05 December 2005

Patents: Eveline Wesby-Van Swaay v Actineon Inc

In the previous post I expressed regret that the government did not push through its original proposal to abolish the requirement of consent for the referral of patent infringement claims to hearing officers. Here is a case that shows just what a good hearing officer is capable of.

The dispute was between an inventor and a California company that she had formed with her husband to exploit her inventions. She had assigned applications for patents for those inventions to the company in order to attract investment. In the event, the company failed to attract any money. The inventor brought these proceedings under s.12 of the Patents Act 1977 to get these applications back. S.12 provides:


"(1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made)-
(a) any person may refer to the comptroller the question whether he is entitled to be granted alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
(b) ..
and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination."
S.12 (2) permits the comptroller (that is to say, the hearing officer) to decline to deal with the application If it appears to him that the question involves matters which would more properly be determined by the court.

The company contended that the Patent Office had no jurisdiction over this dispute because it was a foreign corporation with no connection with the UK other than the patent applications. Secondly, it argued that even if the Patent Office did have jurisdiction he should decline to deal with the case as it was more appropriate for the court. Not unnaturally, the inventor objected to the expense and inconvenience of court proceedings.

Mr Barford (rightly IMHO) threw our the company's objections. The company did not need top have any domicil in England. The power granted by s.12 (1) was pretty wide. All that was required was that the company should have an interest in a patent or application for a patent. As for the exercise of the discretion, the hearing officer could envisage circumstances when it might be right to refuse jurisdiction:

"There are clearly circumstances where it is right for the comptroller to exercise his
discretion to decline to deal - notably when the request is supported by both parties; and as pointed out by Dr Wesby-Van Swaay, the most common reason for the comptroller’s declining to deal is where there are corresponding High Court proceedings. Otherwise it seems to me, this discretion should be exercised with great caution, given the powers that parliament has given to the comptroller. It may well be that a judge has greater experience of resolving the issues in dispute but that, it seems to me, cannot be a deciding factor. I think it also material that proceedings before the comptroller are intended to enable parties to litigate disputes before a relatively informal - but nevertheless authoritative - tribunal, with any costs that the tribunal might award being to a large extent predictable"

None of those circumstances applied to this case. It was right that he should retain the proceedings. The last sentence is very apt and it would also be true of infringement proceedings. Wouldn't it.

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