CALLING ALL SOLE PRACTITIONERS; TAMGLASS NOT BARRED FROM CLAIMING DAMAGES; DELAY "NOT PREJUDICIAL"

Calling all sole practitioners

Final reminder: today's meeting for sole and small practitioners takes place upstairs at the Crown Tavern, Clerkenwell Green, 5pm to 7pm. If you've not already said you're coming, you're welcome to pop in on the off-chance. We'll be delighted to see you. The IPKat thanks CPA, Oxford University Press and the Institute of Trade Mark Attorneys for their support for this event.

Details of the meeting and of how to find the Crown Tavern here.


Patent victor doesn't fall into non-registration trap

The IPKat has just found a further ruling in Tamglass Ltd OY v Luoyang Glass Technology Co Ltd, which he blogged a brief note on 27 January. The ruling emanates from yesterday's hearing before Mr Justice Mann in the Patents Court and it is available on Butterworth's All England Direct subscription service and also on Lawtel.

To summarise: on 27 January the court allowed Tamglass's claim against Luoyang after holding that its patent was valid against a somewhat spurious challenge. After a dispute as to the form of the subsequent financial order, Novaglaze - who kept and used the infringing machine - contended that Tamglass was not entitled to financial relief in respect of infringing acts committed before it became the owner of the patent, since the assignment to Tamglass should have been registered under s.33 of the Patents Act 1977 but wasn't. Accordingly, by virtue of s.68 of the same Act, no infringement damages could be claimed for acts done before the date of registration of the transaction.

What had actually happened was that a company, Kyro Corporation, had become the proprietor of the patent as a result of a demerger of a Finnish company, Kyro Oyj Abp. Upon the demerger the assets of Kyro Oyj Abp were owned by Kyro Corporation by operation of the Finnish law of universal succession. Tamglass subsequently became the proprietor as a result of an assignment that carried with it the right to sue for past infringements. The issue was whether Kyro Corporation had itself become the proprietor of the patent "by virtue of a transaction, instrument or event to which section 33 applies" under s.68 of the Act. Both defendants argued that, since the transfer of the patent to Kyro Corporation should have been registered under s.33 but wasn't, no damages were recoverable in respect of infringements taking place between the demerger and the date Tamglass acquired the patent. Tamglass submitted that the demerger was a transfer by operation of law under s.30(3), which was not a transaction, instrument or event specified in s.33(3). Accordingly there was no basis for depriving it of damages under s.68.

Mann J dismissed this argument as being baseless. In his view the transfer of the patent did not fall within the registration provisions. Since it didn't need registration under s.33, failure to register didn't bar the recovery of damages under s.68.

The IPKat wonders whether any patent damages claims have simply not been brought in the past on the erroneous assumption that a failure to register a transaction automatically meant the death of an entitlement to obtain damages.


Tell it to the Marines ... but don't wake them up

Another case, also noted on the All England Direct service, is Marine Rescue Technologies Ltd and others v Burchill and another, a Chancery Division decision of Mr Justice Warren, also of yesterday's date.

In infringement/passing off proceedings issued by Marin Rescue Technology in September 2001 following a dispute concerning the good title of certain patents and design rights, Burchill applied to strike out Marine's claim. Burchill relied on Civil Procedure Rules 3.1, 3.4 and the inherent jurisdiction of the court, citing four separate instances of inordinate delay.

Warren J dismissed the application. In this case, he said, the delays - whether taken individually or cumulatively - could not be viewed as disgraceful: at each stage it was open to Burchill to prompt Marine, but they did not do so. Nor had any prejudice to their position been caused by the delays.

The IPKat can't help wondering about this. Four and a half years into a dispute, its resolution doesn't seem to have got very far. What about some rigorous case management to push it on its way? Merpel adds, I hope the claimants' rescue technology works more speedily than the legal system ...

"Slow, slow ... quick, quick, slow!"