When Patent Decisions Are Appealed; Ninja Sweeps Away Fanciful Defence

has constitute 2 small-scale patent-ish offerings on the gratis BAILII illustration access site. They are

Smith International Inc v Specialised Petroleum Services Group Ltd [2005] EWCA Civ 1357, a Court of Appeal decision delivered yesterday past times Lord Justice Mummery (Jacob together with Neuberger LJJ concurring).

Smith wanted to appeal against a conclusion that Specialised Petroleum's patent was non invalid for lack of novelty. There was a full general prohibition on appeals to the Court of Appeal from the Patents Court on appeal from a conclusion of the Comptroller, only this illustration appeared to autumn inside each of the exceptions to that prohibition nether the Patents Act 1977, s.97(3) since

* the Comptroller's conclusion had been given nether s.72 of the 1977 Act and

* Smith was contending illustration that the conclusion of the trial gauge (Lewison J) was incorrect inwards constabulary equally he had misconstrued the patent inwards conform or the prior fine art or both.

If the provisions of the Access to Justice Act 1999, s.55 inwards relation to mo appeals, together with the Civil Procedure Rules (CPR), r.52.13, applied to the proposed appeal, Smith would demand to present that the proposed appeal raised an of import betoken of regulation or exercise or that in that location was a compelling ground to grant permission. However, if the Patents Act 1977, s.97(3) together with CPR r.52.3 applied, permission could live granted if in that location was a existent prospect of success or another compelling ground why the appeal should live heard. The Court of Appeal was asked to consider whether the number was whether s.55 the Access to Justice Act had impliedly repealed or limited s.97(3).

The Court of Appeal granted Smith permission to appeal. In its opinion

* Section 97(3) was a specific physical care for set downwards past times Parliament for patent appeals; it had non been expressly or impliedly repealed past times s.55.

* The consequence of applying the full general requirements of s.55 would live to cancel or homecoming meaningless the ability nether s.97(3) nether which the Patent Court granted permission to appeal to the Court of Appeal.

* It was hard to imply legislative intention inwards a full general mensurate that it was intended to repeal an before enactment which was particular, particularly since the Access to Courts Act expressly repealed a like provision for appeals from the Conveyancing Appeals Tribunal only said zip near patent appeals.

* Accordingly "It is thus unnecessary to consider whether the proposed appeal raises an of import betoken of regulation or practice. The application for permission to appeal is granted on the footing that the proposed appeal has a existent prospect of success" (para.27).

thinks this must live right, both inwards regulation together with inwards price of the interpretation of the relevant provisions.

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Finecard International Ltd (t/a The Ninja Corporation) v Urquhart Dyke & Lord) together with Ajello [2005] EWHC 2481 (Ch), a Chancery Division ruling of Mr Justice Peter Smith on the Tursday of terminal week.

In these proceedings Finecard sought an lodge that a defense forcefulness raised past times Urqhart, a theater of patent agents, live summarily dismissed on the footing that it had no existent prospect of success together with in that location was no other compelling ground why the number should select to aspect until trial before it could live disposed of. In 1997 Finecard, a customer of Urquhart, was granted an exclusive licence past times Spring Form to exploit a patent inwards England together with Wales, the licence existence registered over a twelvemonth later. In 1999 Finecard entered into a novel exclusive licence understanding amongst Spring Form to exploit the same patent only on price that granted Finecard increased rights. Urqhart, having been asked past times Finecard to register the licence equally shortly equally possible, did produce 2 years later.

Under the exclusive licence Finecard, who equally exclusive licensee had a statutory correct to convey proceedings for whatsoever infringement of the patent, did together with so at a fourth dimension when the licence had non nevertheless been registered. At the infringement hearing the gauge held that the 1999 understanding did non ameliorate the 1997 understanding only replaced it. Accordingly Finecard could claim damages or an trouble concern human relationship of net turn a profit alone during the menses from when the 1997 understanding had been registered until the 1999 understanding was made. The courtroom also held that the 1999 understanding contained a Californian selection of constabulary clause.

Urqhart submitted that, since alone the 1997 understanding had a Californian selection of constabulary clause (the 1999 understanding applying New York law), the gauge was incorrect equally he had non been told near the condition of New York nether the 1999 licence. If he had he known the truthful position, he would non select concluded that the 1997 understanding was of no consequence equally existence substituted past times the 1999 agreement. This existence so, since Finecard had choke an exclusive licensee past times virtue of the 1997 agreement, which initially governed the human relationship betwixt the parties, together with remained an exclusive licensee, the fact that it remained an exclusive licensee past times virtue of the 1999 understanding meant that its involvement inwards the patent did non select to live registered.

Peter Smith J granted Finecard the lodge it sought. He concluded equally follows:

* If the gauge inwards the before proceedings had he been told the New York position, he would non select come upwards to a unlike conclusion equally regards the two-year menses when the licence had non been registered. Since the New York constabulary alone provided that the 1999 understanding operated from 1999, the judge's conclusion amongst regard to claims for infringement inwards the menses betwixt the making of the 1999 understanding together with its registration would select been the same.

* The usage of s.68 of the Patents Act 1977 was to render a government whereby people who asserted belongings rights inwards patents registered their rights together with so equally to set the ground on observe of their existence. The wording of s.68 was plain: it was the
instrument or other transaction or trial upon which a somebody relied to enforce
his rights that had to live registered, non the condition of the parties.

* The 1999 understanding granted an exclusive licence for the menses starting amongst its appointment of commencement. This existence so, Finecard had destroyed Urquhart's defence
since it could non live respectably argued that s.68 had the consequence suggested by
Urqhart.

* The lack of registration set Finecard inwards a province of affairs that the human activity of registration was designed to avoid, i.e. the creation of doubt equally to who was entitled to enforce the patent.

thinks this is correct too. The defense forcefulness was artistically conceived together with good arrgued, only it was never going to endure a reality check.

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