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Tuesday, 10 July 2007

Patent entitlement - who determines the right?

The IPKat's twitchy whiskers - aided by the LexisNexis Butterworth service - have detected Luxim Corporation v Ceravision Ltd [2007] EWHC 1624 (Ch) (available here from BAILII), decided yesterday in the Patents Court by Mr Justice Warren - another of those small but important rulings on the mechanism that helps to determine which of two or more disputing parties is entitled to the rights in a patent.

Luxim asserted that it was the successor in title to various rights, including intellectual property rights, of another party (D), which included two patent applications. Ceravision denied that Luxim was so entitled. In entitlement proceedings before the United Kingdom Intellectual Property Office, the hearing officer - on behalf of the Comptroller - was asked to decline to deal with the entitlement proceedings so that they could be dealt with by the court, under the Patents Act 1977. The relevant provisions of the Act are as follows:

Section 12(1): "At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made)…

(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or …

(b) any of two or more co-proprietors of an application for such a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person … and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination".

Section 12(2): "If it appears to the comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the court in Scotland, the court shall have jurisdiction to do so".

Refusing the request to hand the case over to the court, the hearing officer based his decision on(i) the need to adopt a cautious approach in the light of the powers conferred on the Comptroller by Parliament and (ii) the fact that complexity by itself would not normally be a reason to decline to deal unless the proceedings in issue were highly complex. Ceravision appealed.

Allowing the appeal by Ceravision, Warren J ruled as follows:

* Provided that the hearing officer recognised that what was complex was not an absolute standard, he could not be said to have fallen into error if he considered exercising the discretion under s.12(2) whenever a case was complex; he was to be the judge of what was (not) complex in that context.

* What he should not have done was to approach the issue with a predisposition that the discretion was to be exercised sparingly, cautiously or with great caution. Complexity could be manifested in various ways and it was for the Comptroller to judge how relevant each matter or question appeared to him, given its complexity.
* In this case the hearing officer applied the incorrect test in determining whether the discretion under s.12(2) should be exercised. He had started from the position that a cautious approach was required and that the threshold of 'highly complex' had to be met before the discretion could properly be exercised. However, on the facts this was a case in which the discretion to decline to deal with the application should have been exercised.

The IPKat recalls that the Gowers Review expressed its concerns about the cost of resolving patent disputes and remembers that the point of the UK-IPO's jurisdiction was to provide a low-cost alternative to High Court/High Cost litigation. How sad, then, that this dispute should already have reached the Patents Court on the question of whether it should even be heard by that Court. Does anyone have a guess as to how much cash this has cost the parties so far, given that they appear to be no nearer to resolving the entitlement issue than when they started. Merpel says, the UK-IPO hearing officers seem quite adept at dealing with pretty complex issues when dealing with regular patent applications. Can they not just be given some sharply focused training, a helpful manual and enough time and space to get on with it?


Right: dispute resolution training programme for UK-IPO hearing officers, lesson 1: how to keep angry disputants at bay

How to train lawyers, porpoises, fleas , clematis and even cats

1 comment:

andrew hall (why hide?) said...

HI Kats,

'looks like I'm the first to suffer from the decline to deal fiasco.

I wonder how many claimants are going to be just days from trial -like me - only to receive a copy of that utter rubbish from UK IPO.

As you all know, seeking decline to deal is often a ploy by the rich and powerful (or those pretending to be rich and powerful, as in my case) to squeeze their way out of cases they will clearly lose in UK IPO.

But what an easy way out for a busy UK IPO.

watch this space (I'm sure my opponents will).

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