The patent at issue was retrospectively amended by the EPO to limit its scope to valid claims, after the English court had given judgment in favour of the patentee. The ‘vexation’ associated with the pursuit of two proceedings challenging the validity of the patent was an inescapable feature of the statutory scheme which conferred concurrent jurisdiction on questions of validity on both the English court and the EPO.
Jacob LJ said: ‘Of course in principle the preferred option is to stay UK proceedings if there are corresponding EPO proceedings. And it may in some circumstances be the case that an interim injunction could serve to hold the fort whilst these proceed. But all must depend on the circumstances and particularly the timing. Normally, although a stay is in principle the preferred course, it would be wrong to prevent the patentee from enforcing his patent here if the EPO opposition will not be concluded reasonably soon – as all too often it sadly is not. Take this case: the action started here in May 2002 and was finally over by November 2005. The EPO proceedings are still running and could be still doing so at the end of next year. Business needs to know where it stands – and a patentee is entitled to enforce his patent without undergoing the risks inherent on the cross-undertaking in damages – especially if the period involved could involve years.’
Mummery, Arden, Jacob LJJ
[2007] EWCA Civ 364, [2007] FSR 25, [2008] 1 All ER 156, [2007] Bus LR 1140, [2007] 2 All ER (Comm) 599
Bailii
England and Wales
Citing:
See Also – Unilin Beheer Bv v Berry Floor Nv, Information Management Consultancy Design Limited (T/A Responsive Designs), B and Q Plc CA 30-Jul-2004
Patents – infringement – validity . .
See Also – Unilin Beheer Bv v Berry Floor Nv and others (No. 2) CA 3-Nov-2005
. .
Cited by:
Cited – Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd SC 3-Jul-2013
Virgin Atlantic Airways Ltd sought to recover damages exceeding 49,000,000 pounds for the infringement of a European Patent which did not exist in the form said to have been infringed. The Technical Board of Appeal of the European Patent Office had . .
Cited – Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd SC 3-Jul-2013
Virgin Atlantic Airways Ltd sought to recover damages exceeding 49,000,000 pounds for the infringement of a European Patent which did not exist in the form said to have been infringed. The Technical Board of Appeal of the European Patent Office had . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Damages
Updated: 27 January 2022; Ref: scu.251455