The Court of Appeal has recently ruled on the effect of Section 68 of the Patents Act 1977, where an owner or exclusive licensee has delayed in registering the instrument from which it derived its locus standi (“legal standing before a court”) to bring proceedings.
Section 33 of the same Act relates to the recording on the register of patents of certain types of transactions, including assignment and licensing of patents. A failure to register a transaction under section 33 can result in a loss of rights against third parties that innocently acquire conflicting rights.Section 68 originally provided that where, by virtue of a transaction to which section 33 applies, a person becomes the owner or exclusive licensee, and that patent is subsequently infringed, the court shall not award it damages or an account of profits for the infringement occurring before the registration of the transaction, unless registration takes place within six months of the transactions effective date.
Section 68 was amended with effect from26 April 2006, making the award of damages mandatory, so only costs and expenses could be denied to the claimant in infringement proceedings, where the transaction was not registered within the time required.
The original form of section 68 did have some teeth, although it was often ineffective in practice, as an action for infringement is normally brought fairly soon after the infringing activities commence, and registration occurs very shortly after instructions to sue in the UK are given, and the lack of registration uncovered.
The amendment of section 68 makes the sanctions for late registration virtually nil if the courts construction of the amended section is correct, as registration will be effected before any significant costs are incurred.
For maximum protection, it is always advised to effect registration as soon as possible, to provide patent owners with appropriate remedies in the event of an infringement.
Schutz (UK) Ltd v Werit UK Ltd and another (2011)
DDI – 0117 9453 042