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 allowed. s.37(5) bars the making of a new claim out of time. Insofar as the proposed amended reference claims sole ownership and seeks to set up facts in support of that remedy it is a ‘reference . . made after [the expiry of the two-year period].’
Jacon LJ: ‘Is the court to construe s.37(5) as having the same meaning as the provision in the CPC about bringing entitlement claims more than 2 years after grant? Or can one simply forget about the CPC because it never came into force and so had no effect anywhere? I have no hesitation in holding the former. I quite accept that the bizarre s.130(7) talks about ‘the same effects in the UK as the corresponding provisions of [the specified Conventions] have in the territories to which those Conventions apply.’ And that in the case of the CPC it has no effect anywhere because it is not in force. But I am unable to read the sense of the provision as saying the CPC is to be used for construction only if and when it comes into force. ‘
Judges:
Sir Anthony Clarke MR, keene LJ, Jacob LJ
Citations:
Times 05-Sep-2006, [2006] EWCA Civ 1094, [2007] Bus LR 1
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Beloit Technologies Inc and Another v Valmet Paper Machinery Inc and Another ChD 12-May-1995
The judge urged that the Convention should be incorporated into English law without rephrasing difficult clauses: ‘it helps no-one for the Parliamentary draftsman to re-write matter in a treaty or convention (or EU directive for that matter) which . .
Cited – IDA Ltd and others v The University of Southampton and others CA 2-Mar-2006
The claimants sought sole ownership of a patent.
Held: The judge had erred when he reversed the decision of the hearing officer that the claimant was sole owner of the patent. The court expressed its regret that the matter had not been . .
Cited – British Sugar plc v James Robertson and Sons Ltd 1996
Use ‘in the course of trade’ means use by way of business and does not just mean use as a trade mark. . .
Cited – Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
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 . .
Cited – Philips Electronics Nv v Remington Consumer Products Ltd ChD 2-Feb-1998
It was a misuse of Trade Mark legislation to seek permanently to prevent the use of a substantial engineering design idea which was underlying the mark for which protection was sought. The judge revocation of the registration of the claimant’s mark . .
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 – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another ChD 21-Oct-2004
The claimant alleged infringement of its trade mark. It registered a two dimensional mark which represented its razor which had three rotary blades on the head of the razor. The defendant manufactured and sold a similar design, and counterclaimed . .
Cited – Commissioners of Customs and Excise v Century Life Plc CA 19-Dec-2000
The Directive required member states to exempt from VAT, services involving the provision of insurance, and for intermediaries. Following the Regulator’s involvement, the principal company had to arrange for the checking of existing policies, and . .
Cited – 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.
Cited – Menashe Business Mercantile Ltd and Another v William Hill Organization Ltd PatC 15-Mar-2002
The claimants had a patent specifying a means of gambling over computers connected at a distance. They brought infringement proceedings against the respondent, who defended by asserting that since the host computer was located abroad it did not . .
Cited – Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office ChD 1997
Jacobs J said: ‘I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must . .
Cited – Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office CA 6-Nov-1998
Robert Walker LJ said: ‘I cannot entirely agree with the judge’s approach in the passage of his judgment (at 706) which I have already set out. I am not inclined to think that the invention was a ‘combination’ of elements. Mr Z saw Mr X’s drawing . .
Appeal from – Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
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 . .
Cited by:
Cited – Cinpres Gas Injection Limited v Melea Limited ChD 23-Nov-2006
The claimant sought to pursue its licence claim after its claim to a proprietary interest in the patent had been dismissed.
Held: The claim misunderstood the way section 37 worked. To have a claim to a license the license the claimant had to . .
Appeal from – 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
Updated: 19 November 2022; Ref: scu.244106