Patent decision

BL number

O/319/01

Concerning rights in

GB2311053 and related foreign patents

Hearing Officer

Mr P Hayward

Decision date

6 July 2001

Person(s) or Company(s) involved

Michael Stuart Bacon and Entertainment (UK) Ltd

Provisions discussed

None

Keywords

Employees / employment, Striking out

Related Decisions

None

Summary

Mr Bacon is claiming compensation, under section 40 of the Act, from his employer EUK in relation to GB2311053 and a number of related foreign patents and utility models. As a preliminary issue, EUK contended that Mr Bacon's case should be summarily dismissed. Mr Bacon for his part asked for disclosure of documents relevant to his case. The hearing officer considered whether the comptroller had jurisdiction to summarily dismiss an action and found that she did. The Tribunal Practice Notice 1/2000 ([2000] RPC 587) did not exactly incorporate the Civil Procedure Rules into the procedures for the conduct of actions in the Patent Office, but indicated that the Office would be guided by them. Following the remarks of Pumfrey, J. in Pharmedica GmbHs Trade Mark Application [2000] RPC 536, the hearing officer concluded that it would not be creating a substantial jurisdiction where none existed, nor be doing something that is inconsistent with the express provisions of the Patents Act 1977 or the Patents Rules 1995 to follow the Civil Procedure Rules in respect of summary dismissal, and accordingly, the relevant Rule, 24.2, could be applied in the Office. This requires that for summary dismissal, the claimant must have no real prospect of succeeding. Mr Bacon's case involved a contribution from the patents to EUK of some 2% or 3% of its profits. On the face of this, he did not appear to have reached the section 40 hurdle of "outstanding benefit" to the employer and therefore did not have a real prospect of success, but it transpired that he wished to introduce further grounds which had not appeared in his original pleadings and which might affect the assessment of this contribution. Consequently the hearing officer declined to dismiss the action summarily. Instead, Mr Brown was ordered to file amended pleadings. The disclosure issue was deferred to be dealt with preferably by agreement between the parties at the same time as the filing of the amended pleadings, the hearing officer indicating that the disclosure categories requested were too broad and should be kept proportionate and well focussed on the issues in dispute.