For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Friday, 17 February 2006

RETURN OF THE YEDA; GETTING TO GRIPS WITH WILDLIFE


Belated claim to patent ownership: return of the Yeda?

The IPKat found a helpful note on Butterworths' All England Direct service on Rhône-Poulenc Rorer International Holdings Inc and another v Yeda Research and Development Co Ltd [2006] EWHC 160 (Ch), a Patents Court decision of yesterday's date from Mr Justice Lewison.

This action turned on a patent for therapeutic compositions containing monoclonal antibodies in combination with anti-neoplastic drugs, providing a means of killing cancer cells rather than just preventing their replication. A reference was made to the Comptroller in which joint ownership of the patent was claimed. Subsequently, Yeda filed an amended statement in which it claimed sole ownership of the patent. RPR (the registered proprietor of the patent) and its licensee objected to the amendments to Yeda's claim: first, because it was made outside the time limit of two years imposed under s.37(5) of the Patents Act 1977 and secondly on the ground that a claim to sole ownership should count as a new claim under rule 17(4) of the Civil Procedure Rules ('The court may allow an amendment to alter the capacity in which a party claims if the new capacity is one which that party had when the proceedings started or has since acquired’).

The hearing officer allowed the amendments to the written statement, holding that he was not required to apply the criteria set out in CPR 17.4 but had a discretion to allow the amendments. The RPR and its licensee appealed.

Mr Justice Lewison allowed the appeal.

* Although he was right that the CPR did not apply, the hearing officer did not then consider the effect of the amendments if they were allowed. He just assumed (wrongly) that, if the amendments were allowed, the questions raised by the amendment would be considered by the Comptroller in due course.

* Since the amendments would not relate back to the date of the original reference, RPR's limitation defence to the new claims remained available and there was thus no useful purpose in allowing them.

* Section 37(5) imposed a limitation period that barred the making of a claim outside the two-year time limit; it did not merely bar the grant of a particular remedy. Legal certainty militated against an amendment allowing a new claim to be made after the expiry of the limitation period that related back to the date when the claim was originally made, even if it did arise out of the same facts.
The IPKat is reminded of the slightly hyperbolic observation of Lord Justice Jacob that, if you want to make a success of intellectual property law, do don't need to know any 'real' IP - all you need to know is the procedural rules. Merpel says, I just want to know how it took Yeda so long to decide it had a claim to sole ownership of the patent in the first place. It's surely an issue that comes pretty high up on your 'to-do' list when you're contemplating litigation over proprietary interests in patents.

Rhône here; Côtes du Rhône here
Poulenc here


Pandas get their pay-off

BAILII is carring the full text of WWF-World Wide Fund for Nature (formerly World Wildlife Fund) and another v World Wrestling Federation Entertainment Inc [2006] EWHC 184 (Ch), yesterday's Chancery Division decision of Mr Justice Peter Smith.

The history

World Wide Fund was a Swiss-based environmental charity. Its name and acronym WWF were extremely well known internationally. World Wrestling Federation, a US company, adopted and used a logo which was a stylised version of the letters WWF. When World Wrestling Federation started to apply for trade marks outside the US, litigation erupted which went in World Wide Fund's favour.


Settlement and breach

Settlement negotiations led to an agreement in 20 January 1994 which contained substantial restrictions on how the World Wrestling Federation could use 'WWF' and, following breach of those terms by World Wrestling Federation, in 2001 an inquiry was ordered. Five years later, at the trial of a preliminary issue, the court was asked to decide whether World Wide Fund were entitled to claim damages in the form of a reasonable payment as a quid pro quo in exchange for relaxing their rights under the agreement.


The arguments

World Wide Fund claimed damages under Wrotham Park Estate Co Ltd v Parkside Homes Ltd [1974] 2 All ER 321 and contended that, where there was a breach of contract, the victim was entitled to claim as damages a reasonable payment in respect of the hypothetical release of the breach of contract. World Wrestling Federation disagreed, arguing that the claim for Wrotham Park-type damages had to satisfy the same test of causation as any other claim for damages: what would the innocent party's position have been 'but for' the breach?


The decision

Peter Smith J ruled that World Wide Fund was entitled to seek damages in the form of a reasonable payment as a quid pro quo :
* The primary basis of assessment of damages under the Wrotham Park principle was to consider the sum that would have been negotiated between the parties if each made reasonable use of its bargaining position without holding out for unreasonable amounts. The outcome of that hypothetical negotiation had to be determined by reference to the parties’ actual knowledge at the time that negotiations would have taken place (normally the date of the breach).

* The fact that the innocent party would never have agreed to any such sale or relaxation was irrelevant, as was the conduct of the wrongdoer.

* The decision to award damages was discretionary according to the circumstances of the case, but the decision should be taken when damages would be an inadequate remedy and where, in the absence of damages, the innocent party would obtain no just recompense for the wrongdoer's breach in doing what he had agreed not to do.

* The decisions (i) whether to award damages and (ii) how much to award might take account of factors such as delay in intimating the claim and prosecuting the action, if appropriate.

* As the court was assessing the amount by reference to hypothetical negotiations each party was entitled as part of that exercise to adduce evidence that it would have deployed in such hypothetical negotiations. The damages that could be awarded had to reflect the case, subject to the overriding principle that the damages were compensatory, not punitive.

* Ordinarily where a claim was based on subsequent profits the claimants had to show that there was a reasonable prospect of connection between the breach of contract and the subsequent profits.
The IPKat is never comfortable with hypotheticals such as the outcome of non-existent negotiations in which each party makes reasonable use of its bargaining position. It prolongs the cost of settling the dispute, delays the damages award, stretches the credulity, stresses the innocent IP owner and tests the outer limits of judicial imagination. Why not just stuff the phoney methodology, award a large and arbitrary sum for infringement/breach of contract and make the defendant pay it if he can't come up with a damn good argument why the sum should be reduced?

Merpel says, this sounds like punitive damages instead of the compensatory sort, though.

Panda recipes here
Turkish oil wrestling here
Female mud wrestling here
Other sorts of wrestling here, here and here

3 comments:

Jeremy said...

Peter Groves (Bircham Dyson Bell) writes: "I have to take you to task over the IPKat's note about the WWF decision - to express my horror at his referring to WWF as an acronym, which the OED defines as a word made up from the initials of other words, citing ANZAC as an example - one that will be dear to the hearts of all trade mark lawyers! Now, as far as I can see WWF is not a word, and even if it can be pronounced it is not a suitable one for a cat to use. What's wrong with the good old-fashioned word 'abbreviation'?"

Jeremy said...

This, from Wikipedia, on Acronyms and Initialisms: "Of the two words, acronym is the much more frequently used and known, and many dictionaries, speakers and writers refer to all abbreviations formed from initial letters as acronyms. However, some still differentiate between acronyms and initialisms: an acronym was originally a pronounceable word formed from the initial letter or letters of the constituent words, such as NATO IPA or RADAR, from RAdio Detection And Ranging, while an initialism referred to an abbreviation pronounced as the names of the individual letters, such as TLA or XHTML".

Peter Groves said...

Which is exactly how words change their meaning, often quite wrongly! I'll go with the OED ...

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