IPO The parties had entered into an agreement under which CRL agreed to take the patent application into the national phase in designated countries and in return IC would make two payments to CRL. The agreement included a default clause whereby IC would assign 30% of the patent application and any subsequent published patents to CRL if IC did not make the first and second payments.
IC argued that the default clause only came into play if both the first and the second payments were not made. The Hearing Officer found that the default clause must be construed as coming into play if any of the payments were not made and that therefore IC had defaulted on the agreement.
Neither party had any clear idea of the intended meaning of the default clause. CRL suggested either that they could be co-patentees (which would effectively give them a 50% share) or, since it was unlikely that either party would themselves manufacture the invention, that the parties could share in the proportions 70:30 any royalties which might accrue from licensing the technology. The other side suggested that it could mean a non-exclusive licence.
The Hearing Officer held that the clause was incapable of proper interpretation without further agreement between the parties in order to implement it and therefore it was void for uncertainty. IC was not relieved of its obligation to pay the money but CRL would have to look elsewhere for redress.
Citations:
[2000] UKIntelP o25600
Links:
Jurisdiction:
England and Wales
Intellectual Property
Updated: 20 December 2022; Ref: scu.453874
