator: When did Pat Graham’s move to the Bench affect Chambers?
Gerald Paterson: Well, about that time Gratwick and Everington became Silks. Probably late Sixties. Lionel Heald was still there. You mentioned Whitford earlier, and he was still there when Graham was made a Judge. I remember Lionel Heald going in to appear before Whitford and coming back to Chambers. I’d never seen him so angry because of the way Whitford had treated him in court as ex-Attorney General. He said, “Whitford must have been badly bullied when he was at school.” And I think Lionel Heald retired soon after. He wasn’t prepared to go into court and be treated like that. As you say, Whitford changed his character. I don’t think either Graham or Whitford developed patent law at all. Neither of them went to the Court of Appeal and neither of them gave any impetus to patent law. Whitford didn’t decide cases on the legal merits. In my view, he decided which side he liked. It was an emotional reaction to the situation based on which advocate he liked. I remember in some meeting early on that he talked in front of quite a few patent people, and I remember asking him, “Do you prefer to decide cases under the ‘Dirty Dogs Act’.” And he said, “Yes. I do.” Looking for who is the dirty dog in the case.
Facilitator: Going back to before you moved to Munich, do you think there was a fear that most of the business of patent law was going to go to Germany as a result of the new Patents Act and the European Patent Convention which came in the late 1970s?
Gerald Paterson: There was an uncertainty at the time as to how that would affect the Patent Bar because patent agents could do their own cases in Munich, and they did, whereas it was relatively unusual for patent barristers to be asked to do a case in Munich because it was a totally different style of advocacy.
Facilitator: Do you think these changes were regarded as a kind of foreign encroachment on English law?
Gerald Paterson: I don’t think the Patent Bar thought like that. I moved to Munich at the time when appeals in the EPO were taking off. The EPO opened in 1978 and I went there in ’85, which is about the time when the first oppositions were going to appeal. So there hadn’t been all that many cases at appeal level. When I arrived it was all still developing. There was a German judge and a French patent lawyer and quite a few joined about the same time as me and we were all from different nations. It was a good way of developing the European patent law.
Facilitator: Was it a difficult decision to go?
Gerald Paterson: There were personal reasons as well in that I had divorced about five years earlier. I was single, so it was much easier for me to move countries like that by myself. Most married people with three children in school, as I had then, don’t want move to a different country.
Facilitator: Did the salary make it attractive?
Gerald Paterson: Well, no. The income was less to begin with, I would say. I didn’t really know what I was going in for in the sense of income, because I was paid in Deutschmarks. I didn’t know what the value of the Mark was relative to what I was earning as a member of the Patent Bar. I think partly I didn’t really want to carry on through the Patent Bar and on hopefully to becoming a Silk. For me, it was a little bit too narrow a life. Moving to Munich and mixing with all these other nationalities was attractive. I’d always been rather interested in the European developments from the beginning of the Common Market, as it was then. And there was always talk of a European patent convention, and then it happened and I was able to go because I was single.
Facilitator: Did you speak German?
Gerald Paterson: No, not a word. ‘Nein’ was about the only thing I could say. That was a disadvantage to begin with because most Europeans were much better able to speak two or three languages. English and German, French and Spanish and so on. I didn’t speak a word of German. My French was schoolboy level. It didn’t matter that much really, except that it mattered on the human level because people on the Continent don’t think much of British people who can’t speak any languages.
Facilitator: And during that first year at the European Patent Office in 1986, what type of work were you doing? How many people were there? Did you feel that it was still in its infancy?
Gerald Paterson: It was going very well. I did a lot of chemical pharmaceutical cases, which suited me even though I’d read physics. Most of the Patent Bar’s big cases were pharmaceutical like American Cyanamid and so on, so that was a very good background. The Chairman of the Chemical Board was German, a good chemist and so on, and he liked me and I liked him. Because of the cases I’d been in, like American Cyanamid, I knew quite a lot of chemistry, sometimes more than he did. So that was all good and it all went really well. And they had a high quality of people there.
Facilitator: How different was the procedure compared to the UK?
Gerald Paterson: There was much more written procedure. All hearings had to be requested. Before any hearing took place the Board of Appeal would write a communication to both parties setting out their views on the important points in the case, although perhaps directed more to one than the other. So the parties were told to deal with this and that point. That focused the case as soon as the hearing started and it was much better. By comparison the way a trial went in the Patent Court was so laborious. So it was much more effective really. I’ve obviously thought about it quite a lot, and they are totally different systems, but the mixture of technical and legal expertise in the Boards of Appeal was very efficient. The only problem was that at the beginning the Chairmen of the Boards were all technical and there was quite a fight in the EPO about allowing lawyers to be appointed as Chairmen of Technical Boards.
Facilitator: I think a technical board for biotechnological patents was established as well at a later point. Do you recall when that was?
Gerald Paterson: That was a bit later in the ‘90s, yes. Everything developed quite rapidly and so there were more and more Boards. I was on the Enlarged Board of Appeal, which was the highest Legal Board. There were five lawyers and two technical people, so it was legally dominated. It soon developed into a system where there was one man each from seven different countries. There was a German lawyer, a French lawyer, an Italian lawyer who was Chairman, a Swedish lawyer and myself. The Swedish man was ex-Chairman of the Swedish Patent Appeal Court. He was their top patent man and he was very good. He was the first legal Chairman and I was the second legal Chairman of Technical Boards of Appeal.
Facilitator: Do you remember any English Patent barristers going to Munich and how they managed with the differences?
Gerald Paterson: Yes. On the whole, not very well to begin with, from what I heard. Stephen Gratwick went once. I heard that he didn’t go down very well. And I heard from his point of view that he wasn’t very happy either. Normally, on slightly bigger cases there were three members of the technical Board of Appeal but it could enlarge to five. I remember late on there was one important case where I was one of the legal members in a five man Board and Stephen appeared. Unfortunately, his case was not very strong.. I also remember Christopher Floyd and Michael Silverleaf and Nicholas Pumfrey appearing in front of me. I hope they were comfortable !
Facilitator: What made them uncomfortable there? Was it the limited amount of oral advocacy?
Gerald Paterson: Yes. Well, they were given plenty of time, but there was more interaction because the members of the Board were much more deeply involved in the case before the hearing, whereas earlier on, with the English Patent Judges, at the start of a case they didn’t know what the case was about and they hadn’t read the papers at all. So they started trials at a very low level of knowledge.
Facilitator: In terms of presenting the case?
Gerald Paterson: Yes, which from an expense point of view is crazy. I think English barristers were worried because sometimes they weren’t allowed to develop their own arguments too much. The Board Chairman would say, “Well yes we know about that point. Now what about this point?” The Board directed things the way they wanted rather than allowing the advocates to develop the case.
Facilitator: I imagine that, as with any institution in which you have different nationalities working together, there were tensions from time to time in the European Patent Office. Do you remember any specific instances?
Gerald Paterson: Yes there were, because the EPO was the first international organisation to be sited in Germany since the War. For the Germans that was a major source of pride but it was also a situation in which they regarded themselves as being in charge. The administration was pretty well all German and the German Patent Office was just along the road from the EPO, so they tended to think that they could run it in the same way and that did cause some resentment. I soon realized that the top two patent systems in Europe were German and British. The French didn’t have a very well developed patent system. There was a sense that the Germans were trying to keep the British down. But I got on very well. I think also on the continent generally, and in Germany and France in particular, all decisions are made by consensus. You are not expected to stand out too much amongst a group of people making a decision. You sense which way it’s going and go along with it. Whereas the British system is much more individual. I was from that system and I’d always say what I thought. And if I was the only one, or very much in the minority, I didn’t mind. So I was a bit different from other nationalities sometimes.
Facilitator: Was it difficult to attract English patent experts to the EPO in terms of examiners?
Gerald Paterson: I think it was originally, yes. I mean, it was obviously much easier for Germans and well as other central Europeans but it balanced out and it worked very well. I think the important legal cases before the Enlarged Board were done very well indeed. I had nothing but pleasure in the discussions amongst the seven people. The Italian Chairman Gori was very international. He wasn’t too German or too British.
Facilitator: How did the EPO handle the possibility of parallel proceedings?
Gerald Paterson: That did not affect the EPO very much, whereas in the UK generally there was a feeling that the UK was better than the EPO,and that was the way it was. They thought that the British way of deciding patent cases, especially at the legal level, was better. But the House of Lords has never overturned an EPO judgment. On the contrary, EPO decisions were respected. I knew well Lord Hoffman, and he obviously respected what was going on in the EPO, to a large extent. He took a lot of interest in the German system and he learned to speak German for that reason as well. But the Patent Bar generally were very British in their way of thinking.
Facilitator: What was the main difference between the systems that made them difficult to reconcile? Was it to do with patent construction, patent interpretation, or legislation such as Article 69?
Gerald Paterson: Basically there is a very different way of thinking in Germany and in France. Because the law there is codified there’s a much more literal reading of the language. Whereas British law has equitable jurisdiction and so legal words are more flexibly interpreted to allow for fairness, which is really what the equitable side is all about. That’s not part of the German mentality. I was rather struck early on when I was learning German and I found that there wasn’t a word for ‘fair’ in German. They used the English word ‘fair’ as an adjective and imported it into their language. That was just as an example of how there could be quite deep divisions in the way of thought with which a German judge would approach a case as opposed to English law. Sweden and Holland for example, were more in the middle and even though they didn’t have equity, they had much more a window on what was going on in Britain. Obviously, the more Central European countries like Austria and so on were much more dominated by the German way of legal thought. Of course, that was very interesting from my point of view and one had to try to work out something by way of comprise.
Facilitator: Were you involved in the Max Planck Institute in Germany? I believe it was quite active in developing policy and expertise around patents and that the British regarded the Max Planck Institute as the ones who were influencing the way scholarship around patent law was developing.
Gerald Paterson: Yes, they were, but I wasn’t closely involved. I think they regarded me as too British.
Facilitator: Bill Cornish was involved though.
Gerald Paterson: Yes, that’s right, but at an academic level of course. As a practicing member of the Boards of Appeal I don’t think any of us were at all closely involved in what Max Planck might be thinking. They were essentially academic. Germany had much more of a national approach to patent law. In German thinking there was a German way of doing things in patent law, which to some extent almost circumvented the European Patent Convention and they sometimes didn’t worry too much about the interpretation of the European Patent Convention. Appointments and so on were very much controlled from Bonn, before Berlin became the capital. I was told that Bonn knew about the Board of Appeal members and whether they were following German law or not following German law..
When I wrote a book on the European Patent Convention, I went to six or seven publishers, the two main ones were Heymann and Beck in Munich. All of them, when I first met them, said, “Yes. We’d be very happy to publish a German translation.” Heymann were the first. They were probably the top German publishers in the patent law area and it was all agreed. I had a German colleague, a German judge, who had done quite a bit of the translating, and it was all going along well, and we’d agreed the royalties and then right at the end they suddenly said, “We’ve decreased the royalty. We can only give you a 1% royalty.” And it seemed that they had been instructed that, “We do not want a German translation of a British lawyer writing on patent law”. That happened again and again. One German publisher said to the German judge who’d worked with me on the translation, “We would like to publish this book but could you name yourself as author?” So they wanted to cut me out as author, which was rather shocking.
Facilitator: Do you remember who else was there in Munich at that time?
Gerald Paterson: Peter Ford and Raph Lunzer were there. Peter didn’t get on very well with Gori. He left and became the County Court Judge. Raph Lunzer came a bit later. He never became a Chairman of a Board of Appeal. He of course had a German-Austrian background and so he translated a book written by a German judge called Singer. He and his wife were Jewish. He was very brave to go to Munich because at that time, there were very few Jewish people in Munich. To be honest, there was still sometimes an anti-Jewish feeling there even in the 1980s.
Facilitator: He was the editor of the Fleet Street Reports as well.
Gerald Paterson: Yes. That’s right.
Facilitator: In retrospect, were you following up the changes in practice in the UK?
Gerald Paterson: Very much, so yes.
Facilitator: What captured your attention? Was it the changes in procedure or when William Aldous became judge in the Court of Appeal?
Gerald Paterson: That was good. Yes. It became better, I would say. A better level of judgment with William Aldous, yes.
Facilitator: Then I guess when Robin Jacob and Hugh Laddie also became judges that led to a more dynamic or more commercially minded Patent Bar that was more open to a different style of advocacy. Also I guess, Francis Taylor Building had its moment in terms of…
Gerald Paterson: It’s heyday as it were. I think it probably did, yes. Although my old Chambers developed very well in a different sort of way, but they were a little bit behind Francis Taylor in development and Francis Taylor did get people like David Kitchin and so on.
Facilitator: Also I think they were different with regard to Anton Piller and industrial copyright. They took over many cases which lay in the area between patents and copyright.
Gerald Paterson: That’s right. They were much more dynamic, I think. Hugh Laddie is very good with his copyright law book and so on. It became much more important alongside patents. I mean, people like Mervyn Davies, Skone James and so on were the old school level of copyright. Then it became commercial and lots of money was involved.
Facilitator: And in retrospect what do you consider to be the main changes from when you began in the ‘60s to when you retired or up until now?
Gerald Paterson: When I joined, the Patent Bar seemed to be a specialist club. Everybody knew everybody else. I was a new member in this fairly small club and immediately I met somebody like Geoffrey Tookie who was rather eminent at that time. People like Douglas Falconer would immediately take notice of a newcomer. Since I left Chambers people like Arnold have become judges and he wasn’t even in Chambers in 1985. He was a High Court Judge when he was 45 or something like that, whereas earlier on people like Everington and Gratwick were 55 or so before they even took Silk. Douglas Falconer became a Judge when he was 68. So I mean somebody like Douglas Falconer is not going to pick up cases very quickly compared to the advocates in their 40s and very lively like Jacob and Laddie. It’s a different world really and it did change quite a lot with Jacob and Laddie.
Facilitator: I guess it has also changed in terms of complexity if chemical pharmaceuticals have taken over a majority of patent cases.
Gerald Paterson: Yes. Chemical and pharmaceutical cases were always most important. . Not many physics type cases. I think the Patent Bar has become much better. A higher level in a way. When it was a small club the clients were on the outside of this club. I mean, they had to go to the club to get the cases decided and Americans liked coming over and seeing the old world Chambers and the old fashioned wigs and gowns and so on. Luckily, the dollar was very powerful at that point. They loved coming over and having their cases decided here, but it wasn’t a very high level. I think partly because of competition from Europe, the Patent Bar has improved its way of doing things immensely. The exchange of skeleton arguments and the Woolf Report sharpened everything up quite a lot.
Paterson, Gerald

Courtesy of G Paterson