Patent decision

BL number

O/311/12

Concerning rights in

EP1196672

Hearing Officer

Dr J E Porter

Decision date

10 August 2012

Person(s) or Company(s) involved

Tek-Dek Ltd and Flexiteek International A/S

Provisions discussed

Patents Act 1977 section 71(1); Patents Rules 2007 rules 74, 82 and 83; Articles 22 and 28 of the Lugano Convention 2007

Keywords

Infringement, Stay of proceedings, Striking out

Related Decisions

None

Summary

The Defendant sought a stay in proceedings for a declaration of non-infringement, on the basis of concurrent proceedings between the parties in Norway over a disputed licence agreement under the patent. They argued that, if the Norwegian proceedings concluded that the licence was valid, this would render the UK proceedings unnecessary.

The Hearing Officer considered this and other arguments relating to the Lugano Convention. He was not persuaded there was a need to stay in order to avoid irreconcilable judgments. Also, it was at least as likely as not that the final Norwegian decision would not render the UK proceedings unnecessary. Even though the Claimant was not currently marketing the products in question, there were reasons why the Claimant would be adversely affected by a stay, in relation to previous sales and potential future sales. The overriding objective to deal with the present case fairly and expeditiously was not served by granting a stay, so the application to stay was refused.

The Defendant also sought strike-out or amendment of the statement of case, on the basis that the Claimant’s application was in respect of an unreasonably large number of disparate possible products or combinations of products, and so did not comply with the requirement of section 71 that the declaration relate to “an act”. The Hearing Officer concluded that seeking a declaration in relation to a range of clearly-defined alternatives was permissible and, given that each alternative was part of a range of products which were modular in nature and shared common features, he was not persuaded that the application placed an undue burden on the Defendant or the comptroller. The application for strike out or amendment of the statement of case was refused.