Medical Research Council v Celltech R&D Ltd

The Patents Court’s statutory and procedural jurisdiction is not confined to claims which must be started there under CPR 63.2. It may hear or receive other appropriate proceedings, including contractual claims involving patent licences.

Transfer is a discretionary case-management decision. The court must examine the structure of the litigation as a matter of reality and consider whether retention in the existing list is inappropriate having regard to a just and efficient resolution. A possible future technical patent dispute is insufficient, without material showing that it is likely to arise, to justify transfer. Specialist expertise and case-management convenience, although relevant, do not by themselves require transfer.

The Medical Research Council claimed unpaid royalties under a licence agreement relating to patents for recombinant antibodies. Celltech applied to transfer the claim from the general list of the Chancery Division to the Patents Court.

The application was based on possible issues concerning patent infringement, patent-law questions, construction of patent licences, foreign patent law and case management. The claimant argued that the present pleadings did not show that a technical patent dispute was likely to arise and raised a jurisdictional objection based on section 62(1) of the Senior Courts Act 1981 and CPR 63.2.

The central questions were whether the Patents Court had jurisdiction to hear or receive the claim and whether transfer was necessary or appropriate at that stage.

1. Application refused. The claim was retained in the general list of the Chancery Division, without prejudice to a later transfer application if an active technical dispute concerning the scope of a Winter Patent emerged.
2. The court considered the pleaded issues as they realistically stood. The likely disputes included construction of the licence agreements, estoppel, the places where patents subsisted, manufacture, the manufacturing process and sales. The defence contained only a non-admission that the products fell within patent claims. The court lacked material showing that a technical infringement issue was bound to arise or was likely to be an active dispute.
3. A transfer to the Patents Court would consume scarce specialist judicial resources. The greater familiarity of patents judges with patent licences, and the possibility that case-management issues might be handled more efficiently there, did not by themselves justify transfer. A licence remained, in the end, a permission to do something and did not necessarily require the technical expertise involved in a patent action.
4. Applying the approach discussed in Lumbermens Mutual Casualty Comp v Bovis Lend Lease Ltd [2004] 2 CLC 778, the court examined the structure of the litigation as a matter of reality and asked whether it was inappropriate for the proceedings to remain in their existing list.
5. On jurisdiction, section 62(1) of the Senior Courts Act 1981 was not to be read as containing the word “only”. Read with CPR 63.2, it identifies proceedings which must be started in the Patents Court but does not prevent other appropriate proceedings from being started there or transferred there. It was therefore unnecessary to decide whether the transfer application itself had to be made in the Patents Court under CPR 30.5.