In these proceedings the court was required to determine costs in relation to a patent validity claim which Boston brought against a patent held by Orbusneich.
Richard Meade QC ruled as follows:
- Orbusneich's actions were apt to mislead Boston into assuming that it continued to maintain the patent, and it would have been reasonable for Orbusneich to tell Boston that it was applying to surrender.
- It was wrong to say that it was unnecessary for Orbusneich to disclose its application to surrender simply because that application was publicised on the European Patent Office website.
- It was obvious that Boston was under the impression that the validity of the patent would be contested.
- Since Boston was successful, the general rule applied so that they were entitled to payment of their costs. An order for an interim payment of less than 50 per cent would be made.
No more is known about this ruling at present. Suffice it to say, though, that (i) litigants do not appear to have constructive notice of applications to surrender on the sole ground that they have been published on the EPO website, and (ii) it seems to be the prudent course to inform your adversary that you have applied to surrender a patent which he has applied to invalidate.