IP Bulletin - Autumn 2011

KEY CASES AND DEVELOPMENTS

Schütz (UK) Ltd v Werit UK Ltd and another, Court of Appeal – s.68 Patents Act. The Court of Appeal has given its judgment on the construction of section 68 of the Patents Act 1977. Government response to Hargreaves review. The Government has accepted the recommendations made in the Hargreaves review, and has set out the actions it intends to take and the timetable for them (see May Bulletin for report on Hargreaves Review). Digital Economy Act. The Government has published the next steps for implementation of the Digital Economy Act. PATENTS

Court of Appeal – s.68 Patents Act Schütz (UK) Ltd v Werit UK Ltd and another, [2011] EWCA Civ 927, 29 July 2011

The Court of Appeal has given its judgment on the construction of section 68 of the Patents Act 1977.

Section 68 of the Patents Act 1977 concerns the recovery of damages and costs where a proprietor or exclusive licensee has delayed in registering their assignment or licence. It was amended with effect from 29 April 2006 by the Intellectual Property (Enforcement etc.) Regulations 2006.

Section 68 provides that:

"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 or comptroller shall not award him costs or expenses unless -

the transaction, instrument or event is registered within the period of six months beginning with its date; or 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." The part in bold is the form after amendment of the original form of s.68 which had provided that the court or the comptroller shall not award damages or an account for the profits in respect of infringement occurring before registration. The amendment was made so as to comply with the Art. 13 of the Enforcement Directive (2004/48/EC) which makes the award of damages mandatory.

In this case, the defendant argued that the claimant was not entitled to any costs at all, as it had registered outside the six months period.

However, the Court of Appeal held that the effect of section 68 was to penalise the claimant only for those costs relating to the period before registration. The court acknowledged that this interpretation means that section 68 is largely ineffective, as the discovery of an infringement usually triggers registration before an action is commenced and so before the claimant incurs most of its costs.

High Court – expedited trial Warner-Lambert Company LLC v Teva UK Ltd and others, [2011] EWHC 2018 (Ch), Floyd J, 22 July 2011

The High Court has made an order for an expedited trial and considered the principles to be applied on hearing such an application.

This hearing concerned an application by the lead defendant in a patent action, Teva UK Limited, for an expedited trial. The action related to the drug atorvastatin, which was protected by SPC GB 97011. Atorvastatin was marketed by Warner-Lambert Company LLC (the claimant and patentee) as Lipitor, which was one of the world's most successful drugs.

When the action started in June 2011, the SPC was due to expire later this year, but a paediatric extension was subsequently granted so that the SPC will now expire in May 2012.

Teva launched generic atorvastatin, without notice to Warner-Lambert, on 20th June 2011. Their commercial reason for doing so was that the alternative of giving the patentee notice and seeking revocation of the patent in advance of the launch would have prevented Teva from gaining a marketing advantage over other generic companies.

However, a without notice injunction was granted on 21st June to restrain further sales by Teva, which was then continued to trial by consent.

Teva, therefore, sought a speedy trial in November 2011. Warner-Lambert were not opposed to an order for a speedy trial, provided that they were given adequate time to prepare...