Neutral Citation No: [2005] IEHC 114
RECORD No. 2004 2 PAP
NOTE of ex tempore ruling of Mr. Justice Kelly delivered on the 20th day of January, 2005.
On 1st November, 2004, a petition was presented to the court by Merial Limited. It sought the following reliefs:-
1. That supplementary protection certificate number 2002/003 (designating Irish patent number 52364 as the basic patent) filed on 15th February, 2002, granted to Sankyo Company Limited be revoked.
2. Such further and other relief as the court deemed appropriate.
3. Costs.
An application to transfer the matter to the commercial list was made on 17th December, 2004. That application was granted.
This morning, I was informed that I could make an order on consent that the supplementary protection certificate be revoked. The making of such an order brings the proceedings to an end since that is the primary relief sought in the petition. At first blush it would seem that costs should be awarded against the respondent. The normal rule is that costs follow the event pursuant to the provisions of order 99 of the Rules of the Superior Courts.
In this case, however, the respondent has objected to the award of costs in favour of the petitioner. It in fact has applied for costs to be awarded in its favour. That is a rather unusual application on the part of a respondent consenting to judgment against it.
The principal contention made by the respondent in support of its own application for costs and in resisting the costs order sought by the petitioner is founded on the fact that no letter was sent to the respondent prior to the presentation of the petition. It argues that the course of dealings which occurred between the parties would have led to an expectation that the order sought would have been agreed to by the respondent had an appropriate letter been written.
In the course of the hearing this morning reference was made to proceedings between the parties in other European jurisdictions. It is not necessary for me to set forth the history of those proceedings in any detail. It is sufficient to note that in the course of last year there was a moratorium agreed between the parties in respect of such proceedings so as to allow discussions to take place. They did not bear fruit and so summary judgment was obtained in the English courts.
Last December, Mann J. in the English High Court heard the related case of Merial Limited v. Sankyo Company Limited [unreported, 16th December, 2004]. In the first paragraph of his judgment he pointed out that the "real debate in this case took place in relation to the question of costs and it is on that point that I am now delivering judgment". That same debate has occurred in the present case. All other aspects of the matter have been dealt with by agreement.
The primary contention of the respondent is that there was no warning letter sent prior to the presentation of the petition on 1st November, 2004. It is said that a prudent litigator would have sent such a letter. If such a letter had been sent then the current litigation would not have been necessary. It is said that the developments which occurred in the English courts sent a clear signal to the petitioner that a similar attitude concerning revocation would be adopted in Ireland.
Correspondence relating to the English action was exhibited in the present case. The correspondence included a letter of 23rd July, 2004, from Simmons and Simmons, (the U.K. solicitors for the respondent), to Bird and Bird, (the U.K. solicitors for the petitioner), which stated that:-
"Our clients are of the firm view that UKSPC/GB/01/040 is valid. Nevertheless they have concluded that, in the United Kingdom, there is little merit in participating further in the proceedings brought against UKSPC/GB/01/040. Our clients do not therefore intend to resist judgment in these proceedings in the United Kingdom. For the avoidance of doubt the defence is not withdrawn."
I am puzzled as to the precise attitude of the respondent in the proceedings in England in not resisting judgment and yet not withdrawing its defence; it appears to be a case of trying to have its cake and eat it.
The English judge was equally puzzled at the position which was adopted.
It might be prudent for a party to send a warning letter prior to instituting revocation proceedings in certain circumstances. However, the thrust of the jurisprudence relating to warning letters prior to a revocation action holds, first, that there is no necessity to do so and, secondly, that the fact that a party does not do so is not fatal in respect of costs.
Terrell on "The Law of Patents" (14th edition) pg. 342 summarises the position succinctly. It recites that an order for revocation will usually include an order for the respondent to pay the petitioners costs. This is so even though the order is made by consent and no previous notice of the intention to present a petition has been given to the patentee. (See Aylott's Patent 28 RPC 227; Merryweather's Patent 29 RPC 64 and Berry's Patent 32 RPC 350).
I was also referred to a reference in the Supreme Court Practice in respect of costs in patent actions but I do not think that the gloss put on these authorities by the authors is correct.
In the instant case, subsequent to the presentation of the petition, there were lengthy affidavits exchanged. Even this morning at 11.00 a.m. I had to grant a 15 minute adjournment to enable further affidavit evidence to be served.
The order sought on consent today is in the precise terms of the prayer in the petition.
It is my view fanciful to suggest that the dispatch of a warning letter prior to the presentation of the petition would have resulted in different behaviour on the part of the respondent. It may be the case that the original form of order sought by the petitioner which sought to link the revocation to specific grounds of invalidity was to a certain extent seeking to gild the lily particularly in circumstances where there would not be a hearing on the merits. However, on the other hand, the original form of consent offered by the respondent, in view of the qualifications included in it, was an attempt (similar to what was attempted in England) to have its cake and eat it.
The failure to write a warning letter prior to the presentation of the petition seeking revocation of the supplementary protection certificate is not fatal to the award of costs nor in my view would such a letter have produced different results. I do not accept that the petitioner should have been on enquiry because of what had occurred in England. The English High Court judge found it difficult to understand the import of the Simmons and Simmons letter to which I have referred. The petitioner in the present action could hardly be expected to understand it either.
I see no reason why I should depart from the normal practice on the question of costs. Accordingly I make the order for the revocation of the patent and the costs of the proceedings are granted in favour of the petitioner to be taxed in default of agreement.
Approved: Kelly J.