A recent decision in the UK Patents Court has reinforced the strict interpretation which is to be given to section 68 of the UK Patents Act.
The case in question, Lundbeck vs Infosint, related to a patent covering a method of making 5-carboxyphthalide (5-cbx), an intermediate compound in the production of the antidepressant drug citalopram.
The patent, European Patent (UK) 1118614, was originally owned by Norpharma, who assigned it to Infosint in July 2002. The assignment was subsequently registered with the EPO. However, despite instructing an agent to record the assignment on the UK register, the assignment was not recorded with the UKIPO until June 2010. This means that Norpharma remained the registered proprietor of the EP(UK) patent for the intervening time.
Lundbeck sought revocation of the patent on the grounds of lack of novelty, lack of inventive step and insufficiency, and Infosint counterclaimed for infringement. Lundbeck failed on their claims of lack of novelty and insufficiency, but were successful in their inventive step attack and the patent was found to be invalid. As a result, Infosint’s counterclaim of infringement was not considered.
However, the judge, Mr Justice Floyd, did consider the potential impact of Section 68 of the UK Patents Act on this case. Section 68 reads as follows:
Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, before the transaction, instrument or event is registered, in proceedings for such an infringement, the court of comptroller shall not award him costs or expenses unless –
(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.
This means that, if there is a failure to register the assignment of a patent within six months of the transaction (except in extenuating circumstances), the assignee will not be awarded costs or expenses in proceedings relating to infringement, where the infringement occurred before the assignment was registered.
Infosint argued that the registration of the assignment at the EPO (which was carried out soon after the assignment was made) should count as registration for the purposes of Section 68. However, this argument was rejected by the judge. On grant, a European patent separates into a bundle of national patent rights, each of which can be assigned independently of the others. Mr Justice Floyd therefore considered that it would not be reasonable to expect the public to consult the EPO’s register just in case an assignment of the patent had been registered there. It is clearly the national registers that the public will look at when seeking to determine patent ownership.
Mr Justice Floyd further stated that, since Infosint had instructed their agent to record the assignment with the UKIPO in 2002, they could not rely on Section 68(b). This section provides a defence for situations where it was not possible to record the assignment within six months of the transaction. Given that Infosint instructed their agent to record the assignment, this was clearly not the case in this instance. Hence, if there had been a successful claim for infringement against Lundbeck, then Lundbeck could have relied on Section 68 to limit the costs awarded.
This case highlights the importance of registering any transfer of patent rights as soon as possible after the transfer takes place, and in any event within six months of the transfer, and to register this change in each individual country.
13 May 2011