Forticrete Ltd v Lafarge Roofing Ltd

Permission to amend a defence is refused where the proposed defence has no real prospect of success. Under section 64 of the Patents Act 1977, the prior act or commercial activity must be identified with sufficient precision. The provision protects continuation of what was done, or what the defendant made effective and serious preparations to do, before the priority date. It does not confer a right to make any product falling within the patent merely because an earlier product had the same patent features. Exact identity is unnecessary, but the later activity must be substantially the same in substance as the earlier activity. A design origin or causal link between products is insufficient without evidence addressing their material similarities, differences and commercial identity.

The claimant brought proceedings for infringement of UK patent No. 231898, entitled “Roof Tiles”, and a registered design. The defendant applied at a case management conference to amend its patent defence by relying on section 64 of the Patents Act 1977.

The proposed defence relied on the defendant’s pre-priority-date design, testing and preparations concerning a “Theta” tile. The defendant later developed the allegedly infringing “Duoplain” tile, said to have been based on the Theta design. The central questions were whether the evidence disclosed an arguable case of effective and serious preparations concerning the Theta tile and whether the Duoplain activity was substantially the same commercial activity.

1. The application to amend was dismissed. The court applied the ordinary amendment principles: amendments should generally be permitted so that the real dispute can be determined, subject to prejudice and the interests of justice. However, an amendment must be refused where the proposed defence has no real prospect of success. The test is the same as for summary judgment under Part 24 of the Civil Procedure Rules 1998.

2. Section 64 gives protection for an act of infringement done in good faith before the priority date, or for effective and serious preparations to do that act. The protection is confined to the particular act done or prepared for. It does not permit expansion into any other product or process. Following Lubrizol v Esso [1998] RPC 727, exact identity is not required, but the later activity must be substantially the same as the earlier activity.

3. The evidence disclosed an arguable case that the defendant had made effective and serious preparations to sell the Theta tile. The extensive design, machinery, pilot production, testing and proposed launch preparations were sufficiently advanced that they might have been about to result in commercial sale. Whether section 64 was ultimately satisfied was a matter for trial.

4. The evidence did not disclose an arguable case that the Duoplain tile was the same article of commerce as the Theta tile, or that the complained-of activities were substantially the same. A statement that the Theta design was used as the basis for the Duoplain tile did not explain the products’ similarities, differences, manufacturing methods or properties. A causal link was insufficient. The argument that one product within the patent scope gave a right to make every other product within that scope was rejected.

5. The proposed section 64 defence therefore had no real prospect of success insofar as it concerned the Duoplain tile, and permission to amend was refused.

First-instance decision. No appellate history is stated in the judgment.