Patent decision

BL number
O/143/05
Concerning rights in
EPO(UK) 1,048,609 B1
Hearing Officer
Mr S Probert
Decision date
23 May 2005
Person(s) or Company(s) involved
Neil Eric Paxman v Derek Hughes
Provisions discussed
PA. 1977 section 37(1)(c), section 36
Keywords
Licences, Striking out
Related Decisions
None

Summary

The patent relates to a new type of drinks cooler, and is owned jointly by the two parties. The two men set up a company to sell the new drink coolers; they are both directors of that company. However, only a very small number of the coolers have been sold because the co-proprietors have fallen out.

Mr Paxman wants to grant licences to third parties to manufacture and supply drinks coolers under the patent, but because Mr Hughes (a co-owner of the patent) does not consent, he needs an order from the Comptroller to allow him to grant such licences.

The hearing officer found that the Comptroller does have discretion to order the grant of such licences against the wishes of a co-proprietor when, and only when, it is necessary to prevent the proper exploitation of a patent being unreasonably prevented by one or more co-owners. But in this case, the claimant’s fiduciary duties as a company director prevent him from doing any of the things that he was asking the Comptroller to authorise him to do. Therefore the action was struck out before any evidence was filed.

Full decision O/143/05 PDF document41Kb