Patent registration – don’t bottle it up

A recent Court of Appeal (CA) ruling has highlighted the importance of assignees/licensees of patents registering their interests with the Intellectual Property Office (IPO) without delay.

The patents concerned, held by the claimant, Schütz, were for a bulk container for liquids that contained a flexible bottle in a metal cage. The defendant, Werit, had used the product and replaced damaged or worn bottles with bottles that it had developed. The bottles were then sold in the original caging.

The Court of Appeal overturned the High Court’s ruling and held that the patented product should be considered as a whole, and the cage and the bottle as component parts. By putting a new bottle into the cage, Werit was effectively completing the patented product. In doing so without a licence, Werit had infringed Schütz’s patent.

However, Schütz’s patent licence was granted in 1994 and not registered until 2008. Section 68 of the Patents Act 1977, as amended in 2006, provides that “…the court…shall not award [the claimant] costs or expense unless…the transaction, instrument or event is registered within the period of six months beginning with its date…”. Nonetheless, the CA decided it would not be unfair for Schütz to recover costs for the period after it had registered its licence as it had ‘put its house in order’.

All assignees or licensees of patents must protect their interest by registering it with the IPO. This ensures potential third party purchasers are put on notice of the interest and will protect a costs claim in the event of patent infringement.

(Case: Schutz (UK) Ltd v Werit UK Ltd and another [2011] EWCA Civ 927, 2011)