Coflexip S A and Another v Stolt Offshore Ms Ltd and others: CA 27 Feb 2004

Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent.
Held: (Lord Justice Neuberger dissenting) The defendant was bound by the order for an enquiry as to damages, notwithstanding the subsequent revocation of the patent. Johnson v Gore Wood did not herald a broader approach to issue and Henderson Estoppel: i) that in Arnold v National Westminster Bank the House of Lords carefully distinguished cause of action estoppel and issue estoppel with no exceptions being allowed to cause of action estoppel other than fraud or collusion;
ii) that in the case of issue estoppel there was a limited exception where further material is found which could not have been adduced by reasonable diligence in the earlier proceedings;
iii) that the House of Lords in Johnson v Gore Wood were fully alive to all that was said in Arnold’s case and cast no doubt on what was there said on cause of action estoppel or on the limited further exception that existed in the case of issue estoppel;
iv) that, therefore, the abuse of process approach laid down in Johnson’s case was applicable only to cases invoking the Henderson principle and not to cases of cause of action estoppel or, indeed, issue estoppel.
Neuberger LJ discussed the suggestion that the Act should be interpreted through the Convention: ‘As a matter of ordinary language, given that the Convention has not been ratified, and has never come into effect, there are no ‘territories to which the Convention appl[ies].’ There is, therefore, in my judgment, real force in the point that unless and until the Convention is brought into force, it is scarcely possible to talk about a provision such as Art.56(1) having ‘the same effects’ in the sense for which Stolt contend, namely the consequences set out in Art.33, as Art.56(1) or its equivalent has ‘in the territories to which [the] Convention . . app[lies]’, in circumstances where the Convention does not apply in any territory at all.
In this connection, it should be mentioned that the effect of Art.6(2) of the Convention (mirroring Art.98 of the 1975 form) is that it can only come into effect when all the signatory states have ratified it.
I appreciate that the point found no favour with Jacob J. on the basis that s.130(7) ‘is an interpretation section’, and that the same view appears to have been taken by this court in Kimberly-Clark Worldwide Inc v Procter and Gamble Ltd [2000] R.P.C. 422 and Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2003] R.P.C. 31. However, it appears to me that, particularly if the word ‘effects’ is given the wide meaning for which Stolt contends in the present case, the closing words of s.130(7) indicate that, so long as the Convention is not in force, the subsection may well not apply. However, if the narrower meaning, which I believe to be correct, is given to the word ‘effects’, then it would appear to me to strengthen the contrary view reached by Jacob J, and, indeed, apparently assumed to be correct by the Court of Appeal. I should add that it appears clear that there was no argument on the point in either of the two cases before the Court of Appeal.
In all the circumstances, I do not consider that we should decide the second ground raised by Mr Miller for rejecting Stolt’s case based on the Convention. It is unnecessary to decide it, and the reason I have discussed it is to only explain why it impressed me rather.’


Lord Justice Peter Gibson, Sir Martin Nourse, Lord Justice Neuberger


[2004] EWCA Civ 213, [2004] FSR 708




Patents Act 1977


England and Wales


Appeal fromCoflexip Sa and Another v Stolt Comex Seaway Ms Ltd and others ChD 5-Jan-2004
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Cited by:

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Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 10 June 2022; Ref: scu.194078