Patent decision

BL number
O/517/13
Concerning rights in
EP 0461761 B1
Hearing Officer
Mr A C Howard
Decision date
31 December 2013
Person(s) or Company(s) involved
Malcolm Paul Varnham and Diana Hodgins and BAE Systems plc
Provisions discussed
Patents Act 1977 Section 40
Keywords
Decline to deal, Employees / employment
Related Decisions
O/338/13

Summary

The defendants requested the comptroller to decline to deal with the case on the grounds that the case involved complex technical, factual and procedural issues. The estimated length of the substantive hearing was 1-2 weeks. This was resisted by the claimants who were private individuals with limited means. They asserted that if the comptroller declined to deal with the claim, they would not be able to proceed in the Court. The Hearing Officer, applying the principles set out in Luxim Corp v Ceravision Ltd [2007] EWHC 1624 (Ch), [2007] RPC 33, found that the comptroller was well placed to deal with the technical questions and issues under patent law (including factual issues relating to the relative contributions of the inventors). While the estimated length of the hearing as such was not an important factor in this case, the claim raised complex procedural and factual issues, the latter requiring consideration of forensic accountancy evidence well beyond the experience of an IPO Hearing Officer. Against this weighed very heavily the claimants’ stated inability to proceed in the Court, but this was ultimately a matter for them having regard to all the circumstances and did not confer on them any kind of veto on transfer to the Court. Although the Hearing Officer considered the question to be finely balanced, he considered that the complexity of the case to be the persuasive factor and declined to deal with the claim.

Full decision O/517/13 PDF document55Kb