Atrium Medical Corp & Anor v DSB Invest Holding SA

A patent attorney litigator’s right to conduct litigation depends on whether the proceedings fall within the defined scope of Intellectual Property Litigation. That scope is not confined to disputes about strictly defined intellectual property rights, or to infringement and validity claims. It may include disputes concerning technical information protected by contract and claims concerning the contractual exploitation of patented subject matter. A royalty claim arising from the sale of technology and patent rights may therefore concern the protection of an invention, technical information or a similar right. Where the proceedings fall within the relevant regulatory definition, the patent attorney litigator is an authorised person and may assert privilege to the same extent as a solicitor.

The claimants had acquired technology and intellectual property rights from the defendant under an agreement providing for staged consideration and royalties. The claimants sought declarations concerning whether their C-QUR medical product incorporated the transferred technical information or fell within the claims of a patent. The defendant questioned whether the claimants’ patent attorney director, who held a litigator certificate, was entitled to conduct the proceedings. The issue was whether the action fell within Intellectual Property Litigation under the CIPA Higher Courts Qualification Regulations 2007 and, consequently, whether the attorney was authorised and could claim legal professional privilege.

1. The action fell within the definition of Intellectual Property Litigation in regulation 3 of the CIPA Higher Courts Qualification Regulations 2007. The definition covered technical information in general terms and was not confined to formally recognised intellectual property rights.

2. Technical information could be protected through contractual obligations or equitable obligations of confidence. The contractual protection of the transferred technology therefore fell within regulation 3.

3. The dispute concerning whether the product fell within the scope of the patent claims was also relevant. Protecting an invention could include manufacturing or licensing the patented subject matter. The fact that the patent rights had been sold, rather than licensed, did not materially alter the analysis: the rights had been protected by being sold on terms, and the action concerned the working out of those terms.

4. Alternatively, a claim for royalties for use of technical information or matter within patent claims was a “similar right” to a claim to protect the invention or technical information. The court noted that the boundaries of regulation 3 could be difficult in other contexts, including professional negligence and copyright, but those questions did not arise for decision.

5. Mr Hepworth was therefore an authorised person entitled to conduct the litigation and exercise rights of audience. He could assert legal professional privilege on behalf of the claimants to the same extent as a solicitor. No order for costs was made.