Cinpres Gas Injection Ltd v Melea Ltd

Patents Act 1977, section 37 is directed to resolving genuine proprietary claims in or under a patent. The power to grant a licence does not operate as a discretionary consolation where the claimant’s proprietary claim has failed. A claimant who is estopped from asserting entitlement, and therefore has no sustainable proprietary claim, falls outside the jurisdiction. A licence claim introduced only after judgment is also liable to be refused where it was not pleaded, relevant evidence was not called, and its proposed terms are undefined.

The claimant had previously failed in proceedings seeking a declaration that it was entitled to be registered as proprietor of a patent. Although the court found that perjury had occurred, the defendant was not sufficiently complicit and the earlier decision remained binding.

After judgment, the claimant sought to pursue a further claim under section 37 of the Patents Act 1977 for a licence to continue using the invention. The issues were whether section 37 permitted such relief after the proprietary claim had failed, whether estoppel prevented the claim, and whether the unpleaded claim could be introduced at that stage.

1. The claim for a licence was refused. Section 37 principally resolves conflicts between persons with genuine proprietary claims in or under a patent. Subsection (2) identifies forms of relief available to a person who establishes such a claim; it does not create a power to award a licence merely because fairness appears to require one.

2. The claimant’s proprietary claim had failed because the estoppels arising from the earlier decision established that it was not entitled to the patent. Once that claim was determined to be bad, the claimant ceased to fall within the class of persons entitled to invoke section 37. The position was the same as if it had never asserted the unsustainable proprietary claim. Emotive descriptions such as theft did not alter the statutory analysis.

3. Yeda Research v Rhone-Poulenc [2006] EWCA Civ 1094 did not require a different result. The passage relied upon was guarded and concerned a possible licence for an ousted patentee. It did not establish that a person found to have no proprietary interest could obtain a licence under section 37.

4. The alternative licence claim was in any event too late. It had not been pleaded and an earlier claim for a licence had been removed by amendment. There was little or no evidence concerning the claimant’s alleged use, the commercial significance of a licence, or appropriate licence terms. Introducing the issue would have required further evidence and a further hearing. The claim was therefore refused without determining the separate estoppel arguments.