PRACTICE — Patents — Foreign or Convention patents — Comptroller General’s discretion to refuse to deal with questions of entitlement — Whether limited to highly complex cases — Patents Act 1977 (c 37) s 12(2)

Luxim Corpn v Ceravision Ltd [2007] EWHC 1624 (Ch)

Ch D: Warren J: 9 July 2007

The discretion given to the Comptroller General under s 12(2) of the Patents Act 1977 to decline to deal with entitlement proceedings because the question referred to him involved matters which would more properly be determined by the court was not restricted to highly complex cases.

Warren J so held allowing an appeal brought by Lumix Corpn against a decision of Hearing Officer Thorpe dated 6 June 2006 by which he refused their application under s 12(2) of the Patents Act 1977 to decline to deal with entitlement proceedings between it and Ceravision Ltd.

WARREN J said that under s 12 of the 1977 the court had no original jurisdiction and questions were in the first instance referred to the Comptroller; he was the arbiter about which forum was more appropriate, with the default that the case remained with him unless it appeared to that the matters involved were more proper to be determined by the court. However, the initial conferring of jurisdiction on the Comptroller was not intended to carry with it any predisposition to retain cases in the Intellectual Property Office and it was not necessary to show that a case was highly complex before the Comptroller declined to deal. Whenever a case was complex the Comptroller should consider exercising his discretion under s 12(2). What was and was not complex was a matter to be determined by him. Complexity needed to be judged in relation to different areas where issues could arise, for example technical issues, factual issues, patent legal issues and non-patent legal issues and needed to be judged against the expertise and experience to be expected of a hearing officer as compared with that of a judge.

Appearances: Simon Thorley QC (Lovells) for Luxim Corporation. Thomas Mitcheson (instructed by the solicitor to Ceravision Ltd) for Ceravision. Colin Birss (instructed by the Treasury Solicitor) for the Comptroller General of Patents, Trade Marks and Designs.

Reported by: Nicholas Mercer, barrister