Patent decision

BL number

O/120/13

Concerning rights in

EP 1 196 672

Hearing Officer

Mr A C Howard

Decision date

13 March 2013

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 and 82(1)

Keywords

Costs, Infringement

Related Decisions

O/311/12

Summary

This was a preliminary decision on an opposed request to amend a statement in an action for a declaration of non-infringement. The claimant requested the addition of invalidity as a new ground in the light of a construction of claim 1 advanced in the defendant’s counterstatement that differed from the construction adopted by the Opposition Division of the EPO when holding the patent valid. In allowing the amendment to the statement, the Hearing Officer found that it would not be fair or in the interests of justice between the parties for consideration to be given to the construction advanced by the defendant without permitting all the all the arguments to be fully aired. It was not considered that the existence of a no-challenge clause in a licence agreement between the parties warranted refusal of discretion in this case. Consideration of costs was deferred to the end of the substantive proceedings and a request by the defendant for compensation in costs should the amendment be permitted was refused on the grounds that the claimant’s request was reasonable and any additional costs incurred had not been avoidable.