No stay of UK patent revocation proceedings in favour of later-filed Northern Irish court action

In Kayfoam Woolfson v Recticel SA & Recticel Ltd, BL O/315/14, 17 July 2014, UK Intellectual Property Office (UKIPO) hearing officer Phil Thorpe held that the UKIPO did have had jurisdiction to hear an application for revocation of a patent on the basis that the issue of revocation would not more properly be determined by the court.

By way of background, Recticel had already commenced infringement proceedings against Kayfoam in the Intellectual Property Enterprise Court (IPEC), England and Wales. As it happened, Recticel had discontinued its claim before Kayfoam's application for revocation was filed; although Kayfoam had reserved its position without actually opposing the discontinuance of Recticel's infringement proceedings, that reservation did not keep the action alive. Accordingly there was no action pending before the court at the date of filing f Kayfoam's revocation application.

As it happened, Recticel had also commenced infringement proceedings in Northern Ireland (also part of the United Kingdom, therefore covered by the same patent, but with its own separate judicial system).  However, Kayfoam's application for revocation before the UKIPO had been made before Recticel's Northern Ireland complaint was served.

Haqving taken all the relevant factors into account, the hearing officer concluded that this was not one of those cases that would be more properly determined by the court. Both the UKIPO proceedings and the Northern Ireland proceedings were still in early stages, which meant that there wouldn't be too much wastage and inconvenience if a stay were ordered. The stay would however be refused because the present situation was caused by Recticel discontinuing its IPEC action.