The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of time.
Held: The appeal succeeded: ‘ the long-standing rule of practice is that the new claim should be advanced in a new action, where the defence can be tested. If (as the Hearing Officer rightly concluded) CPR 17.4 did not apply, then the long standing rule of practice was the relevant default rule. ‘ ‘Section 72 (2) bars the making of an application outside the two year limit, not merely the making of an order. In addition, section 74 (4) precludes the raising (outside the two year time limit) of invalidity on the ground that the patent was granted to a person not entitled to it in infringement proceedings (among others). ‘ and ‘section 37 (5) bars the making of a claim outside the two year time limit; not merely the grant of a particular remedy. ‘ The tribunal had its own inherent power to manage its afairs, but the rules gave the Comptroller his own discretion and limited its use. In that circumstance, the inherent power was not to be relied upon to restore a discretion withheld by parliament. There was a fundamental difference between carrying on existing proceedings as a result of a devolution of title once the proceedings have started and an enlargement of the scope of a dispute as a result of an amendment. If an amendment adding a new party or a new cause of action is made to a rule 54 statement, the amendment will not relate back to the date of the original reference, but (where the amendment is made in order to raise a claim of the kind contemplated by Article 23 of the CPC) will take effect from the time it was made. The underlying principles are: i) That permission to amend to introduce new parties or a new claim should not be granted where there is a clear limitation defence; and ii) Where the limitation defence is arguable, it should be tested in fresh proceedings.
Judges:
Lewison J
Citations:
[2006] RPC 24, [2006] EWHC 160 (Ch)
Links:
Statutes:
Patents Act 1977 37(5), Patents Rules 1995, Civil Procedure Rules 17
Jurisdiction:
England and Wales
Citing:
Cited – Ocean Estates Ltd v Pinder HL 1969
The court asked whether the sufficiency of adverse possession might be qualified either by the intentions of the paper owner or the squatter’s willingness to pay for their occupation if asked. Lord Diplock: ‘Where questions of title to land arise in . .
Cited – Boake Allen Ltd and others v HM Revenue and Customs CA 31-Jan-2006
The claimant companies had paid corporation tax under rules which had later been found to be discriminatory. They now sought repayment by virtue of double taxation agreements with the countries in which the parent companies were based.
Held: . .
Cited – Langley v North West Water Authority 1991
A tribunal has an inherent power (subject to constraints) to regulate the procedure to be followed before it. . .
Cited – Pharmedica GMBH’s Trade Mark Application ChD 2000
The tribunal was asked whether an assignee of a trademark should be substituted in existing opposition proceedings for the assignor. The assignment had taken place after the proceedings had begun.
Held: A tribunal has an inherent power to . .
Cited – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .
Cited – Regina v Comptroller-General of Patents Designs and Trademarks ex parte Ash and Lacey Building Products Ltd 2002
Revocation was sought on the ground that the patent was invalid because of anticipation by prior publication. The court considered its powers under section 77 in the context of such a revocation application: ‘ . . the power to revoke arises in . .
Cited – Parsons and Another v George and Another CA 13-Jul-2004
The claimant sought to begin proceedings to renew his business tenancy, but the proceedings were issued in the wrong name. He sought to amend the proceedings to substitute the correct defendant, but that application was out of time.
Held: . .
Cited – Loveridge and Loveridge v Healey CA 20-Feb-2004
The landowner sought to recover possession of land occupied under an agreement by a mobile home owner.
Held: It was necessary for the land owner to show that he had complied with the requirements under the Act. It was insufficient for the . .
Cited – Goode v Martin CA 13-Dec-2001
The claimant had sought to amend her claim for damages for personal injuries. The application had been rejected as introducing a claim not based on the same facts. She had suffered severe head injuries, and had no memory of the accident. She served . .
Cited – Cobbold v London Borough of Greenwich CA 9-Aug-1999
The tenant had sought an order against the council landlord for failure to repair her dwelling. The defendant appealed refusal of leave to amend the pleadings in anticipation of the trial, now due to start on the following day.
Held: Leave was . .
Cited – Welsh Development Agency v Redpath Dorman Long Ltd CA 4-Apr-1994
A new claim was not deemed to have been made until the pleading was actually amended for limitation purposes, and should not be allowed after the limitation period had expired. The date of the application for leave to amend was not at issue. The . .
Cited – Aldi Stores Ltd v Holmes Buildings Plc CA 1-Dec-2003
What makes a claim a ‘new claim’ as defined in section 35(2) of the Limitation Act 1980 is not the newness of the case according to the type or quantum of the remedy claimed, but the newness of the cause of action that it involves. A cause of action . .
Cited – Lloyds Bank Plc v Rogers CA 16-Jul-1999
Where a claim had been made for possession of property under a legal charge, but no claim had been made for financial relief, and a later claim for such relief was made through an amended claim, the loss of the possible defence of limitation was a . .
Cited by:
Cited – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Appeal from – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
At First Instance – Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice, Limitation
Updated: 05 July 2022; Ref: scu.238685
