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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> Statoil ASA v University of Southampton (Patent) [2005] UKIntelP o26805 (8 September 2005) URL: http://www.bailii.org/uk/cases/UKIntelP/2005/o26805.html Cite as: [2005] UKIntelP o26805 |
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For the whole decision click here: o26805
Summary
In his previous decision, the hearing officer found the claimant was entitled to at least the GB patent, but deferred making an order in respect of the foreign patent applications and costs pending further submissions. An appeal has now been lodged against that decision.
In the present decision, having heard the further submissions he rejected the defendants' request that no order be made until the appeal had been heard and a thorough investigation conducted into the relevant foreign law. He said the defendants had been given the opportunity to show that foreign law should lead to a different result and they had not done so. Indeed, the information they had provided on the foreign laws suggested they would lead to the same conclusion as UK law. He therefore made an order for assignment of the foreign patent applications and transfer of the GB patent, though action was stayed pending the appeal.
The claimants sought full recovery of their costs of £621,000, on the grounds that the defendants had behaved unreasonably in the way they had defended the case. The hearing officer agreed that it would be right to depart from the comptroller's normal scale if one party's unreasonable behaviour had caused the other to incur extra costs, though a party should not be accused of unreasonable behaviour merely because it had lost. Any departure from the scale should reflect the extra costs incurred. In the present case, the defendants' refusal to make any concession on entitlement or inventorship - even though their own main witness acknowledged that claim 1 had come from the claimants - had caused the claimants to incur extra costs which they would not have incurred had the defendants behaved more reasonably.
The claimants' expenses were comparable to what the defendants had spend and reflected the commercial importance of the case. The hearing officer accepted as an adequate rough guide the suggestion that the High Court would have cut the award to 60-70% of expenditure, assessed the extra costs incurred by the defendants' unreasonable behaviour at 30% of the total costs and accordingly awarded the claimants £120,000.
