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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> (1) Roger Michael Elliott (2) BSP International Foundations Ltd v Expotech Ltd (Patent) [2004] UKIntelP o18904 (16 June 2004)
URL: http://www.bailii.org/uk/cases/UKIntelP/2004/o18904.html
Cite as: [2004] UKIntelP o18904
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(1) Roger Michael Elliott (2) BSP International Foundations Ltd v Expotech Ltd [2004] UKIntelP o18904 (16 June 2004)
For the whole decision click here: o18904
Patent decision
- BL number
- O/189/04
- Concerning rights in
- GB 2351111
- Hearing Officer
- Mr P Hayward
- Decision date
- 16 June 2004
- Person(s) or Company(s) involved
- (1) Roger Michael Elliott (2) BSP International Foundations Ltd v Expotech Ltd
- Provisions discussed
- PA 1977 section 37
- Keywords
- Entitlement, Orders
- Related Decisions
- [2004] UKIntelP o09504
Summary
Following the earlier finding that both sides were entitled to rights in the patent, the parties had been unable to agree an appropriate order between them. The Hearing Officer said he would order a solution that gave what appeared to him to be the fairest balance in all the circumstances. He decided that the relative contributions of the parties were balanced and that they should get equal treatment. He took account of the fact that the defendant could only exploit the invention by licensing, and given the poor relations between the parties, said he would aim to minimise the need for further negotiations and the risk of further disputes. Accordingly he ordered:
1. Joint ownership of the patent, with each side having the right to work all the claims but with each side paying a royalty to the other on anything they sold, the royalty to be the same for both.
2. A right to licence third parties without the other side’s permission, but no right to assign save as part of the business as a whole.
3. Patent maintenance and defence costs to be shared.
4. Provision for either side to surrender its rights whilst retaining a personal right to work the invention.
5. Right to apply for a variation of the order if there was a material change in circumstances, eg a later finding of partial invalidity.
He further said that, given the principle of proportionality now enshrined in the Civil Procedure Rules, he would not allow long drawn-out proceedings to settle the royalty rate. He gave the parties a period to agree a royalty rate or, at least agree a simple mechanism for settling the royalty rate. If they failed, they would each be allowed to make short, written submissions (about 20 pages) and he would then decide the royalty rate without more ado.