ON APPEAL FROM CHANCERY DIVISION
PATENTS COURT MR JUSTICE FLOYD
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE PATTEN
SIR ROBIN JACOB
| SCHUTZ (UK) LTD.
|- and -
|WERIT UK LIMITED & ANR
Simon THORLEY Q.C. and Tom MITCHESON (instructed by Hogan Lovells) for the Respondent
Hearing dates : 19th October 2011
Crown Copyright ©
Sir Robin Jacob (giving the first judgment at the invitation of Ward LJ):
i) That Schütz were entitled to damages from the date of amendment of the Act;
ii) That the failure to register the 1995 licence (we wrongly called it 1994 in our judgment) was a bar to recovery of costs prior to the date of registration of the licence in July 2008; and
iii) That Schütz were entitled to costs from the date of registration of the 1995 licence subject to the question of whether it was entitled to costs for the period after 26th November 2009.
15.1 The [1995 licence] between Licensor and Licensee .. is hereby terminated at the date of this Licence Agreement.
17.07.2008 Notice of exclusive licence to [Schütz] dated 17.12.1995. Form 21 and documents filed on [the patent in suit].
68. Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, before the transaction, instrument or event is registered, in proceedings for such an infringement, [the court] or comptroller shall not award him costs or expenses unless –
(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.
"Exclusive licence granted to [Schütz] dated 7th December 1995"
 In my view the purpose of s.68 is to provide a regime whereby people who assert property rights in patents register their rights so as to put the world on notice of their existence. It seems to me that the wording of s.68 is plain namely that what is required to be registered is the transaction, instrument or event by which a person has become the proprietor or one of the proprietors or the exclusive licensee of a patent. In other words the instrument or other transaction or event upon which you rely to enforce your rights must be registered. ..
 …. It is odd if the effect of the statute means that the actual documents which gives rise to the rights which are asserted does not have be registered but one which has expired does.
Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this.
Lord Justice Patten :
Lord Justice Ward :