Patent decision

BL number

O/325/12

Concerning rights in

GB 2416542

Hearing Officer

Mr J Elbro

Decision date

24 August 2012

Person(s) or Company(s) involved

John Samuel Webster and John Kenneth Gilbert and Solsys Ltd

Provisions discussed

Patents Act 1977 Section 72

Keywords

Decline to deal, Revocation

Related Decisions

None

Summary

The defendant requested that the Comptroller certify that the question in this revocation action would be more properly determined by the court. The defendant alleged numerous breaches of duties by the claimants and indicated it had launched parallel proceedings on these and the validity of the patent in the Northern Ireland court. The defendant alleged that the claimants were going to use confidential information as evidence in this action, that they were precluded from seeking the patent’s revocation, and that it would be more cost-efficient for all the proceedings to take place in the Northern Ireland court.

The hearing officer declined the request. He considered that any application regarding use of allegedly confidential material in evidence was premature, and it was far from clear that such evidence would be used in an action for revocation on grounds of insufficiency such as this. He considered the question of sufficiency to be clearly within the competence of the comptroller’s tribunal, being a mix of technical questions and patent law. Although the question of whether the claimants were precluded from bringing the action might involve issues of general law, these did not seem to be so complex as to render the case more appropriately dealt with by the court. He considered that the argument as to duplicative proceedings, created by the defendant’s later filing in the court, did not seem to justify depriving the claimants of access to the comptroller’s low cost tribunal.

Full decision O/325/12 80Kb